Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd

In this case, the respondents, Intellectual Property Development Corporation and Elixir, were sued by the applicants, Stone & Wood Group and Stone & Wood Brewing, for alleged misleading and deceptive conduct, false and misleading representations, passing off and trade mark infringement under Australian consumer law and the Trade Marks Act. The applicants argued that the respondents' use of the names 'Pacific Ale' and 'Pacific' in relation to their beer products misled consumers into believing there was a connection between the respondents' products and the applicants' products. The applicants also claimed that the respondents infringed their registered trade mark. The respondents cross-claimed that the applicants made groundless threats to bring an action against the respondents for trade mark infringement.

The court found that the applicants had not established that the respondents made any of the alleged representations that would support the claims for misleading and deceptive conduct, false and misleading representations and passing off. The court noted that there was no reference to the applicants on the labels or packaging of the respondents' products and that the labels and packaging looked very different with different colours used. The court also found that the words 'Pacific Ale' and 'Pacific' were not deceptively similar to the applicants' registered trade mark. However, the court found that the respondents' cross-claim was made out as the applicants had threatened to bring an action against the respondents for trade mark infringement without establishing that the respondents had actually infringed the trade mark or that the applicants had begun and pursued an action with due diligence. The application was dismissed and the applicants were ordered to pay the respondents' costs.