Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2016] FCA 820

FEDERAL COURT OF AUSTRALIA

Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2016] FCA 820 File number: VID 261 of 2015

Judge: MOSHINSKY J

Date of judgment: 21 July 2016

Catchwords: INTELLECTUAL PROPERTY – misleading or deceptive conduct and passing off – applicants and respondents were both producers of craft beer named 'Pacific Ale' – whether respondents had represented that their beer was the applicants' product – whether respondents had represented that there was an association or connection between their product and the applicants or their product – whether labelling and packaging of the products were different – whether colours used on the products were different – whether 'Pacific' was used descriptively TRADE MARKS – infringement – deceptive similarity – whether the words 'Pacific Ale' or 'Pacific', which were used by the respondents in connection with beer, were deceptively similar to the registered trade mark – whether the words 'Pacific Ale' were an essential feature of the registered trade mark TRADE MARKS – groundless threats of legal proceedings – whether registered owner with due diligence began and pursued an action against the threatened person for infringement of the trade mark

Legislation: Competition and Consumer Act 2010 (Cth), Sch 2, Australian Consumer Law, ss 18, 29 Copyright Act 1968 (Cth), s 202 Patents Act 1990 (Cth), ss 128, 129 Trade Marks Act 1995 (Cth), ss 6, 17, 120, 122, 129 Trade Practices Act 1974 (Cth), ss 52, 53