Southcorp Brands Pty Ltd v Shenzhen Fernfortune International Wines Co. limited

Southcorp Brands Pty Ltd (Southcorp) sought interlocutory relief against Shenzhen Fernfortune International Wines Co. Limited (Fernfortune) in the Federal Court of Australia. The dispute concerned the alleged infringement of Southcorp's registered trade mark "PENFOLDS" and its associated goodwill, which Southcorp claimed Fernfortune had infringed by using the mark "PENFOLDS" on wine products imported into Australia. Southcorp sought an injunction to restrain Fernfortune from continuing this alleged infringement.

The primary legal issue before the Court was whether Fernfortune's use of the "PENFOLDS" mark on its imported wines constituted a contravention of section 120(1) of the *Trade Marks Act 1995* (Cth). This required the Court to determine if Fernfortune's mark was substantially identical or deceptively similar to Southcorp's registered trade mark, and if the goods in respect of which Fernfortune used its mark were of the same description as the goods for which Southcorp's trade mark was registered.

Justice M. Cooper considered the evidence presented by both parties regarding the use of the respective marks and the nature of the goods. The Court applied the principles of trade mark law, focusing on the test for deceptive similarity, which involves considering the overall impression of the marks and the likelihood of consumers being deceived or confused. The Court also examined the scope of Southcorp's registration and the nature of the goods imported by Fernfortune.

The Court found that Fernfortune's use of the "PENFOLDS" mark was likely to cause confusion and deceive consumers into believing that the imported wines were associated with or endorsed by Southcorp. Accordingly, the Court granted the interlocutory injunction sought by Southcorp, restraining Fernfortune from importing, selling, or distributing wines bearing the "PENFOLDS" mark in Australia pending the final determination of the proceedings.