E&J Gallo Winery v Lion Nathan Australia Pty Limited - [2009] HCATrans 317

[2009] HCATrans 317

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Sydney No S189 of 2009

B e t w e e n -
E & J GALLO WINERY
Appellant
and
LION NATHAN AUSTRALIA PTY LIMITED (ACN 008 596 370)
Respondent

FRENCH CJ
GUMMOW J
HEYDON J
CRENNAN J
BELL J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON TUESDAY, 8 DECEMBER 2009, AT 10.17 AM

MR I.M. JACKMAN, SC: May it please the Court, I appear with my learned friend, MR M.J. DARKE, for the appellant. (instructed Corrs Chambers Westgarth Lawyers)

MR F.M. DOUGLAS, QC: May it please the Court, I appear with my learned friends, MR D.T. KELL and MR W.A.D. EDWARDS, for the respondent to the appeal and the applicant for special leave to cross‑appeal. (instructed by Mallesons Stephen Jaques)

FRENCH CJ: Yes, Mr Jackman.

MR JACKMAN: I propose to take the Court initially to the material in the appeal books concerning the appeal which is in a fairly narrow scope. The vast bulk of the material in the appeal books relates to my learned friend’s application for special leave to cross‑appeal. Can I ask the Court to go first to volume 2 of the appeal books and to page 176 where your Honours will find a copy of the certificate of registration of trade mark. Your Honours will note the number of the registered mark in the top right‑hand corner, 787765. The mark was registered on 9 March 1999. The registered owner at that time was Mr Michael Houlihan of California and the mark itself is a word mark, “BAREFOOT”, registered for wines, being goods in class 33.

Then if your Honours would turn back a page to page 175 you will see a certificate relating to the assignment of the registration to the subsequent owner, my client, E. & J. Gallo Winery, with effect from 17 January 2005. My client was entered in the register as the subsequent owner. That occurred contemporaneously with the completion of a sale of shares in the company Grape Links, Inc which traded under the business name Barefoot Cellars, that being a sale by Mr Houlihan and Ms Harvey to Gallo Winery. The contract for sale is relevant to one of the points of contention that my learned friend raises and the terms of the contract are set out in volume 8 of the appeal books. If your Honours would turn first to page 1707.

HEYDON J: How do we know which is confidential and which is not, which parts? This is a confidential volume.

MR JACKMAN: It is. It is marked as confidential but if put to the test, I am not sure that I could sustain any claim for confidentiality in relation to this agreement. Certainly none of the clauses which were relevant to the agreement have anything in the nature of a trade secret or commercial sensitivity attaching to them. On page 1707 there is the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading E&J Gallo Winery v Lion Nathan Australia Pty Limited

Details

AGLC: E&J Gallo Winery v Lion Nathan Australia Pty Limited [2009] HCATrans 317
Case: [2009] HCATrans 317
Decision Date

CaseChat Overview and Summary

The dispute in *E&J Gallo Winery v Lion Nathan Australia Pty Limited* concerned the alleged infringement of a registered trade mark by Lion Nathan Australia Pty Limited. E&J Gallo Winery, the owner of the registered trade mark "Gallo" for wine, alleged that Lion Nathan's use of the mark "Gallo" in relation to its beer products constituted trade mark infringement and passing off. The matter proceeded to the High Court of Australia.

The High Court was required to determine whether Lion Nathan's use of the "Gallo" mark on its beer was likely to cause confusion among consumers, thereby infringing E&J Gallo Winery's registered trade mark. Specifically, the court had to consider the scope of protection afforded by the registered trade mark, the degree of similarity between the marks, and the nature of the goods in respect of which the marks were used. The court also considered the common law action of passing off.

The High Court held that there was no likelihood of deception or confusion arising from Lion Nathan's use of the "Gallo" mark on beer. The court reasoned that the goods were sufficiently different in character and were marketed to different consumer bases, despite the identical nature of the marks. The judges applied the principles of trade mark law, focusing on the likelihood of confusion as the central test for infringement. They also considered the evidence presented regarding consumer perception and market practices. The court found that the differences in the goods and their respective markets were significant enough to prevent a finding of infringement or passing off.

Orders