v Carlton and United Breweries Ltd

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FEDERAL COURT OF AUSTRALIA

The South Australian Brewing Company Pty Ltd
v Carlton & United Breweries Ltd

[2001] FCA 902

TRADE PRACTICES - misleading and deceptive conduct - representation of sponsorship of two football clubs by brewer in promotional material - promotional material contained photograph of two club captains in “head to head” pose in playing apparel and with club logos - brewer had contractual rights from conductor of football competition as owner of intellectual property in clubs’ playing apparel and in club logos to use playing apparel and logos and had contractual rights from two club captains to use their images - brewer had no sponsorship contracts direct with clubs - whether representation in circumstances misleading and deceptive or likely to mislead and deceive - relevance of contractual rights.

TRADE PRACTICES - misleading and deceptive conduct - brewer in promotion in relation to football matches used the word “Showdown” - word “Showdown” registered by another entity as a word mark in relation to class 41 including sporting events and entertainment activities associated with sporting events - other entity conducted promotional activities associated with same football matches using its word mark - sporting events also known generically as Showdown matches - whether use of word “Showdown” misleading or deceptive or likely to mislead or deceive - whether use of word “Showdown” passed off brewer’s goods or services as those of another.

TRADE MARKS - registration of word mark “Showdown” in class 41 as use in relation to sporting events and entertainment activities associated with sporting events - sporting events not conducted by registered owner of mark - registered owner of word mark conducted promotional activities using word mark associated with those sporting events - application to cancel registration of word mark - whether word mark capable of distinguishing services of registered owner - whether word mark likely to deceive or cause confusion - whether registered owner intended to use word mark.

TRADE MARKS - word mark “Showdown” registered in class 41 in respect of sporting events and entertainment activities associated with sporting events - registered owner used word mark in promotional activities associated with football matches between two clubs - football matches not presented by registered owner - football matches known generically as “Showdown” matches - competitor of registered owner conducted competition for tickets to “Showdown” matches - whether use as a trade mark.

Trade Practices Act 1974 (Cth) ss 52, 53(c), 53(d)
Trade Marks Act 1995 (Cth) ss 24, 41, 43, 57, 59, 88
Designs Act 1906 (Cth)
Evidence Act 1995 (Cth) s 135

Australian Woollen Mills v F S Walton & Co Ltd (1937) 58 CLR 641 referred to
Apand Pty Ltd v Kettle Chip Co Pty Ltd (1994) 52 FCR 474 applied
Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) 49 IPR 303 referred to
Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1989) 15 IPR 362 referred to
Campomar Sociedad, Limitada and Anor v Nike International Ltd (2000) 169 ALR 677 applied
Johnson &…

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Details
Case
[2001] FCA 902
Decision Date

CaseChat Overview and Summary

In the case of South Australian Brewing Ltd v Carlton and United Breweries Ltd, the plaintiff, South Australian Brewing Ltd, sought relief from the Federal Court of Australia for alleged misleading or deceptive conduct by the defendant, Carlton and United Breweries Ltd, in relation to several promotions conducted during the Showdown events. The dispute primarily focused on the Showdown 7, Showdown 9, and Showdown 10 promotions. The plaintiff claimed that the defendant's promotional activities suggested sponsorship and authorisation by the Adelaide Football Club and the Port Adelaide Football Club, which were not given.

The legal issues before the court involved interpreting the Trade Practices Act and determining whether the defendant's promotional activities constituted misleading or deceptive conduct. Specifically, the court needed to decide if the defendant had impliedly suggested sponsorship and authorisation from the football clubs and whether the description of a "VB Superbox" as a prize in the Showdown 10 promotion was misleading.

The court found that the defendant's conduct did not imply sponsorship and authorisation from the football clubs for the Showdown 7 and Showdown 9 promotions, and thus dismissed those claims. However, regarding the Showdown 10 promotion, the court held that the defendant had indeed implied sponsorship and authorisation from the clubs through the packaging of the cartons, point of sale materials, and advertising content. The court also ruled that the description "VB Superbox" did not mislead or deceive consumers. Consequently, the court found contraventions of sections 52, 53(c), and 53(d) of the Trade Practices Act concerning the Showdown 10 promotion.

ORDERS:
Carlton & United Breweries Limited is restrained by injunction from engaging in specific conduct that the court found to contravene the Trade Practices Act. This includes the broadcasting of a specific television commercial, the use of certain photographs and messages, and the use of recorded messages from the football club captains. The cross claim by the defendant was dismissed.

Orders

Orders of the court

1. Carlton & United Breweries Limited be restrained, and an injunction is hereby granted restraining it, by itself its employees servants agents or otherwise, in trade or commerce in connection with the supply or the promotion of the sale of beer, from

(a) procuring or authorising the broadcasting of a television commercial, a video copy of which is Exhibit A1 at the hearing of this application.

(b) publishing, authorising the publication of or otherwise using the photograph depicting the photograph of Mark Ricciuto, the captain of the Adelaide Football Club Pty Ltd, and of Matthew Primus, the captain of the Port Adelaide Football Club Ltd, each wearing club playing apparel and in a “head to head” pose, and with representations of the logos of the Adelaide Football Club Pty Ltd and of the Port Adelaide Football Club Ltd.

(c) authorising in relation to the competition conducted by it using material referred to in (b) hereof the playing to members of the public the messages recorded by the said Mark Ricciuto and by the said Matthew Primus the recorded telephone message which is heard when members of the public dial 1300 132 186, the transcript of which is Annexure “O” to the affidavit of Katrina Angela Rathie filed herein on 7 June 2001.

2. The cross claim be dismissed.

Note:

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

MANSFIELD J
I do not accept those contentions. In my view, that part of the Showdown 10 promotion which offers as a prize attendance at the Showdown 10 match in the “VB Superbox” does not convey that CUB has any particular sponsorship and promotional rights at Football Park than the capacity to offer the occupancy of a premier corporate box at the Showdown 10 match at which Victoria Bitter beer and other CUB products will be available for consumption. It is not therefore necessary to refer in any detail to the signage and other rights which CUB has in relation to Football Park for AFL matches played there under its arrangements with the AFL, and the AFL arrangements with the SANFL. I also do not consider that the use of “VB” as distinct from “CUB” or “Carlton and United” as the name of the box is misleading or deceptive or is likely to mislead or deceive. It is correct that the term “VB Superbox” is not the term by which CUB’s corporate box in the Park Pavilions is known. But it is difficult to see how any member of the public might be relevantly misled or deceived by what is really a marketing description of a facility which CUB has the capacity to offer as a prize in the proposed competition. I think, in context, that the description used means no more than that CUB, as the promoter of that competition and as the supplier of Victoria Bitter beer, has the capacity to offer that prize. Accordingly, I reject that aspect of SAB’s claim.CONCLUSION In the result, I have found that SAB has not made out its claims for relief in respect of the Showdown 7 promotion or in respect of the Showdown 9 promotion. I consider that it has made out contraventions of ss 52, 53(c) and 53(d) of the TP Act by CUB in relation to the Showdown 10 promotion by its conduct and proposed conduct in representing that :(a)CUB and its Victoria Bitter beer is a sponsor of the AFC and of the PAFC; and that(b)the AFC and the PAFC have consented to or authorised that promotion,but not by offering as a prize in the Showdown 10 promotion the chance to attend the Showdown 10 match in a “VB Superbox”. The conduct associated with the Showdown 10 promotion which gives rise to that contravention is, in my judgment, the packaging of the cartons including the “head to head” photograph of the two club captains and, by reason of that conduct with which it is associated, the manner of entry to the competition by use of the two club captains’ voices. The point of sale material comprising corflutes, price boards and to the extent that they contained the head-to-head captain’s photograph the mobiles also constitutes the same representation, as does the advertising material in The Advertiser and in the AFL Record and in the proposed television commercials. I do not consider that the individual photographs of the two club captains contravene those provisions. I have rejected, earlier in these reasons, CUB’s contention that conduct on the part of SAB disentitles it from injunctive relief. I do not see any other reason why I should not grant to SAB an injunction restraining CUB from engaging in the conduct which I have found to constitute contraventions of the TP Act.

Ratio Decidendi

Legal Principle Established

Established by: MANSFIELD J

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