Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd

Case [2019] FCA 720

FEDERAL COURT OF AUSTRALIA

Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd

[2019] FCA 720

File number(s): VID 176 of 2018
Judge(s): BEACH J
Date of judgment: 3 May 2019
Date of publication of reasons: 21 May 2019
Catchwords: TRADE MARKS – summary judgment – default judgment – trade mark infringement – meaning of foreign words – meaning and pronunciation of Chinese characters – use as a trade mark – summary judgment granted – application to dispense with r 4.01(2) of Federal Court Rules 2011 (Cth) – dispensation refused
Legislation:

Federal Court of Australia Act 1976 (Cth) ss 31A, 37M

Federal Court Rules 2011 (Cth) rr 1.34, 4.01(2), 4.05(2), 5.22, 5.23(1)(b), 11.02, 26.01

Trade Marks Act 1995 (Cth) ss 7(3), 88(1)(a), 120(1), 228

Cases cited:

Basetec Services Pty Ltd v CPB Contractors Pty Ltd [2017] FCA 510

Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337

Osgaig Pty Ltd v Ajisen (Melbourne) Pty Ltd (2004) 213 ALR 153

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379

Tolkien Estate Ltd v Saltalamacchia [2016] FCA 944

Upaid Systems Ltd v Telstra Corp Ltd (2016) 122 IPR 190; [2016] FCAFC 158

Date of hearing: 15 February and 3 May 2019
Registry: Victoria
Division: General Division
National Practice Area: Intellectual Property
Sub-area: Trade Marks
Category: Catchwords
Number of paragraphs: 96
Counsel for the Applicant/Cross-Respondent: Mr EJC Heerey QC and Mr PJT Creighton-Selvay
Solicitor for the Applicant/Cross-Respondent: Herbert Smith Freehills
Counsel for the First and Second Respondents/Cross-Claimants: Mr L Merrick (15 February 2019)
Solicitor for the First and Second Respondents/Cross-Claimants: Kain Lawyers (15 February 2019)
Counsel for the Third Respondent: The Third Respondent did not appear
Counsel for the Fourth Respondent: The Fourth Respondent did not appear

ORDERS

VID 176 of 2018
BETWEEN:

SOUTHCORP BRANDS PTY LTD (ACN 005 156 945)

Applicant
AND:

AUSTRALIA RUSH RICH WINERY PTY LTD (ACN 611 615 108)

First Respondent

AUSTRALIA R&R GROUP PTY LTD (ACN 620 278 702)

Second Respondent

RUSH RICH INTERNATIONAL TRADING INC., LTD (and another named in the Schedule)

Third Respondent
AND BETWEEN:

AUSTRALIA RUSH RICH WINERY PTY LTD (ACN 611 615 108) (and another named in the Schedule)

First Cross-Claimant
AND:

SOUTHCORP BRANDS PTY LTD (ACN 005 156 945)

Cross-Respondent

JUDGE:

BEACH J

DATE OF ORDER:

3 MAY 2019

THE COURT ORDERS THAT:

1.Summary judgment be given in favour of the Applicant against each of the Respondents pursuant to r 26.01(1)(e) of the Federal Court Rules and s 31A(1) of the Federal Court of Australia Act 1976 (Cth).

2.The First and Second Respondents/Cross-claimants’ cross-claim be dismissed, pursuant to r 5.23(1)(b) of the Federal Court Rules 2011 (Cth).

THE COURT DECLARES THAT:

3.The Respondents, by using the following Chinese characters:

(a)奔富;

(b)奔富酒园;

(c)奔富酒庄;

(d)澳大利亚奔富酒庄; and/or

(e)澳洲大利亚奔富 酒庄

(the Impugned Chinese Characters)

as a trade mark, have infringed each of:

(f)Australian trade mark no. 37674 for PENFOLDS (Penfolds TM);

(g)Australian trade mark no. 1762333 for BEN FU (Ben…

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AGLC
Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720
Case
[2019] FCA 720
Decision Date

CaseChat Overview and Summary

In the matter of Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd, the Federal Court of Australia dealt with claims of trademark infringement by the respondents involving the use of certain Chinese characters. The case arose when Southcorp initiated proceedings against the first to fourth respondents, alleging that the respondents' use of specific Chinese characters as trademarks infringed upon Southcorp's existing trademarks. Southcorp sought summary judgment against all respondents, default judgment against the fourth respondent, and injunctive relief to prevent further use of the contested trademarks.

The court was tasked with determining whether Southcorp was entitled to summary judgment, default judgment, and whether the respondents had infringed on Southcorp's trademarks. The respondents had failed to defend the proceeding, and the fourth respondent had not filed any evidence or participated in the proceedings. The court considered the evidence provided by Southcorp, including the similarity between the trademarks and the likelihood of confusion among consumers. The court also examined the meaning and pronunciation of the Chinese characters used by the respondents, determining that they were substantially identical to Southcorp's trademarks.

The court granted summary judgment in favour of Southcorp, finding that the respondents' use of the contested Chinese characters constituted trademark infringement. Additionally, the court granted default judgment against the fourth respondent, who had not participated in the proceedings. The court found that the fourth respondent had acted in concert with the other respondents, aiding and abetting their infringement activities. The court ordered the respondents to cease using the infringing trademarks, pay damages and costs to Southcorp, and vacate the scheduled trial date. The court also allowed Southcorp to apply for entry of the orders.

Orders

Orders of the court

1. Summary judgment be given in favour of the Applicant against each of the Respondents pursuant to r 26.01(1)(e) of the Federal Court Rules and s 31A(1) of the Federal Court of Australia Act 1976 (Cth).

2. The First and Second Respondents/Cross-claimants’ cross-claim be dismissed, pursuant to r 5.23(1)(b) of the Federal Court Rules 2011 (Cth).

THE COURT DECLARES THAT:

3. The Respondents, by using the following Chinese characters:

(a) 奔富;

(b) 奔富酒园;

(c) 奔富酒庄;

(d) 澳大利亚奔富酒庄; and/or

(e) 澳洲大利亚奔富 酒庄

(the Impugned Chinese Characters)

as a trade mark, have infringed each of:

(f) Australian trade mark no. 37674 for PENFOLDS (Penfolds TM);

(g) Australian trade mark no. 1762333 for BEN FU (Ben Fu TM); and

(h) Australian trade mark no. 1762317 for 奔富 (Chinese Character TM).

4. The Fourth Respondent has acted in concert with, and aided, counselled, directed and joined with, the First, Second and Third Respondents in furtherance of a common design, namely, the use of the Impugned Chinese Characters on Infringing Bottles (as defined in the Further Amended Statement of Claim) in contravention of s 120(1) of the Trade Marks Act 1995 (Cth).

THE COURT FURTHER ORDERS THAT:

5. The Respondents, whether by themselves, or by their servants, agents, related bodies corporate or otherwise, be restrained from using, or aiding, counselling or directing the use of the Impugned Chinese Characters or any other mark substantially identical with, or deceptively similar to, the Chinese Character TM, Penfolds TM or Ben Fu TM, in relation to wine.

6. The First Respondent pay the Applicant the sum of $351,916.75.

7. The First Respondent pay the Applicant interest on the sum in paragraph 6 above in the amount of $23,385.59.

8. The Fourth Respondent forthwith withdraw Australian Trade Mark Application Nos. 1916426, 1916427 and 1916428.

9. The Respondents pay the Applicant’s costs of and incidental to the Applicant’s interlocutory application dated 18 April 2019 (Interlocutory Application) to be taxed in default of agreement.

10. The Respondents pay the Applicant’s costs of and incidental to the proceeding to be taxed in default of agreement.

11. The time for service of the Interlocutory Application, and the affidavit of Shaun Daniel McVicar dated 18 April 2019, be abridged to midday on Wednesday 24 April 2019.

12. The trial listed to commence on 3 June 2019 be vacated.

13. Liberty to apply.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Now on the material before me, although I granted summary judgment on Southcorp’s claims Southcorp was also entitled to default judgment for reasons that I will now explain.(a) Default judgment For the purposes of determining an entitlement to default judgment, r 5.22 provides that a party will be in default if they fail to do an act required to be done, or to do an act in the time required, by the Rules, they fail to comply with an order of the Court, they fail to attend a hearing in the proceeding or they fail to prosecute or defend the proceeding with due diligence. If one or more of these conditions is satisfied, the Court may grant default judgment. Moreover, in this context the Court has power to grant both declaratory and injunctive relief by way of default judgment, as well as to grant a pecuniary remedy. Let me set out some background. On 16 February 2018, Southcorp initiated the present proceeding against the first to third respondents. On 21 February 2018, the first to third respondents each filed a notice of address for service, identifying their address for service as Kain Lawyers, 315 Wakefield Street, Adelaide, South Australia 5000. Southcorp then served its originating application and statement of claim on the first to third respondents by delivering them to Kain Lawyers. On 28 March 2018, the first to third respondents filed a defence, and the first respondent also filed a notice of cross-claim including a statement of cross-claim. The cross-claim was amended on 27 April 2018 to add the second respondent as the second cross-claimant. By 29 May 2018, Southcorp filed and served its trial evidence in support of its claims. On 31 May 2018, I made orders joining the fourth respondent to the proceeding, providing for substituted service on it, and providing for the filing of amended pleadings. All of the respondents were required to file a defence by 22 June 2018. On 1 June 2018, Southcorp filed and served an amended originating application and statement of claim. Substituted service was effected on the fourth respondent in accordance with my orders made on 31 May 2018. Upon receipt of the documents the subject of the substituted service orders, the patent and trade marks attorney firm Spruson & Ferguson which now incorporates Cullens, which had acted for the fourth respondent in pursuing trade mark registrations in Australia, confirmed that “The documents have been passed on to our instructing lawyers in China”. On 22 June 2018, the first to third respondents filed an amended defence. But the fourth respondent did not file any defence, in contravention of the orders made on 31 May 2018. Nor did the fourth respondent file any address for service as required by r 11.02 or otherwise appoint a lawyer as required by r 4.01(2). Nor has the fourth respondent subsequently taken any step to defend any of the claims made against it or otherwise participate in this proceeding. As at 20 July 2018, the first to third respondents had filed their trial evidence in answer to Southcorp’s claims and the first and second cross-claimants had also filed their evidence in support of their cross-claim. But the fourth respondent had not filed any trial evidence as required by my previous orders.

Ratio Decidendi

Legal Principle Established

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