Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720

Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720

The respondents' use of the Chinese character marks, particularly 奔富 and derivations, on wine labels was use 'as a trade mark', and those marks are substantially identical with or deceptively similar to Southcorp's registered trade marks for PENFOLDS, BEN FU, and 奔富. The use would cause confusion among Mandarin and Cantonese speaking consumers, especially given the phonetic equivalence and consumer practices in Australia. The evidence showed deliberate adoption of the impugned marks to misappropriate Southcorp's reputation. The cross-claim to revoke two trade marks lacked merit, as Southcorp had long used and intended to use the marks. Requests to dispense with corporate legal...

Parties
Applicant / Cross Respondent: Southcorp Brands Pty Ltd; First Respondent / First Cross Claimant: Australia Rush Rich Winery Pty Ltd; Second Respondent / Second Cross Claimant: Australia R&R Group Pty Ltd; Third Respondent: Rush Rich International Trading Inc., Ltd; Fourth Respondent: Eastern Tomorrow (Jinjiang) Import and Export Co., Ltd
Jurisdiction
Australia
Judgment Date
03 May 2019
Procedural Posture
Intellectual Property (trade Marks) Summary Judgment & Cross Claim / Judgment Following Interlocutory Application for Summary and Default Judgment
Outcome
Summary judgment for applicant; cross-claim dismissed; injunctions and monetary relief granted.
Legal Topics
Trade Marks, Summary Judgment, Default Judgment, Trade Mark Infringement, Foreign Languages in Trade Marks, Corporate Representation in Court
Intellectual Property Trade Marks Summary Judgment Default Judgment Trade Mark Infringement Foreign Languages in Trade Marks Corporate Representation in Court

Case Brief

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Parties

Southcorp Brands Pty Ltd

Applicant / Cross Respondent

Australia Rush Rich Winery Pty Ltd

First Respondent / First Cross Claimant

Australia R&R Group Pty Ltd

Second Respondent / Second Cross Claimant

Rush Rich International Trading Inc., Ltd

Third Respondent

Eastern Tomorrow (Jinjiang) Import and Export Co., Ltd

Fourth Respondent

Procedural Posture

Intellectual Property (trade Marks) Summary Judgment & Cross Claim / Judgment Following Interlocutory Application for Summary and Default Judgment

Legal Issues

  1. 1 Whether respondents infringed Southcorp's registered trade marks by use of certain Chinese character marks on wine labels.
  2. 2 Whether alleged infringing Chinese character marks are substantially identical with, or deceptively similar to, Southcorp's marks.
  3. 3 Whether use constitutes use 'as a trade mark' under Trade Marks Act 1995 (Cth).

Ratio Decidendi

The respondents' use of the Chinese character marks, particularly 奔富 and derivations, on wine labels was use 'as a trade mark', and those marks are substantially identical with or deceptively similar to Southcorp's registered trade marks for PENFOLDS, BEN FU, and 奔富. The use would cause confusion among Mandarin and Cantonese speaking consumers, especially given the phonetic equivalence and consumer practices in Australia. The evidence showed deliberate adoption of the impugned marks to misappropriate Southcorp's reputation. The cross-claim to revoke two trade marks lacked merit, as Southcorp had long used and intended to use the marks. Requests to dispense with corporate legal...

Court Disposition

Summary judgment for applicant; cross-claim dismissed; injunctions and monetary relief granted.

Orders

  • Summary judgment in favour of the Applicant against all Respondents under r 26.01(1)(e) Federal Court Rules and s 31A(1) of the Federal Court of Australia Act 1976 (Cth).
  • First and Second Respondents' cross-claim dismissed (r 5.23(1)(b) Federal Court Rules 2011).