Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd (No 2) [2024] FCA 755

Federal Court of Australia

Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd (No 2) [2024] FCA 755 File number: VID 252 of 2021

Judgment of: BEACH J

Date of judgment: 11 July 2024

Catchwords: CORPORATIONS – Bordeaux wine – Tasmanian wine – consumer law claims – passing off claims – trade mark revocation proceedings – final orders

Cases cited: BlueScope Steel Limited v Dongkuk Steel Mill Co. Ltd (No 3) [2020] FCA 113 Les Laboratoires Servier v Apotex Pty Ltd (2016) 247 FCR 61 State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 3) [2021] FCA 568

Division: General Division

Registry: Victoria

National Practice Area: Intellectual Property

Sub-area: Trade Marks

Number of paragraphs: 61

Dates of hearing: Determined on the papers

Counsel for the Applicant: Mr B. Caine KC and Mr L. Merrick SC

Solicitor for the Applicant: Allens

Counsel for the Respondents: Mr E. Heerey KC and Mr M. Fleming

Solicitor for the Respondents: Minter Ellison

ORDERS VID 252 of 2021

BETWEEN: SOCIETE CIVILE ET AGRICOLE DU VIEUX CHATEAU CERTAN Applicant

AND: KREGLINGER (AUSTRALIA) PTY LTD (ABN 84 000 006 557) First Respondent

PAUL DE MOOR Second Respondent

PIPERS BROOK VINEYARD PTY LTD (ABN 52 09 499 754) Third Respondent

order made by: BEACH J DATE OF ORDER: 11 JULY 2024

THE COURT NOTES THAT: A. In these orders: "Kreglinger" means the first respondent. "New Branded New Certan Wine" means the product which Kreglinger and Pipers Brook intend to promote, offer for sale and sell under or by reference to the name "NEW CERTAN" as depicted in Annexure B. "Old Chateau Certan Text" means the following text: The label features the Mount Pleasant family homestead which was built in 1865 on the vineyard's estate property, in Launceston. The name and the colour are inspired by old Chateau Certan, founded by family in Europe and the wine is produced in small quantities from the single Mount Pleasant vineyard around the house, that is 3.3 hectares in size, producing on average 200 cases per vintage. "Paul de Moor" means the second respondent. "Pipers Brook" means the third respondent. "Prior Branded New Certan Wine" means the product presented, promoted, offered for sale and sold by Kreglinger and Pipers Brook under or by reference to the combination of features depicted in Annexure A, being the 2011, 2016, 2017, 2018, 2019 and 2021 vintages of New Certan. B. With effect from the release of the 2022 vintage, Kreglinger and Pipers Brook propose to present the New Branded New Certan Wine in accordance with the bottle presentation set out in Annexure B. C. In accordance with the undertaking set out in the Court's reasons for judgment dated 15 March 2024 at [516], images depicting the Prior Branded New Certan Wine have been removed from the Halliday Wine Companion website owned and operated by HGX Pty Ltd ACN 612 186 946 published online at www.winecompanion.com.au. D. Upon Kreglinger and Pipers Brook by their counsel undertaking to the Court that with effect from 14 August 2023, they will not advertise, offer for sale, or sell any of the stock on hand of the Prior Branded New Certan Wine. THE COURT DECLARES THAT: 1. By their promotion and sale of the Prior Branded New Certan Wine in Australia with the bottle presentation set out in Annexure A, Kreglinger and Pipers Brook have each represented that: (a) the Prior Branded New Certan Wine has the approval of VCC; (b) Kreglinger has an affiliation with VCC; (c) Pipers Brook has an affiliation with VCC; (d) in circumstances where no such approval or affiliation exists and have thereby: (i) engaged in misleading or deceptive conduct, or conduct which is likely to mislead or deceive, and have thereby contravened s 18 of the Australian Consumer Law; and (ii) (made false or misleading representations in contravention of ss 29(1)(g) and (h) of the Australian Consumer Law. 2. Paul de Moor has: (a) aided, abetted or procured Kreglinger and Pipers Brook to engage in the conduct and contraventions referred to in paragraph 1; (b) been directly or indirectly knowingly concerned in or a party to the conduct and contraventions of Kreglinger and Pipers Brook referred to in paragraph 1. AND THE COURT ORDERS THAT: 3. Kreglinger and Pipers Brook, whether by themselves, their officers, employees, agents or otherwise howsoever, be restrained from bottling or otherwise supplying or distributing any Prior Branded New Certan Wine. 4. Kreglinger and Pipers Brook, whether by themselves, their officers, employees, agents or otherwise howsoever, be restrained from using the Old Chateau Certan Text to promote or sell the New Branded New Certan Wine. 5. Kreglinger and Pipers Brook forthwith take all reasonable steps to procure the publishers of the websites referred to in Annexure C to remove the images of the Prior Branded New Certan Wine published at the listed URLs. 6. Paul de Moor, whether by himself, his employees or agents or otherwise howsoever, be restrained from: (a) aiding, abetting or procuring Kreglinger and Pipers Brook to engage in; (b) being directly or indirectly knowingly concerned in or a party to, any conduct of Kreglinger or Pipers Brook that would contravene the undertaking set out above or the orders set out in paragraphs 3 and 4. 7. The further amended originating application otherwise be dismissed. 8. There be no order as to the costs of the proceeding. 9. There be liberty to apply concerning any stay of these orders pending any appeal (if filed) or for the return of any security for costs given by VCC in the event that no appeal is filed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.