C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539

FEDERAL COURT OF AUSTRALIA

C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 INTELLECTUAL PROPERTY – trade mark – appeal from a decision of a primary judge – whether the primary judge erred in finding that the respondent's proposed conduct in selling Hill of Gold wine did not constitute an infringement under s 120(1) of the Trade Marks Act 1995 (Cth) of the appellants' registered mark, Hill of Grace – whether the primary judge erred in holding that the reputation of a trade mark (or the goods to which it is affixed) is not to be taken into account in deciding whether it has been infringed under s 120(1) – whether the primary judge otherwise erred in finding that the respondent's Hill of Gold sign was not deceptively similar to the appellants' Hill of Grace mark – primary judge dismissed the appellants' claim under s 92 for removal of the Hill of Gold mark from the Register on the ground of non-use – whether the primary judge erred in finding, consequent upon his earlier conclusions, that the appellants were not "persons aggrieved" for the purposes of s 92(1) and therefore lacked standing to make such a claim – primary judge dismissed the respondent's claim under s 92 for removal of the Hill of Grace mark from the Register on the ground of non-use – whether the primary judge erred in finding that the persons using the mark were "authorised users" of the mark within the meaning of s 8 – whether the primary judge had, in any event, exercised his discretion under s 101(3) not to order the removal of the mark from the Register even though the grounds for its removal had been established and, if so, whether he erred in so doing TRADE PRACTICES – whether the primary judge erred in finding that the respondent's proposed conduct in selling Hill of Gold wine was not, for the purposes of s 52 or s 53(a), (c) or (d) of the Trade Practices Act 1974 (Cth), likely to cause consumers to mistake the respondent's wine for the appellants' wine or to mislead consumers into believing that there was some other relevant association between them EVIDENCE – expert opinion evidence of wine writers and critics, retailers, restaurateurs and academics adduced at trial by both parties as to (i) the extent to which members of the relevant section of the wine-consuming public were aware of the appellants' Hill of Grace wine and how they regarded it and (ii) the likelihood that the sale by the respondent of wine under the Hill of Gold sign would confuse, mislead or deceive the relevant group of consumers – whether the primary judge erred in ruling that much of the evidence given by the non-academic witnesses, and the evidence given by the academic witnesses as to (i), was either inadmissible or to be accorded little weight – whether the primary judge erred in his assessment of the evidence of the academic witnesses as to (ii) PRACTICE AND PROCEDURE – appellants had, by their counsel, expressly declined to argue at trial that the reputation of a trade mark (or the goods to which it is affixed) may be taken into account in determining whether it has been infringed – whether the appellants should be permitted to argue on appeal that the primary judge erred in failing to take the reputation of the Hill of Grace mark into account in the trade mark infringement case, in circumstances in which senior counsel for the respondent conceded that he would not have called different or additional evidence if the point had been taken at trial and acknowledged that he was in a position to deal with it on appeal, and a Full Court decision on which the appellants sought to rely had been given since the judgment of the primary judge PRACTICE AND PROCEDURE – whether the primary judge erred in declining to order that the appellants' pay, on the indemnity basis, the respondent's costs of obtaining and preparing expert opinion evidence in response to similar evidence, filed on behalf of the appellants, read at trial and ultimately found by the primary judge to be inadmissible or of little weight, in circumstances where the respondent had, prior to the trial, communicated its concerns about the evidence to the appellants, sought an early ruling as to its admissibility and foreshadowed an application for payment of its costs on the indemnity basis Trade Marks Act 1995 (Cth), ss 7, 8, 10, 92, 101(3), 120(1) Trade Practices Act 1974 (Cth), ss 52, 53(a), 53(c), 53(d) House v R (1936) 55 CLR 499, referred to Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, referred to Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, referred to Aristoc Ltd v Rysta Ltd [1945] AC 68, referred to de Cordova v Vick Chemical Co (1951) 68 RPC 103, considered The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, referred to Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670, referred to Colgate‑Palmolive Ltd v Pattron (1978) RPC 635, considered New South Wales Dairy Corporation v Murray Goulburn Co‑operative Company Ltd (1989) 86 ALR 549, followed Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227, referred to Jones v Minister for Immigration and Ethnic Affairs (1995) 63 FCR 32, referred to Multicon Engineering Pty Ltd v Federal Airports Corporation (1997) 47 NSWLR 631, referred to Quick v Stoland (1998) 87 FCR 371, referred to MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, referred to Coca-Cola Company v All‑Fect Distributors Ltd (1999) 96 FCR 107, distinguished Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, distinguished Abbott v Random House Australia Pty Ltd [1999] FCA 1540, followed S Odgers, Uniform Evidence Law, 4th ed 2000 D R Shanahan, Australian Law of Trade Marks and Passing Off, 2nd ed 1990 T A Blanco White and R Jacob, Kerly's Law of Trade Marks and Trade Names,12th ed 1986