Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 2) [2019] FCA 1140

Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 2) [2019] FCA 1140

The court found that the first respondent, by using variations of 'V. Mitolo and Son' and 'V. Mitolo & Son', infringed the applicant’s registered trade mark and engaged in misleading and deceptive conduct under the Australian Consumer Law, warranting declarations, injunctions, and orders for delivery up or removal of infringing goods. The applicants were entitled to costs and the respondents' cross-claim was dismissed.

Jurisdiction
Australia
Judgment Date
25 July 2019
Procedural Posture
Intellectual Property/trade Marks and Consumer Law Proceeding / Final Orders Following Liability Judgment
Outcome
Declarations of infringement and contraventions granted; injunctions granted restraining respondents from specified acts; order for delivery up or removal of infringing goods granted; applicants granted costs; cross-claim dismissed; directions for steps towards account of profits; liberty to apply for further orders...
Legal Topics
['trade Mark Infringement' 'misleading or Deceptive Conduct' 'passing Off' 'orders for Delivery Up' 'injunctions' 'account of Profits' 'costs']
['intellectual Property Law' 'consumer Protection Law'] ['trade Mark Infringement' 'misleading or Deceptive Conduct' 'passing Off' 'orders for Delivery Up' 'injunctions' 'account of Profits' 'costs']

Case Brief

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Procedural Posture

Intellectual Property/trade Marks and Consumer Law Proceeding / Final Orders Following Liability Judgment

Legal Issues

  1. 1 ["Whether the respondents infringed the applicants' trade mark under s 126 of the Trade Marks Act 1995 (Cth)" 'Whether the respondents contravened ss 18 and 29(1)(h) of the Australian Consumer Law by the use of specified words and logos' 'Appropriateness of injunctions expressed in terms of statutory monopoly versus specific conduct' 'Whether orders for delivery up of infringing goods should be made where these constitute valuable commercial property' 'Entitlement of the applicants to costs']

Ratio Decidendi

The court found that the first respondent, by using variations of 'V. Mitolo and Son' and 'V. Mitolo & Son', infringed the applicant’s registered trade mark and engaged in misleading and deceptive conduct under the Australian Consumer Law, warranting declarations, injunctions, and orders for delivery up or removal of infringing goods. The applicants were entitled to costs and the respondents' cross-claim was dismissed.

Court Disposition

Declarations of infringement and contraventions granted; injunctions granted restraining respondents from specified acts; order for delivery up or removal of infringing goods granted; applicants granted costs; cross-claim dismissed; directions for steps towards account of profits; liberty to apply for further orders...

Orders

  • ['Declarations as to trade mark infringement and consumer law contraventions' 'Injunctions restraining respondents from infringing trade mark and from misleading and deceptive conduct' 'Order for delivery up or removal of infringing goods within 28 days or irreversible removal of infringing words within 35 days'...