Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd

The case involved Societe Civile et Agricole du Vieux Chateau Certan (VCC), a Bordeaux wine estate, and Kreglinger (Australia) Pty Ltd, which produced a wine under the name New Certan. The dispute centred around allegations of passing off, misleading or deceptive conduct, and the cancellation of a registered trademark under Australian law. The court had to determine whether Kreglinger's use of the New Certan mark constituted passing off, misleading or deceptive conduct, and whether the mark should be cancelled under the Trade Marks Act 1995.

The legal issues primarily revolved around the extent of VCC's reputation in Australia, the relevant date for assessing this reputation, and whether there was evidence of confusion among consumers. The court needed to assess the characteristics and knowledge of the ordinary and reasonable person in the context of wine consumption, and whether Kreglinger's actions were misleading or deceptive. Additionally, the court had to decide whether Kreglinger's use of the New Certan mark was likely to deceive or cause confusion, and whether there were grounds to cancel the trademark under the Trade Marks Act.

The court found that while VCC had a significant reputation among wine professionals and consumers interested in high-quality French wines, there was no sufficient evidence to establish this reputation as of 1999. However, by 2013, the court accepted that VCC had a notable reputation in Australia. The court also determined that Kreglinger's conduct was misleading or deceptive, and that the New Certan mark was likely to cause confusion. Despite this, the court concluded that VCC had not suffered any damage or was entitled to an injunction due to the undertakings provided by Kreglinger. Consequently, the court decided not to cancel Kreglinger's trademark registration but left the matter of an express disclaimer open for further discussion. The court reserved costs and allowed liberty to apply for further orders.

In summary, the court ruled in favour of VCC on some points, such as the misleading or deceptive conduct by Kreglinger, but found against VCC on the cancellation of the trademark and the passing off claim. The court ordered that each party bear their own costs and reserved the matter for further discussion regarding specific orders and costs.