FEDERAL COURT OF AUSTRALIA
Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd (No 2) [2024] FCA 755
File number: VID 252 of 2021 Judgment of: BEACH J Date of judgment: 11 July 2024 Catchwords: CORPORATIONS – Bordeaux wine – Tasmanian wine – consumer law claims – passing off claims – trade mark revocation proceedings – final orders Cases cited: BlueScope Steel Limited v Dongkuk Steel Mill Co. Ltd (No 3) [2020] FCA 113
Les Laboratoires Servier v Apotex Pty Ltd (2016) 247 FCR 61
State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 3) [2021] FCA 568
Division: General Division Registry: Victoria National Practice Area: Intellectual Property Sub-area: Trade Marks Number of paragraphs: 61 Dates of hearing: Determined on the papers Counsel for the Applicant: Mr B. Caine KC and Mr L. Merrick SC Solicitor for the Applicant: Allens Counsel for the Respondents: Mr E. Heerey KC and Mr M. Fleming Solicitor for the Respondents: Minter Ellison
ORDERS
VID 252 of 2021 BETWEEN: SOCIETE CIVILE ET AGRICOLE DU VIEUX CHATEAU CERTAN
Applicant
AND: KREGLINGER (AUSTRALIA) PTY LTD (ABN 84 000 006 557)
First Respondent
PAUL DE MOOR
Second Respondent
PIPERS BROOK VINEYARD PTY LTD (ABN 52 09 499 754)
Third Respondent
ORDER MADE BY:
BEACH J
DATE OF ORDER:
11 JULY 2024
THE COURT NOTES THAT:
A.In these orders:
“Kreglinger” means the first respondent.
“New Branded New Certan Wine” means the product which Kreglinger and Pipers Brook intend to promote, offer for sale and sell under or by reference to the name “NEW CERTAN” as depicted in Annexure B.
“Old Chateau Certan Text” means the following text:
The label features the Mount Pleasant family homestead which was built in 1865 on the vineyard’s estate property, in Launceston. The name and the colour are inspired by old Chateau Certan, founded by family in Europe and the wine is produced in small quantities from the single Mount Pleasant vineyard around the house, that is 3.3 hectares in size, producing on average 200 cases per vintage.
“Paul de Moor” means the second respondent.
“Pipers Brook” means the third respondent.
“Prior Branded New Certan Wine” means the product presented, promoted, offered for sale and sold by Kreglinger and Pipers Brook under or by reference to the combination of features depicted in Annexure A, being the 2011, 2016, 2017, 2018, 2019 and 2021 vintages of New Certan.
B.With effect from the release of the 2022 vintage, Kreglinger and Pipers Brook propose to present the New Branded New Certan Wine in accordance with the bottle presentation set out in Annexure B.
C.In accordance with the undertaking set out in the Court’s reasons for judgment dated 15 March 2024 at [516], images depicting the Prior Branded New Certan Wine have been removed from the Halliday Wine Companion website owned and operated by HGX Pty Ltd ACN 612 186 946 published online at
D.Upon Kreglinger and Pipers Brook by their counsel undertaking to the Court that with effect from 14…
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- AGLC
- Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd (No 2) [2024] FCA 755
- Case
- [2024] FCA 755
- Decision Date
CaseChat Overview and Summary
The legal issues before the court included whether VCC was entitled to declaratory relief confirming the contravention of consumer law provisions, the appropriateness of the proposed undertakings or injunctive relief, and the apportionment of costs. VCC sought declarations to record its findings that Kreglinger and Pipers Brook had contravened sections 18 and 29(1)(g) and (h) of the Australian Consumer Law, and to hold Mr. de Moor accessorially liable. The court had to assess the necessity and appropriateness of such declarations given that the respondents had already contested the claims. Additionally, the court had to determine whether the proposed undertakings adequately addressed VCC's concerns and whether additional injunctive relief was required.
The court held that declaratory relief was appropriate as it concisely recorded the findings of contraventions. Despite the respondents' arguments that such relief would be redundant, the court found it necessary to formally record the conclusions reached. Regarding the undertakings, the court accepted the respondents' offer, noting it was sufficient to address VCC's concerns about the sale and promotion of the contested wines. The court also found that no further injunctive relief was necessary beyond what was proposed in the undertakings. Concerning costs, the court declined to make an indemnity costs order, determining that neither party had unreasonably failed to accept offers or proposals, and that the discretion to award costs should be exercised in favour of neither party.
The court made several orders to reflect its findings. It restrained Kreglinger and Pipers Brook from bottling, supplying, or distributing the Prior Branded New Certan Wine, and from using the Old Chateau Certan Text to promote the New Branded New Certan Wine. It also directed Kreglinger and Pipers Brook to remove certain images from specified websites. Furthermore, it restrained Mr. de Moor from aiding or being involved in any conduct that would contravene the undertakings or the orders. The application was otherwise dismissed, and there was no order as to costs. The court left the decision on the release of security for costs pending further review.
Orders
Orders of the court
3. Kreglinger and Pipers Brook, whether by themselves, their officers, employees, agents or otherwise howsoever, be restrained from bottling or otherwise supplying or distributing any Prior Branded New Certan Wine.
4. Kreglinger and Pipers Brook, whether by themselves, their officers, employees, agents or otherwise howsoever, be restrained from using the Old Chateau Certan Text to promote or sell the New Branded New Certan Wine.
5. Kreglinger and Pipers Brook forthwith take all reasonable steps to procure the publishers of the websites referred to in Annexure C to remove the images of the Prior Branded New Certan Wine published at the listed URLs.
6. Paul de Moor, whether by himself, his employees or agents or otherwise howsoever, be restrained from:
(a) aiding, abetting or procuring Kreglinger and Pipers Brook to engage in;
(b) being directly or indirectly knowingly concerned in or a party to,
any conduct of Kreglinger or Pipers Brook that would contravene the undertaking set out above or the orders set out in paragraphs 3 and 4.
7. The further amended originating application otherwise be dismissed.
8. There be no order as to the costs of the proceeding.
9. There be liberty to apply concerning any stay of these orders pending any appeal (if filed) or for the return of any security for costs given by VCC in the event that no appeal is filed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
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Decision
Reasons for decision
Ratio Decidendi
Legal Principle Established
There are three topics to address: (a) first, the question of declaratory relief; (b) second, the scope of any undertakings or injunctive relief in lieu; and (c) third, questions of the apportionment of costs and indemnity costs. Are declarations appropriate? VCC seeks declarations which encapsulate my findings that Kreglinger and Pipers Brook have contravened ss 18 and 29(1)(g) and (h) of the Australian Consumer Law and Mr de Moor has accessorial liability concerning those contraventions. In my view the proposed declarations are appropriate. They concisely record the contravening conduct and the nature of the contraventions that I have found. Now the respondents say that declaratory relief is unnecessary and inappropriate. They say that declarations are not an appropriate way of recording, in a summary form, conclusions reached by me in my principal reasons. It is said that declaratory relief would ordinarily be refused if it would produce no foreseeable consequences. In elaboration, the respondents make four points. First, my principal reasons already set out in detail my findings with respect to the Prior Branded New Certan Wine. Second, the principal reasons record the respondents’ undertaking to the Court not to advertise, offer for sale or sell any of the stock on hand of the Prior Branded New Certan Wine. Third, it is said that considerations of deterrence do not arise given my findings that the Prior Branded New Certan Wine was a personal project for Mr de Moor, and was sold with no intention to mislead consumers. Fourth, it is said that declaratory relief would not otherwise serve the public interest. But in my view declaratory relief is appropriate. The respondents contested all of VCC’s allegations. Moreover, it was only during the course of the trial that an undertaking was proffered, and even then without admission of liability and with the respondents still contesting VCC’s case. VCC has for the most part made out its claim in relation to the Prior Branded New Certan Wine, and the declarations are an appropriate form of relief to resolve the controversy.The respondents’ undertakings/additional injunctions The form of undertaking proposed by the respondents appears in my principal reasons at [515] to [517] where I said:Now as at the time of trial, 1,755 bottles of New Certan wine in the existing packaging up to the 2021 vintage remained in stock. This old stock has been withdrawn from sale. It has been withdrawn from the website and all promotional activity relating to that stock has ceased. The first and third respondents have agreed not to sell any of the old stock.I note that the following undertaking has been proffered to the Court, which, subject to further discussions with counsel, I am prepared to accept: UNDERTAKINGDefinitions:Halliday Wine Companion Website means the website owned and operated by HGX Pty Ltd ACN 612 186 946 and as at the date of this undertaking published online at Branded New Certan Wine means the product presented, promoted, offered for sale and sold by the First and Third Respondents under or by reference to the combination of features defined as the New Certan Features in paragraph 17 of the Further Amended Statement of Claim dated 18 November 2022 (FASOC), being the 2011, 2016, 2017, 2018, 2019 and 2021 vintages of New Certan.New Branded New Certan Wine means the product which the First and Third Respondents intend to present, promote, offer for sale and sell under or by reference to the name "NEW CERTAN" but without the other New Certan Features, as depicted in paragraph 20B of the FASOC.Undertaking:1.Without admission, the First and Third Respondents undertake to the Court that:(a)from 14 August 2023, they will not advertise, offer for sale or sell any of the stock on hand of the Prior Branded New Certan Wine;(b)they will forthwith take all reasonable steps to procure the publisher of the Halliday Wine Companion Website to remove all images of the Prior Branded New Certan Wine from the Halliday Wine Companion Website, including those published at the following URLs:i. matters:2.Without admission, the First and Third Respondents note that, if so required by the Court, they will abide by any requirement to apply a disclaimer to the label of the New Branded New Certan Wine.3.The First and Third Respondents confirm that, as at 14 August 2023, the stock on hand referred to in paragraph 1 above comprises 1755 bottles.The undertaking has been proffered in circumstances where there have been very few sales of the New Certan wine, the New Certan wine has not made any profits, there is no evidence of any damage to VCC, and the commercial value of the remaining old stock is insignificant. In my view the undertaking is adequate to deal with the question of stock and any known on-line material. VCC has expressed concern about “old” images remaining on the internet. This concern was over-stated but in any event is met by the undertaking or any necessary modification.