E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15

HIGH COURT OF AUSTRALIA

FRENCH CJ,

GUMMOW, HEYDON, CRENNAN AND BELL JJ

E. & J. GALLO WINERY APPELLANT

AND

LION NATHAN AUSTRALIA PTY LIMITED

(ACN 008 596 370) RESPONDENT

E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15

19 May 2010

S189/2009

ORDER

1. Appeal allowed.

2. Orders 4, 6 and 7 of the orders made by the Full Court of the Federal Court of Australia on 15 April 2009 be set aside, and in lieu thereof order that:

(a) orders 3 and 5 of the orders made by Flick J on 27 June 2008 be set aside, and in lieu thereof order that the respondent's amended cross-claim be dismissed; and

(b) the appellant's amended application otherwise be remitted to Flick J for assessment of damages or, at the election of the appellant, the taking of an account of profits pursuant to s 126 of the Trade Marks Act 1995 (Cth).

3. It is hereby declared that by advertising, offering for sale and selling in Australia beer under the name BAREFOOT RADLER, without the licence or authority of the appellant, the respondent has infringed the appellant's Australian registered trade mark no 787765 registered in class 33 in respect of "Wines being goods in class 33" ("the appellant's registered trade mark").

4. From 28 days after the date of this order, or such further period as may be allowed by the Federal Court of Australia on application made to it within that 28 day period, the respondent, whether by itself, its directors, officers,

employees, agents or otherwise, be and is hereby restrained from selling, offering for sale, advertising or promoting beer under the name BAREFOOT RADLER or any other name substantially identical with or deceptively similar to the appellant's registered trade mark, without the licence or authority of the appellant.

5. Special leave in relation to ground four of the respondent's application for special leave to cross-appeal be refused.