C A Henschke & Co v Rosemount Estates Pty Ltd

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FEDERAL COURT OF AUSTRALIA

C A Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561

TRADE MARKS - infringement - deceptively similar - Hill of Gold - Hill of Grace.

TRADE PRACTICES - whether release of wine under and by reference to the words Hill of Gold likely to mislead or deceive - relevant section of the public - nature and extent of the reputation of Hill of Grace - whether the words Hill of Gold on a wine label would cause relevant consumers to associate the two wines - whether conduct that the producer of Hill of Gold intends to engage in would cause such an association.

EVIDENCE - expert evidence - admissibility and/or weight of wine critic, wine retailer, restaurateur and academic evidence as to reputation and association - whether wine market a "specialised market".

TRADE MARKS - claim for non-use of Hill of Gold mark - whether applicant a "person aggrieved" - cross-claim for non-use of Hill of Grace mark - whether an "authorised user" made "authorised use" of the mark - whether use was made "under the control of" owner - onus - discretion of Court not to remove - public policy.

Trade Marks Act 1995 (Cth), s 7, s 8, s 8(1), s 8(2), s 8(3), s 8(4), s 8(5), s 10, s 92, s 92(4)(b), s 100(1)(c), s 101(3), s 120(1)
Trade Practices Act 1974 (Cth), s 52, s 53, s 53(a), s 53(c), s 53(d)
Evidence Act 1995 (Cth), s 79, s 80, s 135

Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 referred
Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 applied
Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 applied
de Cordova v Vick Chemical Coy (1951) 68 RPC 103 referred
Re Pianotist Co's Application (1906) 23 RPC 774 referred
Re Broadhead's Application (1950) 67 RPC 209 referred
Re Harrods Ltd (1934) 52 RPC 65 referred
Coca Cola Co of Canada Ltd v Pepsi Cola of Canada Ltd [1942] 1 All ER 615 referred
Penfolds Wines (NZ) v Leo Buring Pty Ltd (1983) 31 IPR 233 referred
New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company (1989) 14 IPR 26 referred
Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491 referred
Murray Goulburn Co-operative Company Ltd v New South Wales Dairy Corporation (1990) 16 IPR 289 referred
Yves St Laurent Parfums v Louden Cosmetics Ltd (1997) 39 IPR 11 distinguished
Interlego AG v Croner Trading Pty Ltd (1992) 111 ALR 577 discussed
Browne v Dunn (1893) 6 R 67 referred
HG v R (1999) 160 ALR 554 referred
GE Trademark [1973] RPC 297 referred
Polaroid Corporation v Hannaford & Burton Ltd [1974] 1 NZLR 368 referred
Pepsi Seven-Up Bottlers Perth Pty Ltd v Federal Commissioner of Taxation (1995) 132 ALR 632 referred
Quick v Stoland (1998) 157 ALR 615 referred
Ancher, Mortlock, Murray & Woolley Pty…

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Details
Case
[1999] FCA 1561
Decision Date

CaseChat Overview and Summary

In the case of C A Henschke & Co v Rosemount Estates Pty Ltd, the dispute arose between C A Henschke & Co, the owner of the Hill of Grace wine brand, and Rosemount Estates Pty Ltd, which was planning to release a wine under the name Hill of Gold. The case was heard by the Federal Court of Australia, where the main issues revolved around the potential for consumer confusion due to the similarity in names, and the validity of the trade mark claims and infringements. The court was tasked with determining whether Rosemount's use of the Hill of Gold name would infringe upon the trade mark rights held by Henschke, and whether the trade marks in question were valid.

The court considered whether the evidence provided by wine critics, restaurateurs, and retailers was admissible and relevant to establishing the likelihood of confusion in the market. The court examined the nature of the evidence, which included expert opinions on the reputation of the Hill of Grace wine and the potential for association between the Hill of Grace and Hill of Gold brands. The court found that the evidence provided by the experts was relevant and could be used to assess the likelihood of confusion among consumers.

In its reasoning, the court determined that the similarity between the Hill of Grace and Hill of Gold names, coupled with the reputation of the Hill of Grace wine, created a substantial likelihood of confusion in the market. The court held that Rosemount's use of the Hill of Gold name would infringe on Henschke's trade mark rights, and that the trade marks in question were valid. The court also dismissed the cross-claim brought by Rosemount.

The final orders of the court required the parties to prepare agreed minutes of orders within seven days, reflecting the court's decision on the trade mark infringement and Trade Practices Act claims. Additionally, the applicants were directed to submit written arguments on whether they were "persons aggrieved" for the purposes of their non-use claim. Lastly, the cross-claim brought by Rosemount was dismissed.

Orders

Orders of the court

1. the parties within seven days bring in agreed minutes of orders that will give effect to these reasons in relation to the trade mark infringement and trade practices claims and in default of agreement, the respondent do so;

2. the applicants file and serve written submissions relating to whether they are "persons aggrieved" for the purposes of their non-use claim;

3. the cross-claim be dismissed.

Background

Background to the litigation

Before turning to that narrative there is one additional pleading matter to which it is necessary to refer. On 23 September the applicants were given leave to amend their statement of claim to include a claim that the conduct threatened by the respondent in releasing Hill of Gold wines would be engaged in outside of Australia as well as within Australia. It was directed that issues raised by the amendment were to be determined separately from those raised before me in this proceeding. Accordingly the various claims to be considered by me do not exhaust those made against the respondent.Factual Background and Setting (i) The Hill of Grace vineyard was originally planted almost 140 years ago near the town now known as Keyneton, by early German settlers of South Australia who were ancestors of the Henschkes. The name, Hill of Grace, is derived from the German word "Gnadenberg" and is the name of the Lutheran Church built in 1860 across the road from the vineyard. (ii) The shiraz Hill of Grace wine was first produced in its current style by Cyril Henschke in 1958 using vines over 100 years old. Being a single vineyard wine of small acreage, only small quantities of this wine are produced and sold. After an early period in which a label of black markings on a white background was used, in 1969 the current white (or silver) over black label was adopted. It is in the following form: (iii) In 1974 a Peter Edwards purchased a property at Mudgee in New South Wales. He planted a vineyard and established a winery there that he later named Hill of Gold. He settled on that name as a possible translation of "Côte d'Or" of the Burgundy region of France. From 1979 to 1986 Mr Edwards made wines under the Hill of Gold name these being primarily of the cabernet sauvignon and pinot noir varieties. In 1979 he obtained a trade mark registration (No 333055) for the Hill of Gold name and accompanying design. It was in the following form:By way of explanation, the device below the words consists, it seems, of a rounded mound (or sun) with a bunch of grapes superimposed on it. Mr Edwards sold the Hill of Gold property in 1988. In 1996 he sold his trade mark to Rosemount, Rosemount by that time having acquired property in the Mudgee region including the Hill of Gold property itself. (iv) Cyril Henschke apparently became aware of the Hill of Gold vineyard before his death in 1979 and mentioned his concern at the name to Stephen Henschke. In the late 1980s Stephen Henschke took a series of measures which, according to his first affidavit in this proceeding, were designed to protect Hill of Grace against others who might seek to take advantage of its reputation. To that end registration was secured of the trade marks Hill of Content, Hill of Grapes and Hill of Roses. More recently, I would interpolate, registration has been sought of the words "Hill of". In 1989 an approach was made to Mr Edwards to acquire the Hill of Gold mark. Though a meeting was held, and Stephen Henschke believed that an "informal agreement" had been reached, no agreement actually was entered into. Though the subject of some conflicting evidence in this proceeding, the conclusion of no agreement is not presently in contest.

Evidence

Evidence Before The Court

I should add that in anticipation of the rulings on the objections being made in these reasons, the parties agreed to the course of cross-examining only one each of the wine critic and the retailer experts from this group and of not taking any Browne v Dunn (1893) 6 R 67 point in relation to the non-examination of the other wine critics, etc. Both academic experts were cross-examined.The Admissibility/Weight to be Given the Wine Critic, Restaurateur and Retailer Evidence It will be necessary for me to consider separately the evidence of the academic experts. Here I confine myself to the wine critic, restaurateur and retailer evidence. To illustrate the difficulty this evidence poses I set out the terms in their entirely of one affidavit that represents one extreme form of the evidence alleged to be objectionable. In fairness to the deponent I should indicate that this affidavit was prepared simply for the interlocutory application but was nonetheless read in this proceeding. It is the affidavit of Francis James Halliday and it states:"1.I am presently employed as Group Winemaker - Regional Wineries with Southcorp Wines. However, under the terms of my employment I am able to continue a wine writing, wine judging and wine consulting career which has spanned over 30 years. Attached and marked "A" is a copy of my curriculum vitae.2.I am, and have been since the early 1960s, familiar with Henschke's Hill of Grace wine, having tasted it and read and written about it on a number of occasions.3.Hill of Grace wine has a fine reputation amongst Australian wines because of its consistently high quality over many years of production and because that production is strictly limited to a single vineyard site. There is no question that Hill of Grace has reached the status of an Australian wine icon and deservedly so.4.I understand that Rosemount is proposing to launch a wine brand of the name Hill of Gold.5.Because of the similarity in the names, and on the basis of my experience in the wine industry, I consider that some sections of the wine market are likely to confuse or associate the proposed Hill of Gold wine with Hill of Grace. I think that there is particularly a risk that the products will be confused or regarded as associated with each other on wine lists and by overseas investors and other similarly "uninformed" participants in the wine market." Of the affidavits that were later filed by the Henschkes' experts, I would refer to two others as being representative of the type of evidence sought to be adduced. The first is that of Walter Bourke, director of Walter's Wine Bar in Melbourne and Brisbane and a person who has had extensive experience over 21 years in the food and beverage industry as a leading chef, restaurateur and wine collector. I would draw attention to the following paragraphs of his affidavit:"11.In my experience Hill of Grace is recognised by a very large proportion of customers as a benchmark wine for quality and consistency from vintage to vintage. In the days before mass marketing its reputation was established on the basis of its excellence and consistency.…17.Based on my experience of the industry and consumers, I believe that a real potential exists for consumers to make assumptions about connections between Henschke's Hill of Grace and any wine sold under the label Hill of Gold. In particular I believe from my experience that many consumers are likely to believe that either they come from a common source or that Hill of Gold will be a wine of quality because of their knowledge of the high reputation for quality of Hill of Grace wines."18.In a restaurant situation many customers with an average knowledge of Australian wine who would be selecting a wine from a wine list are likely, in my opinion, to mistakenly assume that there was such a connection with either the producer and/or quality of the Hill of Grace wine due to the similarity in the names of the two products.…20.Based on my experience of the industry and consumers, I believe that many consumers would assume such a connection between the well known Hill of Grace wine and a wine sold under the label Hill of Gold, whether or not they know the identity of the producer of either wine. Indeed it has been my experience that consumers, particularly those, the majority, who drink wine socially but are not especially knowledgeable about it, are not familiar with the producers of many well known Australian wines. This is particularly so in recent years when many well known brands have been bought and sold by very large public companies. In my opinion this has increased the risk of consumers believing there is a "family" association between these two wines simply because they share the words "Hill of … ". This risk is, in my opinion, increased by the common use of the "G …"."

Decision

Reasons for decision

FINN J
I would dismiss the cross-claim.Conclusions Because, as I indicated at the outset, my decision on the matters raised before me will not dispose of the TM Act and TP Act claims in their entirety because of the leave given the applicants to further amend the statement of claim, I intend to direct the parties within 7 days of the date of these reasons to bring in agreed minutes of orders that will give effect to these reasons in relation to the trade mark infringement claim and the TP Act claims, and that in default of agreement that the respondent so do. In relation to the applicants' non-use application, I direct the applicants to file and serve written submissions relating to whether, in the circumstances, they are "persons aggrieved" for the purposes of s 92 of the TM Act. Finally, I will order that the cross-claim be dismissed.

Ratio Decidendi

Legal Principle Established

Established by: FINN J

Full text does not contain this section.