Federal Court: Misleading Wine Labels Found Deceptive

OUTCOME: Allowed in Part

Federal Court of Australia

Societe Civile et Agricole du [NAME_1] v [COMPANY_5] [2024] FCA 248 File number: VID 252 of 2021

Judgment of: BEACH J

Date of judgment: 15 March 2024

Catchwords: [NAME_7] wine — Tasmanian wine — passing off — extent of reputation of French wine in Australia — relevant date for assessing reputation — classes of consumers — evidence of confusion — characteristics or knowledge of ordinary and reasonable person — misleading or deceptive conduct — misrepresentation — contraventions of ss 18 and 29(1)(g) and (h) of Australian Consumer Law TRADE MARKS — cancellation of registered trade mark — ss 88(2)(a) and (c) of Trade Marks Act 1995 (Cth) — use of respondent's registered mark contrary to law — s 42(b) of the Act — respondent's registered mark likely to deceive or cause confusion — s 60 of the Act — s 88(2)(c) of the Act — residual discretion under s 88 of the Act

Legislation: Competition and Consumer Act 2010 (Cth) sch 2, ss 18, 29 Trade Marks Act 1995 (Cth) ss 10, 42, 44, 60, 80

Cases cited: Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514 Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2020) 381 ALR 507 Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397 [COMPANY_8] v [COMPANY_10] (No 8) (2008) 75 IPR 557 Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 CA Henschke & Co v Rosemount Estates Pty Ltd (1999) 47 IPR 63 CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 [NAME_12], Limitada v Nike International Ltd (2000) 202 CLR 45 Comité Interprofessionnel du Vin de Champagne v Powell (2015) 330 ALR 67 ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd (2016) 118 IPR 239 Hansen Beverage Co v Bickfords (Australia) Pty Ltd (2008) 75 IPR 505 [COMPANY_14] v [NAME_15], Inc [2020] FCAFC 235 Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd (2017) 349 ALR 598 Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 National Exchange Pty Ltd v Australian Securities and Investments Commission (2004) 49 ACSR 369 Nike International Ltd v Campomar Sociedad Limitada (1996) 35 IPR 385 Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 [NAME_16]/S v DKSH Australia Pty Ltd (2011) 280 ALR 639 RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10 Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 408 ALR 195 Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited (1954) 91 CLR [ADDRESS] Advisors Trust Company v [COMPANY_20] (t/as Maurice Blackburn Lawyers) (No 2) (2021) 164 IPR 420 Trivago N.V. v Australian Competition and Consumer Commission (2020) 384 ALR 496 Verrocchi v Direct Chemist Outlet Pty Ltd (2016) 247 FCR 570 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1988) 79 ALR 299

Division: General Division

Registry: Victoria

National Practice Area: Intellectual Property

Sub-area: Trade Marks

Number of paragraphs: 608

Dates of hearing: 9 to 11, 14 to 15, 18 August 2023

Counsel for the Applicant: [redacted]

Solicitor for the Applicant: [redacted]

Counsel for the Respondents: [redacted]

Solicitor for the Respondents: [redacted]

BETWEEN: SOCIETE CIVILE ET AGRICOLE DU [NAME_1] Applicant

AND: [COMPANY_5] (ABN 84 [PHONE]) First Respondent

[NAME_31] Second Respondent

[COMPANY_35] (ABN 52 [PHONE]) Third Respondent

order made by: BEACH J DATE OF ORDER: 15 march 2024

THE COURT ORDERS THAT:

1. Within 14 days of the date of this order, the applicant file and serve minutes of proposed orders to give effect to these reasons and short written submissions limited to 3 pages dealing with such orders and any costs question.

2. Within 7 days of the receipt of such minutes and submissions, the respondents file and serve minutes of proposed orders and responding submissions limited to 3 pages.

3. Costs reserved.

4. Liberty to apply. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BEACH J: 1 This dispute concerns a conflict between wine producers where it is essentially said that a Tasmanian wine producer has wrongly represented and passed off its product as being affiliated or associated with a French wine producer. 2 The applicant, Societe Civile et Agricole du [NAME_38] ([NAME_41]), is the owner of the [NAME_7] wine estate, [NAME_38]. For present purposes, [NAME_41] produces two types of expensive French red wine involving various up-market grape types. 3 The first and third respondents produce wine in Tasmania. They have promoted and sold a wine known as [NAME_42], which is a much cheaper pinot noir as compared with the expensive French wine produced by [NAME_41]. 4 The first respondent, [COMPANY_5] ([NAME_4]), was registered as a company in Australia on 30 October 1914 and is a sister company of [NAME_43]. 5 The third respondent, [COMPANY_35] ([NAME_44]), was established in August 1973. It was originally called [COMPANY_45]. In 2001, [NAME_4] acquired majority ownership of [NAME_44]. The vineyards of [NAME_44] are located in Tasmania, covering two hundred hectares of low-lying land. [NAME_44] owns nine vineyards and manages the [NAME_47] estate under contract with [NAME_48], the second respondent, who owns the land. [NAME_44] produces and sells wines under or by reference to various names. 6 [NAME_49] was appointed a director of [NAME_4] on 1 December 1995 and was appointed the CEO of [NAME_4] in 1998. [NAME_49] also became a director of [NAME_44] on 21 December 2001 and was appointed its CEO on 1 December 2018. 7 [NAME_41] has brought claims against the respondents alleging contraventions of ss 18 and 29(1)(g) and (h) of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) (ACL) and for the tort of passing off. It has also sought the cancellation of [NAME_50] registered [NAME_42] trade mark. The essential elements of [NAME_41]'s case include the following aspects. 8 First, [NAME_41] says that it has the necessary reputation to support its claim in passing off and to provide the factual foundation for its claim under the ACL. It is said that [NAME_41]'s reputation is long-standing, and existed long before the commencement of the respondents' activities in relation to the [NAME_51]. It is said that the reputation covers both the name [NAME_38] and the presentation of the wine sold under that name. I should say now that the question of the reputation of [NAME_41] and its wines in Australia was the subject of considerable contest before me at trial. 9 Second, it is said that when [NAME_49] set about developing the label for the first vintage of the [NAME_51], which was the 2011 vintage released in 2013, he did so by providing an example of [NAME_41]'s wine to the respondents' designer, [NAME_53], with instructions to use it as inspiration. Now it is apparent that [NAME_49] was involved in the creation of the overall bottle presentation of the 2011 and 2016 vintages of the [NAME_51]. He approved the final presentation and sale of the 2011, 2016 and subsequent vintages of the [NAME_51]. There was little contest before me as to the accuracy of such matters. 10 Third, [NAME_41] says that as a result of [NAME_49]'s involvement in the design of the overall presentation of the 2011, 2016 and subsequent vintages, there is a high degree of visual similarity between the presentation used to date by the respondents for the [NAME_51] and the presentation of [NAME_41]'s wine. This includes the use of the name [NAME_3], the use of a pink cap and accent colour in the [NAME_42] name, the use of a stately home, the French text, the fluted edge profile and the aged appearance of the label, and more generally the overall look and feel of the wine presentation. It is said that the similarity is so strong because the presentation of the [NAME_51] has been copied from the presentation of [NAME_41]'s wine. In large part I have accepted [NAME_41]'s case on these aspects. But of course these propositions do not address the proposed new branding of the [NAME_51] that in my view substantially removes many of these similarities. 11 Fourth, it is said that the respondents have promoted the [NAME_51] by expressly referring to [NAME_41] and a family connection to it. In doing so, it is said that the respondents have availed themselves of the fame and reputation of [NAME_41] and its wines for their own commercial benefit. I will return to these matters later. But it is not in issue that there is no arrangement or authorisation in place between [NAME_41] and the respondents in relation to the [NAME_51]. 12 Fifth, [NAME_41] says that the effect of the respondents' conduct is such that Australian consumers of fine wine and members of the fine wine trade have been led to erroneously believe that the [NAME_51] was in some way connected with or approved by [NAME_41]. This has been a substantial area of contest before me and I will discuss this later. 13 Sixth, [NAME_41] says that the impression created by the respondents' conduct to date has been misleading and false in that it has been suggested that the [NAME_51] was in a commercial way associated with [NAME_41] or its products. It is said that there is no commercial connection between [NAME_41] and the respondents, and [NAME_41] has not approved or authorised the respondents' conduct in connection with the [NAME_51]. In summary, I would largely agree with [NAME_41] in relation to the respondents' past conduct. 14 Seventh, it is said that [NAME_49] has been the driving force behind the [NAME_51]. It is said that the evidence establishes that it has been a highly personal project to him. It is said that his conduct is such that he has gone beyond his role as an officer and employee of [NAME_56] and has been knowingly involved in the relevant sense. Generally speaking I have agreed with [NAME_41] on this aspect of the case. 15 Now for the reasons that follow, I have largely accepted [NAME_41]'s case as to the respondents' past conduct. 16 But the present proposal by [NAME_56] to adjust the presentation of the [NAME_51] for future vintages and not to sell current stock in my view addresses any problems previously created by the respondents' conduct and will avoid any future infringing conduct. 17 There is one further matter. [NAME_4] is the registered proprietor of Australian trade mark no. 815277 for the words [NAME_42] in class 33 filed on 25 November 1999; class 33 concerns alcoholic beverages including wines. The registration of that trade mark was unopposed. But as part of its case, [NAME_41] now seeks its cancellation. But I have rejected this aspect of its case. 18 For convenience I have divided my discussion into the following sections: (a) Some relevant background ([20] to [86]); (b) The witnesses ([87] to [123]); (c) The presentation, sale and promotion of [NAME_41]'s wines ([124] to [156]); (d) Evidence of reputation or consumer awareness ([157] to [214]); (e) The previous design and packaging of the [NAME_51] ([215] to [263]); (f) The significant resemblance between the [NAME_51] and [NAME_41]'s wine ([264] to [318]); (g) The new branding for [NAME_42] ([319] to [353]); (h) [NAME_41]'s claims under the ACL and in passing off ([354] to [543]); (i) [NAME_41]'s claim against [NAME_49] – accessorial liability ([544] to [551]); (j) Cancellation of [NAME_50] registered trade mark for [NAME_42] ([552] to [601]); (k) Conclusion ([602] to [608]). 19 Let me begin with some further relevant background.

Some relevant background 20 Let me begin by saying something further about the parties.

Parties 21 The [NAME_41] vineyard estate is located in [NAME_57] in the [NAME_7] region of France, and lies to the east of the Dordogne River. It is part of the wine making region of [NAME_7] that is referred to as the Right Bank. 22 The [NAME_58] was originally granted by royal decree to a Scottish family – the [NAME_59] – in the late sixteenth century. The name in its current form, "[NAME_38]", has existed in local records in [NAME_57] since 1745. It is one of several vineyards established in the original "Sertan" estate, which also include [NAME_60] and, until about 20 years ago, [NAME_61]. "[NAME_3]" is recorded as the name of a place in the French equivalent of the Titles Office. 23 The modern history of [NAME_41] began in 1924 when [NAME_63] purchased the [NAME_66]. [NAME_68] was working in the [NAME_69] wine merchant business in Belgium at that time and travelled to [NAME_7] to source wines. [NAME_68] produced his first vintage of wine from the estate in 1924, and the wine was given the same name as the wine estate, [NAME_38]. In order to be precise I will from hereon refer to this particular product as the [NAME_67]. The [NAME_67] has been produced since that time, and is made from a mix of Merlot, Cabernet Franc and Cabernet Sauvignon grapes. 24 Further, in 1946, [NAME_68] purchased an adjacent parcel of land known as Clos de la Gravette, which was amalgamated into the [NAME_66]. 25 The management of the [NAME_58] was passed from [NAME_68] to his sons, [NAME_70] and [NAME_71], and in 1985 to [NAME_70]'s son and the current manager, [NAME_73], who gave evidence before me. [NAME_76] and his immediate family have lived on the [NAME_58] since 1965. 26 [NAME_41] itself was incorporated in 1957. It is operated by way of a management committee, the membership of which is determined by the shareholders of [NAME_41]. It is convenient to note here that [NAME_49] is not and has never been a member of the management committee of [NAME_41] or an employee of [NAME_41]. 27 In 1985, [NAME_76] introduced a second wine for [NAME_41], which was the La Gravette de [NAME_3]. In order to be precise I will describe this as the [NAME_77]. The [NAME_77] is also made from Merlot, Cabernet Franc and Cabernet Sauvignon grapes. 28 The [NAME_67] and the [NAME_77] are each the subject of limited annual production. Each year [NAME_41] produces between 30,000 to 50,000 bottles of [NAME_67] and approximately 10,000 to 20,000 bottles of [NAME_77]. 29 But sales of [NAME_41]'s wines in Australia have been very limited. The only evidence before me of sales of the [NAME_67] shows that a few thousand bottles of the [NAME_67] were sold over the past 25 years. Further, the only evidence of sales of the [NAME_77] shows that around eleven bottles were sold in the period 2012 to 2020. 30 The [NAME_67] retails for between approximately $600 and $800 per bottle. To the extent the [NAME_77] has been sold in Australia, the most recent sale on the evidence is one bottle for $109 in 2020. 31 Let me now say something further about [NAME_49]. [NAME_49] is the great-grandson of [NAME_78], the Belgian wine merchant who was responsible for acquiring the [NAME_58] in 1924. [NAME_49] is the grandson of [NAME_78]'s only daughter, [NAME_79]. [NAME_82] was the eldest child of [NAME_78], and she chaired [NAME_41]'s annual general meetings following his death in 1962 until she died in 1995. [NAME_49]'s mother, [NAME_83], is the eldest child of [NAME_82]. She chaired [NAME_41]'s annual general meetings from her mother's death in 1995 until about 2016. [NAME_49] is a shareholder of [NAME_41], which shares he received from his mother in 2010. 32 [NAME_49] claims a strong and authentic familial connection with [NAME_41] and members of the [NAME_69]. And of course it cannot be disputed that [NAME_49] is a member of the [NAME_69]. 33 So, to the extent that it is or has been represented by [NAME_49] or others that he has a familial connection with [NAME_41], that would be correct. He does have such a connection. But statements about a familial connection do not represent or imply a commercial association or connection between [NAME_56] on the one hand and [NAME_41] on the other hand or the parties' respective products. 34 Let me now deal with some general matters concerning the Australian wine industry and French imports. In that context I need to begin with some statistics.

Australian wine and French wine – some statistics 35 Wine Australia is an Australian government statutory corporation funded primarily by industry levies, government contributions, voluntary contributions made by industry members, and costs recovered from regulatory activities undertaken by Wine Australia. 36 Wine Australia is empowered to coordinate and fund research and development for grapes and wine, facilitate the dissemination, adoption and commercialisation of the results of such research, control the export of wine from Australia and promote the sale and consumption of wine, both in Australia and overseas. 37 Wine Australia collects data relating to both the Australian and international wine markets including in relation to wine consumers, as well as the Australian wine sector including in relation to wine producers. Such data includes data regarding imports and exports of wine, as well as grape production and pricing, sales and supply and demand generally. 38 Wine Australia also analyses customs data made available by the Australian Bureau of Statistics (ABS), subscribes to third party data sources on the Australian and global wine market, such as [NAME_85], the International Wine and Spirit Record ([NAME_86]) and [NAME_87], and purchases published reports from other organisations. Wine Australia provides analysis based on this data to Australian wine makers and grape growers, Australian wine exporters and other persons and entities. 39 Let me begin by saying something about the value of imported and domestic wine in Australia. 40 In evidence were screen captures of Wine Australia's "Market Explorer" interactive online tool. The screen captures showed data displayed in response to the drop down menu question "Which markets consume the most imported wine?". This data was made available by [NAME_86] to Wine Australia in its capacity as a subscriber. The screen captures record the following. 41 In 2020, imported wines accounted for 31.4% of the Australian wine market by value, which equates to around US $1.907 billion. The remaining 68.6% of the market comprised domestic wines. Of the 31.4% market share that was imported, the majority of those wines originate from France (37.6% by value) and New Zealand (40.1%). 42 In 2021, imported wines accounted for 34.3% of the Australian wine market by value, which equates to around US $2.054 billion. The remaining 65.7% of the market comprised domestic wines. Of the 34.3% market share that was imported, the majority of those wines originate from France (39.7% by value) and New Zealand (37.7%). Italy supplied the third majority of imported stock (14.8%), followed by Spain (2.4%) and the USA (1.1%). 43 Let me say something about the on and off-premise consumption in Australia and France. 44 In evidence were screen captures of Wine Australia's "Market Explorer" interactive online tool concerning on-premise and off-premise consumption of wine, in both Australia and France. The screen captures showed data displayed in response to the drop down menu question "What is the share of on vs off-premise in each market?". This data was made available by [NAME_86]. The data for this question is calculated by reference to the volume of 9 litre cases sold, which equates to twelve 750ml bottles. 45 It was recorded that in 2020, of the 58.2 million 9L cases of wine purchased for consumption in Australia, 8.9% was consumed on-premise, for example, in restaurants, bars, and other hospitality venues, and 91.1% was purchased for consumption off-premise, such as purchased at bottle shops or from online retailers. It was recorded that in 2020, of the 243.4 million 9L cases of wine purchased for consumption in France, 19.5% was consumed on-premise and 80.5% was purchased for consumption off-premise. 46 It was recorded that in 2021, of the 54.8 million 9L cases of wine purchased for consumption in Australia, 10.9% was consumed on-premise and 89.1% was purchased for consumption off-premise. It was also recorded that in 2021, of the 236.9 million 9L cases of wine purchased for consumption in France, 20.6% was consumed on-premise and 79.4% was purchased for consumption off-premise. 47 Let me say something about the importation of French wines into Australia by region. 48 Evidence was given that it is not possible to statistically determine the percentage of wine imported into Australia per region of France. However, the ABS customs data available to Wine Australia demonstrates that in 2021 approximately 23 million litres of wine were imported from France into Australia. Based on the information set out in the following tables, it is estimated that wine from the [NAME_7] region accounts for approximately 3% to 4% of French wine imported into Australia. 49 Table 1 relates to customs data made available by the ABS to Wine Australia and shows that red table wine accounted for 29% of the volume of French wine imported into Australia in 2021. The ABS-supplied customs data does not specify the region of France of the imported wine, only that it was imported from France. Table 1: Share of wine import volume from France in 2021 by colour/wine style (source: ABS-supplied customs data) Wine style/colour Share Red table wine 29% White table wine 14% Sparkling 42% Other 15%

50 Table 2 relates to data collected by [NAME_85], but it does not capture every individual wine sale made in off-premise retail channels. However, it was the most reliable data source available to Wine Australia in respect of off-premise retail channels. The data in Table 2 concerns off-premise retail sales of French wine in Australia, for example, wine sold in bottle-shops or online, for consumption elsewhere, for the year 2021. This data is broken down by region. Table 2: Share of French wine off-premise retail sales volume in Australia by region in 2021 (source: [NAME_85]) Region Share of French wine Percentage Estimated share of red wine sales sales red wine products Champagne 55% 0% 0% Languedoc-Roussillon 13% 29% 39% Loire Valley 8% 4% 4% Provence 8% 0% 0% Rhone 4% 30% 13% Unknown 3% 5% 2% Burgundy 3% 7% 2% Other Region 3% 90% 25% South West 1% 18% 2% [NAME_7] 1% 97% 10% Alsace 1% 0% 0% Beaujolais 0% 100% 3% Cahors 0% 100% 0%

51 Table 2 shows that wines from the [NAME_7] region accounted for 1% of total off-premise retail sales of all French wine of all varieties in Australia in 2021. Of this percentage, 97% was red wine. It shows that wines from the [NAME_7] region accounted for 10% of total off-premise retail sales of French red wine in Australia in 2021. 52 Table 3 relates to data collected by consulting group [COMPANY_88] and published in its Wine On-Premise Australia 2022 report. The data shows a breakdown by region of France's wine listings in the on-premise channel, for example, restaurants, hotels, clubs and wine bars, for consumption on-site. Table 3: Share of France's wine listings in the on-premise channel by region (source: [COMPANY_88]) Region Share of listings 2022 Champagne 27% Loire Valley 14% Rhone 11% Burgundy 10% [NAME_7] 8% Alsace 7% Provence 6% Chablis 6% Beaujolais 5% Languedoc-Roussillon 4% Other Regions 2%

53 Table 3 shows that wines from the [NAME_7] region accounted for approximately 8% of the on-premise listings for French wines. The data was collected from a study which quantified the number of wines listed by region in France, on a sample of wine lists at a variety of on-premise venues. 54 In relation to the data in Tables 2 and 3 above, [NAME_7] wines have a higher proportion of listings on wine lists and menus compared to [NAME_7]'s proportion of off-premise retail sales. However, the number of listings does not necessarily correlate with the volume of wine sold. 55 Let me now say something about the trends in the volume and value of French wines imported into Australia over the last 20 to 30 years. 56 Based on customs data made available by the ABS to Wine Australia as depicted in Figures 1 and 2 below, imports of French wine across all types into Australia have increased significantly in the last 20 years with respect to both volume and value. 57 In relation to ABS-supplied customs data, value is calculated by the "customs value", which is the transaction value actually paid or payable by the importer to the supplier. This is a measure of wholesale value, rather than retail value. 58 Figures 1 and 2 show that between 2000 and 2021, imports of French wine into Australia increased by 745% in volume and 1094% by value, and imports of French red wine specifically increased by 586% in volume and 1120% by value. Over this period, French red wine has consistently accounted for approximately 30% of imports by volume, and 17% by value.

Red wine varieties grown in Australia 59 In Australia, shiraz is by far the most dominant red wine variety sold, followed by cabernet sauvignon and grenache. Pinot noir entered the market in the early 1980s, however, it represents a small proportion of the market by reference to sales volume. The total area of pinot noir vines planted in Australia is very small when compared to the other three varieties mentioned. 60 In evidence was Wine Australia's varietal snapshot which is based on data from the National Vintage Survey 2022 conducted by Wine Australia. It was recorded that the area of pinot noir vines in Australia was 4,948 hectares out of 135,133 hectares for all varieties, comprising 3.7% of the total area planted and 5.7% of the total area of all red varieties planted. Further, 44,271 tonnes of pinot noir grapes were crushed of a total of 1,734,260 tonnes for all varieties in Australia, comprising 2.6% of the total crush and 4.6% of the total crush of all red varieties. Further, ten percent of pinot noir crush was from Tasmania. Further, Tasmania has produced an estimated average winegrape crush of around 12,000 tonnes per year over the 6 years from 2017 to 2022, which equates to approximately 8 to 9 million litres of wine. This accounts for less than 1% of Australia's total wine production. 61 The typical Australian wine drinker to the extent there is such a consumer does not purchase or drink very much pinot noir. 62 Cheap pinot noir is typically priced at around $25 per bottle, whereas a good quality pinot noir is typically priced at between $40 to $65 per bottle or potentially higher. I note that [NAME_51] has sold in the range of $75 to $95 per bottle. In contrast, the majority of all wine sold in Australia is priced at below $25 per bottle. 63 Let me turn more generally to the pricing of Australian wine.

Prices of Australian wine 64 It is important to appreciate that wine is comparatively expensive in Australia, when compared to average prices in Europe. There is no international formalised set of definitions concerning market segments and prices of wine. 65 The pricing of expensive wine in Australia has shifted significantly. For example, around five years ago, Australian wine drinkers would not typically purchase a bottle of Australian wine for $150. However, presently, $150 is not an uncommon price for a "super premium" wine. 66 The price of iconic wines such as Penfolds Grange has increased dramatically over the years. In 1984 the then current vintage of Penfolds Grange was selling at a retail price of between around $50 to $70 a bottle. The 2018 Penfold Grange is currently $1,000 per bottle. Producers of such exclusive iconic wines have generally increased their price per bottle by around $50 each year. As an example, [NAME_89], a small family owned wine producer, followed this practice with their Hill of Grace wine. The increased price of wines such as Grange and Hill of Grace has the effect of creating room in the market for wines priced beneath that level. 67 The increase in the price of "premium" wines, that is, a wine sold for $25 or above, is due in part to the increased willingness of consumers, particularly Chinese consumers, to pay high prices for premium Australian wine. This practice has driven up the price of many premium wines.

Consumers purchasing premium and non-premium wines 68 [NAME_90], one of the respondents' expert witnesses and whose evidence I have accepted on some topics, described the typical consumer of non-premium wines to the extent there is such a typical consumer. 69 He took the price point of less than $25 as describing a non-premium wine. A consumer purchasing a wine under $25 is someone who likes wine, but is not obsessed by it. For example, if you are buying three bottles per week, this would equate to spending around $75 a week on wine, which is, for many people, a large amount of money for a discretionary purchase. This type of consumer may buy a $50 bottle of wine for a gift or special occasion, but not very often. 70 [NAME_93] described the typical consumer of wines at a price point of $70 to $100 to the extent there is such a typical consumer. He considered that the purchaser of a $70 to $100 bottle of wine is likely to be either someone that has a cellar or collection, or a consumer who wants to buy a nice gift or otherwise has significant disposable income. Such consumers are generally better informed about wine than consumers of wine priced at $25 or less. To understand and justify spending $70 to $100 on a bottle of wine, such a consumer might have one or more characteristics such as being wealthier, being better educated about wine, being a subscriber to a wine publication or website, using wine apps such as Vino and Decanter to value and gain information about wine, being a member of a wine club or a wine group, or visiting wineries and showing off their knowledge of wine. 71 These types of people would regard themselves as being engaged with their purchase. That is, the purchase of wine at this price point will likely involve careful consideration of the wine being offered for sale, its characteristics, the "story" behind the vineyard, and critical reviews of that wine. Such matters will aid in justifying spending $70 to $100, when such consumers could otherwise purchase something drinkable at $25. 72 In relation to a consumer purchasing a $500 bottle of wine, these consumers would be a small subset of consumers purchasing a $70 to $100 bottle of wine in the sense that they would not exclusively buy $500 bottles; their everyday drinking wines will likely cost less than $500. However, that does not suggest that a typical consumer of $70 to $100 wine is likely to buy a $500 bottle of wine, but that the "$500 consumer" will also typically be prepared to spend less than this amount on wine. There are very few consumers who have both the disposable income and the interest to be spending $500 on a bottle of wine in the first place. 73 The above attributes would also apply to consumers at the $500 price point. Consumers of $500 bottles of wine are likely to purchase such a wine to be cellared for later consumption. [NAME_93] expected these consumers to be aware that by the time they take possession of the wine, it will be at least four to five years old, and might typically need another decade or more of cellaring before the optimum time to drink the wine arrives. These people will almost invariably have a very detailed knowledge about wines and be acutely aware of the wine that they are buying. These people will also often be looking to make a statement by purchasing and later serving such wine, for example, they might have a collection of Mouton Rothschild or vintages of [NAME_94]. 74 I will return to the question of consumer classes later.

What do Australians know about [NAME_7] and [NAME_7] wines? 75 The average Australian wine consumer, that is, someone who typically purchases wine at $25 or less per bottle, would have minimal awareness and understanding of [NAME_7], its regions and estates. Amongst the average Australian consumer, only a small proportion are likely to have heard of some of the more famous brands from the Medoc region in [NAME_7], such as [NAME_95] and [NAME_96], and maybe [NAME_94] from [NAME_97]. Such consumers might be aware of the elite and therefore expensive châteaux but even if so are unlikely to be able to name many châteaux below that elite level. 76 [NAME_93] commented on the knowledge that Australian consumers typically buying wine for around $70 to $100 per bottle would have of [NAME_57] in [NAME_7], and further [NAME_41]. 77 Only a tiny percentage of Australian wine consumers would have heard of the [NAME_7] sub-regions, less would be aware that there is a Right Bank area and a Left Bank area, less again would be aware of [NAME_57], and less again would be aware of [NAME_41]. Serious wine collectors and people who buy [NAME_7] wine every year will be aware of [NAME_57]. 78 [NAME_93] commented on the type of consumer who would purchase a bottle of wine from [NAME_57] at a price point of $500, and whether any cross-over might exist between this person and a consumer interested in buying a $75 to $95 Tasmanian pinot noir. In his view, which I accept, the likelihood of such a consumer "crossing over" is small, at best. The people interested in buying [NAME_7] are often quite different people. If you are spending $500 buying a wine from [NAME_57], you are a rare customer. People who collect wines from [NAME_57] châteaux are typically deeply engaged with [NAME_57] and its wine, which is what drives up the prices of Right Bank wines. People who are buying such [NAME_7] wines at $500 will almost invariably have carefully selected cellars. That said, such a person may also be an enthusiast of pinot noir, and might be prepared to buy an expensive pinot noir, of which Tasmanian pinot noir represents only a tiny fraction of the market. 79 The evidence also establishes that a typical customer of a $500 [NAME_57] wine would generally obtain a personal allocation from a retailer or distributor importing these wines into Australia, known as a "negociant".

Accordingly, they are likely to have connections with and be aware of who is importing the wines. 80 The negociant and customer relationship is a very personalised one, in the sense that these consumers are not required to wait until the wines arrive in Australia to be sold at full price, but they often buy en primeur. The en primeur system is the traditional means by which trade and customers are able to buy wines from [NAME_7] châteaux with a payment prior to delivery, but set at a lower price than later sales of the same wine. Additionally, these buyers would have typically read reviews of the vintage they are purchasing. This is because they are more engaged with the purchase decision, are seriously committed to it, and will often have favourite châteaux. For example, there are some Australian purchasers who buy wine in large volume and also have cellars in France or London used to initially store that wine before importing it to Australia. 81 Dealing with the reverse position, [NAME_93] commented on the type of consumer who would purchase a $75 to $95 Tasmanian pinot noir and the cross-over to the extent that it exists between this person and a person buying a $500 bottle of [NAME_57] wine. 82 Based on his experience and knowledge of the Australian wine market, he considered Tasmanian pinot noir to be somewhat niche. Production of Tasmanian pinot noir is minuscule in the context of Australia's national wine production. However, it is currently the subject of significant favourable media coverage. Tasmanian pinot noir does not have a substantial international reputation, but does have a local reputation within Australia. In his experience, a large proportion of Tasmanian pinot noir is drunk and sold within Tasmania or by people travelling through Tasmania. 83 In his experience, any cross-over between consumers purchasing $75 to $95 Tasmanian pinot noir and $500 [NAME_57] wine would be small at best. Based on his experience and knowledge of Australian consumers and their buying habits, and the market segments for Australian wine, he considered that if someone is spending $75 to $95 on a Tasmanian pinot noir, they are committed to pinot noir and in particular Tasmanian pinot noir.

Accordingly, it would be unlikely for such a consumer to spend $500 per bottle on [NAME_7] wine. 84 Further, [NAME_93] observed that consumers typically have specific preferences which narrow their interest to particular wine styles and varietals. Tasmanian pinot noir is typically light to medium body in structure and of medium flavour intensity, whereas the premium wines from the right bank in [NAME_7] deliver significant depth of flavour and structure. In his opinion, they could hardly be more different. 85 Further, in his experience a Tasmanian pinot noir drinker would be more expected to gravitate to and be far more interested in Burgundy and Rhone wine, unless they are an individual who likes and purchases every style of wine, which is rare. 86 I accept his evidence on such matters.

The witnesses 87 Let me say something more at this point concerning the witnesses.

[NAME_41]'s witnesses 88 As I have said, [NAME_76] is the manager of [NAME_41]. He gave evidence about the history of the [NAME_66], the history of [NAME_41], the way in which [NAME_41]'s wines have been labelled over time, the sale and promotion of the [NAME_98], [NAME_41]'s discovery and reaction to the [NAME_51] and the absence of any commercial connection between [NAME_41] and the respondents. [NAME_76] was cross-examined very briefly, but the substance of his evidence was not challenged. 89 [NAME_99] is a professional wine writer and critic with more than 40 years' experience in the Australian wine industry. He gave expert evidence about the characteristics of Australian wine consumers, the [NAME_7] region and the [NAME_57] sub-region and the extent of their reputation in Australia, the involvement of French wine producers in Australian wine businesses, the reputation of the [NAME_66] and its wines in Australia, the presentation of [NAME_41]'s wines and his experience of the [NAME_51]. [NAME_102] was cross-examined briefly. 90 [NAME_103] is a professional wine writer and critic with more than 20 years' experience in the Australian wine industry. She gave expert evidence about the reputation of the [NAME_66] and its wines in Australia, the presentation of [NAME_41]'s wines and her experience of the [NAME_51]. [NAME_106] was cross-examined briefly. [NAME_106] was a straight-forward witness. She gave short and sharp answers to the questions asked. 91 [NAME_107] is a wine importer and distributor with more than a decade's experience in the Australian wine industry and a particular interest in [NAME_7] wines. He gave evidence about how [NAME_7] wines are typically sold, the reputation of the [NAME_66] and its wines in Australia, and his experience of the [NAME_51]. [NAME_110] was cross-examined. 92 [NAME_111] MW is a Master of Wine, which is a prestigious international wine qualification. His particular areas of expertise are the wines of [NAME_7] and the Australian wine auction market. He gave expert evidence about how [NAME_7] wines are typically sold, the reputation of the [NAME_66] and its wines in Australia, the presentation of [NAME_41]'s wines and his reaction to the [NAME_51]. [NAME_114] was cross-examined. 93 [NAME_115] is the National Business Manager of Imported Wines at [NAME_118], an Australian wine distributor; the business is operated by [COMPANY_119]. He gave evidence about the promotion and sale of [NAME_7] wines in Australia, including the [NAME_67], but was not cross-examined. 94 [NAME_121] is a wine professional with more than 35 years' experience in the Australian wine industry, involving wine writing, wine judging and the importing and retailing of wine. He gave evidence about the reputation of the [NAME_66] and its wines in Australia, but was not cross-examined. 95 [NAME_124] is a director of [COMPANY_127], which operates the [COMPANY_130]. He gave evidence about the availability and promotion of the [NAME_67] at [COMPANY_128], but was not cross-examined. 96 [NAME_131] is the solicitor for [NAME_41] who gave evidence in relation to publications available in Australia which refer to the [NAME_66] and its wines and publications referring to the [NAME_51]. She was not cross-examined. 97 Let me at this point say something more about [NAME_41]'s witnesses. 98 To support its claimed reputation in, or consumer recognition of, the [NAME_41] features and the word "[NAME_3]", [NAME_41] relied upon these various wine professionals. But none of these witnesses is representative of the ordinary and reasonable consumer. Each of them is an expert in wine, with a high degree of interest in, and level of knowledge of, French wines, including wines from the [NAME_7] region. In fact, each of them has spent time in the [NAME_57] area, and many of them have visited and dealt directly with [NAME_41] in their professional capacity. Contrastingly, none of them are marketing or branding experts. 99 [NAME_41] suggests that this is a rare case in which the trade is involved and were or were likely to be misled. But the probative evidence about the nature or extent of that class was thin. 100 [NAME_41]'s only attempt to identify the trade was to lead evidence from experts with a high degree of knowledge of and an interest in [NAME_7] wines, many of whom have esoteric and idiosyncratic personal experiences. 101 In particular and as I have indicated, [NAME_106] is a wine writer who has travelled to leading wine regions, including in the sub-region of [NAME_57], since the late 1990s for her professional development which [NAME_106] said are an important part of learning about these regions, the vineyards, the producers and their wines. She has read extensively on the [NAME_7] region and its wines, including the [NAME_98]. She has written on wines and wine producers from the [NAME_7] region, including the [NAME_67]. She attended the 2011 dinner at [NAME_134] that I will discuss later. 102 [NAME_102] studied the [NAME_7] wine region of France as part of an Associate Diploma in Wine Marketing and Production in 1980 and 1981. He now teaches about the [NAME_7] region in masterclasses on wine. He has travelled extensively in connection with his work in the wine industry, including spending six months during 1985 visiting wine regions, including [NAME_7]. He has written about French wines, including wines from [NAME_7], since 1983. He has published a number of reviews on the [NAME_67]. 103 As I have said, [NAME_114] is a Master of Wine. He has over 42 years of experience, which commenced with four months working in the [NAME_7] region. He has read extensively about wine regions and wine producers. In 1989, he established and managed the Sydney office of [NAME_138], a specialist fine wine auction house. From 2003 onwards, [NAME_114] regularly travelled to [NAME_7] to source wines for [NAME_137], including from [NAME_41]. He has visited the [NAME_58] on many occasions. 104 [NAME_139] is a wine professional who has been involved in sourcing and selling a range of French wines, including from [NAME_7], from at least 1996 when he founded [NAME_140]. He taught an introductory French wine course, which focused on [NAME_7], Burgundy, Champagne and Rhône. He attended [NAME_7] en primeur week in 2011, which included tasting the [NAME_67]. 105 As I have said, [NAME_110] is a wine professional who has a particular interest in [NAME_7] wines. He is originally from Pessac, an outer suburb of [NAME_7], and would cycle around [NAME_57] from time to time and pass the [NAME_66] when he was growing up. He has experience in the French wine industry, in which context he was involved in the 2010 [NAME_7] en primeur campaign. He has completed wine qualifications, which included studying [NAME_7] wines. He is completing his Master of Wine studies. From 2012, he has travelled to [NAME_7] each year for en primeur week and to visit négociants and Châteaux contacts. He has taught subjects on [NAME_7] wines. 106 [NAME_141] has worked in the wine industry since 1993. He has been the National Business Manager of Imported Wines at [NAME_118] since 2007. He travelled to [NAME_7] including [NAME_57] in 1996 whilst in France working a vintage in another wine region, and in the last 22 years, has attended or hosted dozens of [NAME_7] wine-tasting events. 107 And as I have said, [NAME_142] is a director of the company which owns and operates [COMPANY_128] in Dunkeld, Victoria, a food and wine destination venue. In that role, he oversees a collection of more than 30,000 bottles of approximately 3,700 wines, which collection was started in the early 1970s by his father who apparently had an interest in French wine. According to [NAME_142], his father began purchasing and importing [NAME_67] in the mid-1980s. [NAME_142] has travelled to [NAME_57] as recently as 2017, at which time he was given a tour of the [NAME_41] by [NAME_76]. 108 Now each of these witnesses is very knowledgeable and is not representative of the ordinary and reasonable consumer of a $75 to $95 bottle of Tasmanian pinot noir. They are similarly not representative of the ordinary and reasonable member of the wine trade. I agree with the respondents that in assessing these witnesses' evidence on the question of whether the ordinary and reasonable person would have knowledge of wines from the [NAME_57] region generally, let alone knowledge of [NAME_41] or its wines specifically, and more particularly of the [NAME_41] features or the name [NAME_3] and any particular association between those features and [NAME_41], caution must be exercised. 109 Let me say something about the respondents' witnesses.

The respondents' witnesses 110 [NAME_143] is a director of both [NAME_56]. He gave evidence about the management of [NAME_56] and the sale of the [NAME_51]. [NAME_146] was cross-examined. 111 [NAME_93] is a wine author and critic. As I have indicated, he gave evidence about the Australian wine market and consumers, the [NAME_7] wine regions, naming and labelling practices for [NAME_7] wines, the [NAME_66] and its reputation in Australia and the [NAME_51] and his reaction to it. [NAME_93] was cross-examined, and occasionally was a little testy. To the extent that there is a conflict between the evidence of [NAME_41]'s experts, namely [NAME_102], [NAME_106] and [NAME_114], and the evidence of [NAME_93], on some topics I have preferred the evidence of [NAME_93]. 112 [NAME_49] is a director and the CEO of both [NAME_56]. He gave evidence about the operations of [NAME_56], his family history, his shareholding in [NAME_41], his understanding of the name [NAME_3], his knowledge of [NAME_41] and its wines, and the development, promotion, labelling and sale of the [NAME_51]. [NAME_49] was cross-examined. Some aspects of [NAME_49]'s evidence were not reliable. 113 [NAME_53] is the creative director of [NAME_147] who gave evidence about the process of designing the packaging of the 2011 and 2016 vintages of the [NAME_51]. She was not cross-examined. 114 [NAME_148] is a senior analyst at Wine Australia who gave evidence about a range of wine industry statistics. She was not cross-examined. I have referred to some of these statistics earlier. 115 [NAME_151] is the solicitor for the respondents who gave evidence in relation inter-alia to the third party use in Australia of the name [NAME_3], and the use of pink or similarly coloured capsules on wine bottles and materials. He also gave evidence concerning textbooks and other materials referencing the name [NAME_3] or pink or similarly coloured capsules, but he was not cross-examined. 116 [NAME_154] is also one of the solicitors for the respondents who gave evidence about a visit to a [NAME_157] retail store in leafy upper middle-class Malvern East, Victoria and some wines that she observed during that visit. She was not cross-examined. 117 [NAME_159] is also one of the solicitors for the respondents. She gave evidence about visits to various retail wine stores in middle-class South Melbourne, Victoria and some wines that she observed during those visits. She was not cross-examined.

Other matters 118 Let me refer to some other matters that it is convenient to deal with at this point. 119 First, during the trial [NAME_41] introduced a new foundation for its alleged misrepresentations, namely, the promotion of the [NAME_51] on the basis of [NAME_49] being related to the [NAME_69] of [NAME_41] and having a connection with the [NAME_66]. But that allegation relied upon various articles, all of which were published from July 2018 onwards and being after the relevant date. 120 Second, [NAME_41] also tendered copies of communications between employees of [NAME_4] and representatives of [NAME_157], [NAME_162] and [NAME_163] from November 2020 onwards in relation to the [NAME_51], but those communications also occurred after the relevant date. 121 Third, although [NAME_41] has relied on various documents as evidence of how the respondents promoted the [NAME_51] to members of the wine trade, it does not allege that the publication of those articles or the sending of those communications themselves contravenes the ACL. 122 Fourth, during the trial there was an inordinately high level of evidence that was given from the Bar table. Perhaps this is explicable given the nature of the subject matter and the fact that counsel for the parties were drawn from the fashionable and expensive end of the Commercial Bar. Further, it seemed to be suggested that judicial notice could be taken as to the characteristics of some of the products and where they could be purchased and consumed. Unsurprisingly I declined that invitation. 123 Fifth, as far as the smorgasbord of expert evidence was concerned, much of it was nebulous and subjective. I have had to plate this together, taking bits and pieces from different witnesses for different purposes.

The presentation, sale and promotion of [NAME_41]'s wines 124 Although there have been some changes over time, the presentation of both the [NAME_67] and the [NAME_77] have been largely consistent for decades. The presentation of [NAME_41]'s wines includes the following distinctive features. 125 First, there is a pink capsule, with gold decoration around the base and on the top of the capsule. 126 Second, there is a label featuring the name [NAME_3], as a prominent part of the names [NAME_38] and La Gravette De [NAME_3]. Further, the label uses a pink font for the first letters of the name of the wine ([NAME_38] and La Gravette de [NAME_3]). Further, as to the label, in the case of the [NAME_67], the name [NAME_38] means "[NAME_164]" or "[NAME_3] Estate", the words Grand Vin mean "great wine", and Mis En Bouteille Au [NAME_40] mean "bottled at the estate", in pink font. Further, there is a centrally located image of a stately house known as the [NAME_38], which is located on the wine estate owned by [NAME_41]. Further, there is a fluted edge profile. 127 These [NAME_41] features are in many respects distinctive and unusual. 128 The pink capsule appears as follows: 129 Earlier vintages of the [NAME_67] and [NAME_77] were sold with the front labels depicted below: 130 Earlier vintages of the [NAME_67] and [NAME_77] were sold with the rear labels depicted below: 131 Recent vintages of the [NAME_67] and [NAME_77] are sold with the front label depicted below, with the year for the relevant vintage added to the centre of the label: 132 The overall presentation of both wines is as follows, with the year for the relevant vintage added to the centre of the label: 133 [NAME_102] gave evidence, which I accept, that the visual presentation of [NAME_41]'s wines was distinctive and unusual. He said that the pink capsule used on the [NAME_67] and [NAME_77] were distinctive and unusual. He also said that the labels of both the [NAME_67] and [NAME_77] have other features that were distinctive and unusual, namely the fluted edging of the label and the use of pink font for the capitalised letters of the wine name. He said that taken together, the pink capsule, the fluted label and the pink font which features on the label were unusual and distinctive. I accept such evidence and observations. 134 [NAME_114] gave evidence that with respect to [NAME_41], the name [NAME_38] appears prominently on the label, together with an image of the [NAME_40] at the estate. The label itself has an aged appearance, which to him reflects the history of the wines. To him, these elements of the [NAME_67] labels convey a sense of history, place and prestige. He said that [NAME_41] is also distinguished by the use of the pink capsule. He regarded this capsule colour as unusual for [NAME_7] wines, and when he saw [NAME_98] amongst other [NAME_7] wines, they stood out to him for this reason. The pink capsule has become part of the narrative of the [NAME_98] as it has a widely reported historical story attached to it. I accept his evidence on these aspects. 135 [NAME_114] also agreed that the name of the wine, [NAME_38] or La Gravette de [NAME_3], is important. However, he also considered that the overall visual appearance of the wine label and the pink capsule is how he would visually identify the bottle itself at first instance. To him, the label presentation of the [NAME_67] and the [NAME_77] is unique for [NAME_7], and successfully conveys the product narrative and sense of history, place and prestige of [NAME_41]. The name of the wine is prominent, with pink font used as the first capitalised letter of each word in the name '[NAME_38]' and 'La Gravette de [NAME_3]'. This same pink colour is used for the words Grand Vin and Mis En Bouteille Au [NAME_40]. Further, the wine labels feature a reference to the [NAME_69]. Further, he said that the pink capsule of the [NAME_98] is a significant and distinguishing feature of the estate's product presentation. Again, there is no basis not to accept his evidence on such matters. 136 [NAME_139] also said that to his mind, [NAME_41] bottles are memorable, particularly when compared to other [NAME_7] wines. He regarded the pink and gold wine capsule as eye catching when on a wine shelf in a retail store or on a tasting table with other [NAME_7] wines. He also considered the serrated edge of the label to be unusual, as is the dusky pink font used to accent the first letter of the name of the wine. 137 [NAME_93] maintained that in respect of the [NAME_67], the most important aspect of its presentation was its name, rather than the distinctive aspects of its appearance. But [NAME_93]'s approach did not give proper weight to the importance of the overall presentation of the [NAME_67] for both consumers and the trade. Further, the body of evidence before me amply supports the conclusion that the overall presentation of [NAME_41]'s wines is distinctive, notwithstanding that it shares some individual features in common with other wines. 138 Further, the name [NAME_3] has some association with [NAME_41] and its wines, but also other producers who use the name [NAME_3]. But [NAME_41] has no monopoly in that word, and any reputation that it may have does not derive wholly or substantially from that word. I will return to this later. 139 Let me now turn to how the [NAME_41] sells its wines. 140 [NAME_41] sells its wines through a structured market known as [NAME_165], which is widely used by the premium wine estates of [NAME_7]. Within that market, courtiers are retained by wine estates to negotiate the sale of wines to négociants, which are wine brokers who on-sell the wines to distributors around the world. 141 The wines are primarily sold en primeur, meaning that they are purchased prior to being bottled and delivered some months later. Again, this is common amongst the premium wine estates of [NAME_7]. The en primeur campaign is conducted annually. Over the course of several weeks from March to May, [NAME_41] typically hosts about 1,000 wine writers, journalists, negociants and wine merchants for tastings of the forthcoming wines. The outcome of those tastings informs the price that can be commanded for the vintage in question. 142 [NAME_41] retains a small number of courtiers for each vintage and its wines are typically sold through those courtiers to about 45 different négociants. This ensures that [NAME_41]'s wines have the best opportunity to be as widely distributed as possible. The négociants then on-sell the wine to their customers, some of whom are also wine professionals who in turn sell the wine to their customer networks. As part of [NAME_165], [NAME_41]'s wines are also sold through two separate wine negociant businesses that are operated by other members of the [NAME_69], namely [NAME_166] in [NAME_167], Belgium, and the [NAME_7] based [NAME_168]. 143 [NAME_41] itself also engages in a range of promotional activities, including conducting promotional tours and tastings both as part of the en primeur campaign and otherwise, giving interviews to the wine media and conducting promotional events including in Australia. Many internationally renowned wine writers and critics have posted on social media or published articles on the internet about their visits to the [NAME_66]. 144 Further, the [NAME_66] and its wines have been referred to extensively in wine books and wine magazines including Wine Spectator, World of Fine Wine, [NAME_169] and [NAME_170]. These have been published internationally and in Australia. [NAME_41] and its wines have also featured in articles published in the Australian media. The extracts set out below from wine books are examples of how [NAME_41] has been described to international and Australian audiences over recent decades: 145 In [NAME_7] by [NAME_171] (1982) it was said: [NAME_38] One of the few growths of [NAME_57] to boast a fine [NAME_40]. The oldest part is seventeenth-century and the whole building is very pleasing, with its two squat towers of differing ages and proportions at either end. It is beautifully kept by the [NAME_174], Belgian wine merchants whose father bought the property in 1924. Originally, it had belonged to the [NAME_175], who sold it in 1850 to [NAME_176]. This has always been regarded as one of the top growths of [NAME_57], and in recent years its reputation has spread to England and the USA, while the excellence of the wines has been equalled by their consistency … 146 In Grand Vins – The [NAME_40] of [NAME_7] and Their Wines by [NAME_179] (1995) it was said: [NAME_38], it is said, dates back to the early sixteenth century, when it was a manor house and the centre of quite a large estate dominating a little plateau, about 35 metres above sea level, two or three kilometres north-east of the old port of Libourne. If this is so, it is probably the oldest property in the area. It is certainly one of the largest in a commune where few properties produce more than a few dozen tonneaux. And it is also one of the best. After Pétrus itself, [NAME_38] can compete, if it so wishes, with [NAME_182], [NAME_183], [NAME_184] and [NAME_185] for the title of number two in the commune of [NAME_57]. … One curious detail is the capsule, which, unlike most clarets is not wine red or black, but shocking pink, with a gold band. This was [NAME_68]'s idea, in order to make the wine easy to pick out. The wine is matured for between 20 and 22 months and not filtered before bottling. The second wine is called La Gravette de [NAME_3]. … [NAME_38] has been producing excellent wines for decades. There were splendid bottles in the 1920s, a superlative 1947, a fine 1952 and 1959, and a notable 1964. [NAME_74] has been in charge the intensity of the wine has, if anything, increased even more ... 147 In [NAME_57] by [NAME_186] (2012) it was said: In recent years, a succession of fêted vintages has firmly installed [NAME_38] in the top echelon of [NAME_57] wine, with a loyal, devoted fan base that buys the wine year in and year out. It's not just a wine they are purchasing, but a bottle of history. Vineyard I regard [NAME_38] as the epicentre of [NAME_57], perhaps due to its historical significance and its name, or maybe because it seems to stand like a sentry at an important junction on the plateau ... … After fining with egg whites, the wine is bottled with its distinctive pink capsule chosen by [NAME_68] to make it stand out from the crowd ... 148 In relation to the documentary evidence tendered concerning third party publications, I admitted much of that material subject to a limitation under s 136 of the Evidence Act 1995 (Cth) such that third party statements contained in these publications were admitted not to prove the truth of the fact asserted or the opinion expressed, but rather as evidence of the fact that such views were held and expressed at the time of the relevant publication(s). 149 The [NAME_67] has been to a limited extent sold in Australia since at least the 1980s, including through a major Australian wine distributor, [NAME_118], and through auction houses such as [NAME_137]. 150 In relation to the [NAME_67], the records of [NAME_118] date back to the sale of the 1995 vintage, which wines were delivered to customers in Australia in 1998. Those records show that the [NAME_67] has been sold by [NAME_118] since that time. 151 Moreover, it has also been promoted and sold through prominent retailers such as [NAME_189] in Melbourne, through tasting events and restaurants. 152 [NAME_44] itself has promoted and offered for sale the [NAME_67], along with the wine of [NAME_40] Le Pin in Australia. [NAME_4] has been promoting the [NAME_67] since at least 2011. It appears that [NAME_4] obtained these wines from its Belgian parent company. 153 On 21 February 2011, [NAME_4] invited guests to attend an Armadale Cellars dinner at [NAME_134] in Melbourne which featured vintages of the [NAME_67] with vintages of the [NAME_40] Le Pin wine. The [NAME_4] invitation included images of both the [NAME_67] and Le Pin wine labels, and stated "[b]oth estates are recognised as two of [NAME_7]'s most prestigious producers. Their wines are highly sought after collector's items, held in high regard world-wide, and rarely available within Australia". 154 The [NAME_67] and the [NAME_40] Le Pin wine were also featured in trade brochures issued by [NAME_44] in 2016, 2017 and 2019. Those trade brochures contain images of the full bottle presentation of the [NAME_67] and the following description of [NAME_41] and the [NAME_67]: "[t]he [NAME_38] estate is located in the heart of the [NAME_57] plateau. Fermented in oak vats and aged in new French oak barrels, [NAME_38] is regularly ranked by the world's press and international tasting panels among the very top wines. With its brilliant dark garnet colour, outstandingly [NAME_123] red fruit aromas, elegant, silky structure and beautiful balance, it displays inimitable style and finesse". 155 Further, the 2017 and 2019 versions of these trade brochures promoted both the [NAME_67] and [NAME_51] in the same document. But I do not accept [NAME_41]'s assertion that this in and of itself suggests a commercial link between the [NAME_51] and [NAME_41] and/or the [NAME_67]. 156 Let me now turn more directly to the question of some of the evidence led concerning reputation.

Evidence of reputation or consumer awareness 157 The wine industry experts who gave evidence on behalf of [NAME_41] gave evidence as to the nature and extent of the reputation of [NAME_41] and its wines in Australia. 158 [NAME_102] gave evidence that in his experience both [NAME_41] and the [NAME_67] were known to Australian wine professionals and some consumers, and in particular those with an interest in very high quality French wines, from at least the 1980s. Further, he said that the reputation of [NAME_41] and its wines in Australia has increased over time and he also said that [NAME_41] and its wines had a significant reputation amongst Australian wine professionals and consumers, and in particular those with an interest in high quality French wines, both before and after 25 November 1999. And this was particularly applicable to wine consumers and professionals who have an interest in [NAME_7], such as the consumers and professionals who have attended his [NAME_7] masterclasses and tasting events and those who read wine publications. Now I do not accept that there was a sufficient reputation as at 1999, but I do accept that there was one as at 2013. 159 [NAME_106] gave evidence that in her experience in the wine industry, [NAME_41] is an internationally renowned wine estate in [NAME_57]. It has produced a famous red wine of the same name, the [NAME_67], for nearly a century, and since the mid-1980s has produced the [NAME_77]. 160 Further, [NAME_114] stated that based on his 42 years of experience in the wine industry, and in particular, his many years of experience selling [NAME_7] wines at auction, he believed that [NAME_41] is regarded as one of the great producers of the [NAME_57] appellation by many wine writers, critics and consumers of fine wines. To him, it is an ultra-fine wine which has had for many decades now a very special reputation with wine professionals and consumers of [NAME_7] wine, both in Australia and internationally. In his experience, the [NAME_67] is a highly regarded, ultra-fine [NAME_7] wine which is produced in very small quantities. The rarity and special reputation of its wines is reflected in the prices at which the wines are offered for sale. As such, he would not expect many Australian wine consumers to have bought or tasted the [NAME_67] or the [NAME_77]. However, he did believe that many Australian wine consumers who have an interest in fine wines would know of and be interested in these two wines, without necessarily having the means or access to experience or purchase bottles. In his experience, this is quite common in the fine wine industry, where many consumers attend wine tasting events and read wine columns and books, but cannot necessarily purchase or experience the ultra-fine wines or visit the wine estates firsthand. 161 [NAME_114] also said that serious wine collectors and people who buy [NAME_7] wine every year will be aware of the [NAME_57] sub-region of [NAME_7]. However, he did not agree that, even amongst this cohort, recognition of [NAME_41] or its wines will be limited. He believed that those with an interest in [NAME_7] wines who purchase vintages year on year would be aware of both the [NAME_57] sub-region and its most famous producers, which in his view included [NAME_41]. In his experience of working at [NAME_190] and with [NAME_137], these consumers who purchase [NAME_7] wines annually are likely to know of [NAME_41], and are, in many cases, likely to have had the opportunity to purchase and taste its two wines. 162 [NAME_93] appeared to suggest that the reputation of [NAME_41] and its wines was less significant in Australia than the views of [NAME_102], [NAME_106] and [NAME_114] would indicate. However, he agreed that [NAME_41] is a well-known, respected [NAME_40]. He described it as prestigious. He also agreed that because of its cost, it is likely to be an aspirational product. However, he sought to confine this favourable reputation to a very small cohort of consumers who are highly engaged with [NAME_7] wines. 163 [NAME_41] pleads that it has developed a valuable and distinctive reputation and substantial goodwill among wine consumers and the wine trade in Australia in relation to the [NAME_67] and the [NAME_77], the name [NAME_3] only, and the combination of the [NAME_41] features. But [NAME_41] has abandoned its claim concerning the name [NAME_3] only. It opened its case on the basis that it did not claim that its reputation accrues in relation to the name [NAME_3] simpliciter. It accepted that it kept company with the rest of the words and markings on the label and more generally the [NAME_41] features. 164 Let me elaborate further on some themes relevant to the question of reputation in Australia. And at the outset, let me again say that I am not satisfied that [NAME_41] had the requisite reputation as at 1999, but that it had it by 2013.

The level of sales 165 I agree with the respondents that the scarcity of the [NAME_98] is reflected in the evidence of sales. When taken at its highest, the evidence shows that [NAME_41] has sold only a few thousand bottles of the [NAME_67] in Australia since 1989, and the evidence shows that only around 190 bottles of the [NAME_77] have been imported into Australia during that period. 166 When measured against the Australian wine market, the volume of products sold is very small. These sales of the [NAME_67] are likely to represent around 0.01% of [NAME_7] red wine, and less than 0.002% of French red wine, sold in Australia since 1989. 167 Sales of [NAME_7] wine comprised approximately 10% of off-premise retail French red wine sales in 2021. In that year, imports of French red wine totalled approximately 6.8 million litres. Assuming imports roughly approximate sales, this equates to approximately 680,000 litres or approximately 907,000 bottles of 750ml wine. At approximately 100 bottles of [NAME_41] sold per year, this equates to approximately 0.011% in 2021. 168 Imports of French red wine totalled approximately 4.2 million litres in 2013, 5.3 million litres in 2017 and 6.8 million litres in 2021. Taking the lowest of those values in 2013, this equates to approximately 5.6 million 750ml bottles of French red wine. At approximately 100 bottles of [NAME_41] per year, this represents less than 0.002%.

Promotional or marketing activities 169 The evidence establishes that [NAME_41] does not engage in promotional or marketing activities in Australia or directed to Australian consumers. 170 [NAME_41] appears to accept this, but it relies upon the promotion of its products by Australian resellers or distributors, such as [NAME_118] and [NAME_191], at auction houses such as [NAME_137], and at prominent retailers such as [NAME_140]. 171 [NAME_118] has offered the [NAME_67] for sale as part of its portfolio of [NAME_7] wines since at least 1996. But there is no evidence of promotion of the [NAME_67] by [NAME_118] in any relevant sense. The [NAME_67] is one product in a long list of products which was available for purchase; more than 200 products are listed in each of the 2009 and 2020 lists. And the product itself is not depicted in the [NAME_118] lists. 172 [NAME_191] has offered the [NAME_67] for sale as part of its portfolio of [NAME_7] wines since 2012. Again, the [NAME_67] is one product in a list of many other wines. The product itself is not depicted. [NAME_110] gave evidence that he has hosted hundreds of educational activities such as wine dinners, tastings and masterclasses around Australia, he identified only two relating to the [NAME_67]. In the first of those tastings in March 2016, the [NAME_67] was featured as one of 30 wines on that evening. In the second in September 2018, the [NAME_67] was one of 50 wines. And whilst [NAME_110] gave evidence of conducting annual tours to [NAME_7], the only evidence of visiting the [NAME_58] relates to a small group of between 8 to 10 Australian customers in October 2017. On a similar tour in 2019, [NAME_110] did not visit the [NAME_57] region, let alone the [NAME_58], apparently for no specific reasons. [NAME_41] similarly did not feature on the brochure for the 2021 tour. 173 [NAME_137] commenced its own [NAME_7] en primeur campaign in 2004, and in that context sourced and imported wines from [NAME_7] including the [NAME_67]. It sold the [NAME_67] at auction prior to that time from about 1989. The evidence includes a copy of the [NAME_137] published in 1991, which exemplifies how the [NAME_67] was promoted at that time. In short, a few vintages of the [NAME_67] are located amongst hundreds of listings in the "[NAME_7]" section of a 200+ page book. [NAME_60] and [NAME_61] also appear in the guide. The [NAME_67] is now available via the [NAME_137] website. I must say that the evidence of sales via [NAME_137] was underwhelming. 174 Further, [NAME_140] secured [NAME_41]'s wines from time to time and offered them for sale to customers in Australia. This included as part of en primeur campaigns run by [NAME_140] for its customers. In those campaigns, the [NAME_67] appeared amongst a long list of [NAME_7] wines, with no particular prominence and no images of the product. [NAME_139] gave evidence that the [NAME_67] was featured with other exclusive [NAME_57] wines such as [NAME_40] [NAME_184] on occasion at tastings and educational events, but he did not identify any specific events or suggest that this was a regular occurrence. His evidence also suggests that such events would typically feature between 20 to 30 [NAME_7] wines. There is no evidence indicating the volume of sales of the [NAME_67] via [NAME_140]. 175 The other example of promotional activity is a [NAME_41] and Le Pin dinner at [NAME_134] in February 2011. This event was hosted by [NAME_4], as it coincided with a visit to Australia by [NAME_192] and his wife to attend an event for [NAME_49]'s 50th birthday. It was a one-off event which took place several years before the 2011 vintage of the [NAME_51] was released onto the market. 176 Moreover, save for generalised assertions by [NAME_139], there is no evidence of any specific promotional events involving the [NAME_67] in Australia prior to 1999.

The relevance of the wine press? 177 [NAME_41] says that both itself and its wines have been promoted in Australia to Australian audiences extensively through what the parties referred to before me as the wine press. 178 [NAME_102]'s evidence is that he and his team taste and review over 10,000 wines submitted by wine producers each year from around the world and that his website, The Real Review, now hosts his 50,000 tasting notes which he has published during the course of his career. [NAME_102] explained that, by around 2018, he was publishing about 5,000 wine reviews each year, roughly 100 wines per week. For a simple, straightforward wine he could sum it up very quickly, but for very complex wines, especially an aged red, he would come back several times over four or five minutes. 179 In 1983, [NAME_102] started writing a weekly wine column in the Australian Financial Review, and since then he has written and published thousands of articles, columns and other pieces about wine in various publications, including the Australian Financial Review, the Sydney Sun-Herald, Sydney Morning Herald and Decanter magazine. He has also been the Australian correspondent for the Oxford Wine Companion and World Atlas of Wine. His published articles have included many about wines from [NAME_7]. Despite this, putting aside tasting notes, there is only one article in evidence written by [NAME_102] which refers to [NAME_41]. 180 [NAME_106]'s evidence is that she similarly tastes and reviews about eight thousand wines a year, being both international and local. Despite that evidence, [NAME_106] did not encounter the [NAME_51] until she was asked to review the 2018 vintage in January 2020. 181 Between 2009 and 2014, [NAME_106] wrote around 250 weekly columns and 60 feature articles for The [NAME_193], only two of which (on 27 November 2007 and 8 March 2011) mentioned [NAME_41] at all. Neither of those two articles depicted [NAME_41] product labels. She also wrote feature articles for numerous other publications including [NAME_194] for around 10 years, Wine-Searcher, [NAME_195] from 2016, Wine Companion from 2016, [NAME_196], Le Pan and Falstaff, but did not suggest in her evidence that any article in any of those publications made any mention of [NAME_41]. 182 [NAME_93]'s website has reviewed or referred to many thousands of wines since its inception. The [NAME_67] is not mentioned on the website. At the time he reviewed the [NAME_51], [NAME_93] was receiving upwards of 10,000 bottles in a year and tasting about 4,000 a year or 150 wines in a day. 183 [NAME_93] has written articles about wine in Australian newspapers and magazines since the mid-1980s, including [NAME_197], Winestate, [NAME_198], [ADDRESS] (Qantas' travel magazine), [NAME_194], Business Review Weekly, The Bulletin, [NAME_80]-Claire, and the Herald Sun. He produced a subscription newsletter between 1996 and 2003 and has also written hundreds of articles regarding Australian wine for overseas publications since around 1986. [NAME_93] has not written any articles or reviews in relation to the [NAME_98]. 184 Now there is no evidence indicating the number of consumers, if any, who have, in fact, read any reviews or tasting notes about the [NAME_98]. The presence of reviews of the [NAME_98] amongst the many thousands of reviews published every year does not establish consumer recognition of the [NAME_98], let alone a reputation in the [NAME_41] features or the word "[NAME_3]" such that they distinctively indicate [NAME_41] or its products. Even if it is assumed that consumers of wines, or at least fine wines, take an interest in the wines they are consuming or purchasing, that would not rise any higher than the evidence of actual sales, which evidence is very limited. 185 The same can be said about articles in the wine press. Whilst the volume of material is not as extensive as wine reviews or tasting notes, the wine press is similarly flooded with articles. But in that context there is little evidence of publications about [NAME_41] or its wines in Australia. 186 Further, there is no evidence that any of those articles were actually read by any actual or potential purchaser of the [NAME_51]. 187 Further, as at 1999, there is only one potential article in evidence. The article contains only a brief reference to [NAME_76] and the [NAME_58] and does not include any images of the [NAME_67]. The article, written by [NAME_199] and titled '[NAME_7] since 1893', was apparently published in [NAME_201] magazine in 1997 according to [NAME_76], but he does not give evidence of this publication. [NAME_76]'s evidence refers only to the article as published on [NAME_201] website, accessed in around 2021 or 2022. The version of the article includes an advertisement for a "2022 Grand Tour", so cannot have been accessed materially earlier than 2021. 188 In the period from 1999 to 2013, there is evidence of no more than 25 wine industry articles referring to [NAME_41], from anywhere worldwide. And of those articles, the following points may be made. 189 First, only one includes an image of the [NAME_67], and even in that case it is limited to the label alone not the full bottle presentation. 190 Second, 15 were published in a single specialist wine publication, [NAME_201]. 191 Third, the remaining articles were published in print or online at [NAME_202], which is an online wine publication that has a limited audience, The Age (in [NAME_106]'s [NAME_203] column), [NAME_193], [NAME_204] (an English magazine dedicated to wine), and Australian Gourmet Traveller. 192 Fourth, with the exception of [NAME_193] and The Age, these publications are specifically directed to consumers with an interest in fine wine, and not necessarily the ordinary reasonable consumer of the [NAME_51]. 193 Fifth, as to the specialist publications, there is no evidence from any Australian who reads any of them, setting aside the wine industry specialists who have given evidence in this case. To the extent the wine industry specialists speculate about where such readership might exist, it would consist of very engaged or deeply committed consumers, which are likely to be a small number of people. 194 Sixth, as to mainstream media publications, the probability of even the deeply committed ordinary reasonable consumer reading every one of [NAME_102]'s and [NAME_106]'s articles to stumble upon one that mentions [NAME_41] is remote. 195 Further, in the period from 2013 to May 2021, there is evidence of no more than 25 wine industry articles referring to [NAME_41], none of which include an image of the packaging. Of these articles, seven were published in [NAME_201]. With the exception of one article in [NAME_205], the remaining publications are directed to consumers with an interest in fine wine: [NAME_170], the UK based website [NAME_202], [NAME_169], [NAME_204], [NAME_137], and [NAME_206].

The extent of social media? 196 [NAME_41] relies upon social media as a source of consumer knowledge or reputation, but as at the earliest relevant date, 1999, there was no social media evidence. 197 Further, as at 2013, the only social media evidence relating to [NAME_41] and its wines consisted of a handful of tweets, most of which were published by international wine writers. There is no evidence as to how many Australians followed these Twitter accounts, if these tweets were ever viewed or 're-tweeted' by other users, or if they received any 'likes'. 198 Further, the evidence after 2013 is also underwhelming. There is evidence of fewer than 15 social media posts referring to [NAME_41] in the eight-year period between 2014 and May 2021. Of these posts, only three depict the [NAME_67] in its entirety, whilst the remainder include only a label or blurry image of wine bottles from a distance. The evidence consists primarily of social media publications by international wine critics, writers or consultants, not Australian authors. And there is no evidence to establish the extent to which Australian consumers or members of the wine trade follow any of these accounts, let alone whether they have viewed any of these posts. Between May 2021 and August 2023, the only social media evidence referring to [NAME_41] is an image taken by [NAME_110] and posted to his Instagram account on 20 August 2021, which depicts cases of [NAME_7] wines imported into Australia. [NAME_110] states that these cases include the [NAME_98], however the image is unclear. 199 Now there is a post of the [NAME_67] alongside two other French wines on the Instagram and Facebook accounts of [COMPANY_128] in Dunkeld, Victoria on 18 January 2017 and 27 March 2018, respectively. This image was intended to promote the hotel's extensive [NAME_7], Burgundy and French wine collection. The posts do not reference [NAME_41] beyond including the image. As at May 2022, only 46 people had liked the Facebook post, and the Instagram post was just one of 1,866 Instagram posts accessible on [COMPANY_128] account. 200 Finally, let me say something about [NAME_114]'s evidence. He could not remember posting an image of the [NAME_51] on his own social media account, which had remained dormant since December 2017, in a case in which he was engaged to give expert evidence about the [NAME_51]. Plainly, [NAME_114] did not see social media as an important tool for communicating with consumers about wine.

A little about books 201 Now the [NAME_98] are mentioned in a number of wine books that have been published internationally, although much of this evidence is subject to a s 136 limitation as I have indicated. 202 But there is no actual evidence of readership other than by witnesses in this case. And having regard to the length of these texts, it cannot be reasonably suggested that readers would necessarily engage with the full text, nor that any such readers would recall a specific product such as the [NAME_67] from the entirety of the text. 203 Further, fewer than ten of the books in evidence were published before 1999, and of those books only one includes an image of the [NAME_67], which does not include the fluting edging or a pink cap. And of the limited publications between 1999 and 2013, only one depicts the [NAME_41] features, which due to the quality of the image does not portray a pink cap. And for the period between 2013 and May 2021, there is only one book publication in evidence which includes an image of the [NAME_67], which is limited to the label alone.

Wine lists at restaurants 204 [NAME_41] relies upon the presence of the [NAME_98] on wine lists at Australian restaurants. 205 [NAME_142] gave evidence that [COMPANY_128] has promoted, offered for sale and sold the [NAME_67] in Australia for many years. But otherwise there is no evidence of wine lists including the [NAME_67] prior to 1999. 206 Further, as at 2013, the evidence of the [NAME_67] appearing on restaurant wine lists in Australia rises no higher than [NAME_110]'s recollection of its inclusion on the [NAME_134] wine list. [NAME_110] gives examples of restaurants that purchased the [NAME_67] during the period 2012 to 2021, but there are no wine lists in evidence to confirm the dates of inclusion in any wine list, if at all. 207 Further, as at May 2021, there is no further evidence of wine lists in Australia that include the [NAME_98]. In [NAME_106]'s evidence there was reference to an extract of a wine list from Jonah's Restaurant entitled 'Winter 2021', but there is no evidence to suggest it was available in May 2021. 208 There is, therefore, only limited evidence of the [NAME_67] appearing on wine lists in Australia and no evidence regarding the [NAME_77]. In any event, the mere presence of the [NAME_67] on wine lists in Australia is insufficient to establish a reputation in the [NAME_41] features. To the extent the [NAME_67] appears on wine lists at restaurants, it appears in a written list by name only organised by region, subregion and grape variety amongst tens or hundreds of other products. 209 Further, to the extent that consumers are likely to be exposed to the [NAME_67] on a wine list, they are also likely to be exposed to other wines that use the name "[NAME_3]". 210 [NAME_102] was taken in cross-examination to the current wine list for [NAME_207], a typical Sydney restaurant for the flashy or aspirational. That wine list has the highest "three wine glass" rating from 2008 through to 2021 from the Gourmet Travel and Wine List of the Year Awards. [NAME_102] noted the 1982 vintage [NAME_60] de [NAME_3] on that list for $2,200, which was one of the wines that he was selling at [NAME_208] in the early 1980s. 211 That 1982 [NAME_60] also appears on the May 2022 wine list of [COMPANY_128] in Dunkeld, at the top of the section devoted to [NAME_57] wines. [COMPANY_128] won [NAME_204] magazine's 2021 award for Best Long Wine List in the world. 212 The 2010 vintage of [NAME_60] appears on the current wine lists of two upper middle-class Melbourne restaurants, [NAME_209] in [NAME_210] in St Kilda. 213 The 2015 vintage of [NAME_211] appears on the current wine lists of various restaurants around Australia including Aria Restaurant, an upmarket restaurant in Sydney, [NAME_212] at Balmoral Beach, another apparently upmarket restaurant in Sydney, and [NAME_213] in Richmond, Melbourne. 214 Let me now say something concerning the [NAME_51].

The previous design and packaging of the [NAME_51] 215 The presentation of the [NAME_51] has had the following features. I am not in this section dealing with the proposed re-branding for the [NAME_51] which I will discuss later. 216 First, there is a pink screw cap and neck capsule, with gold decoration around the base and on the top of the capsule. 217 Second, there is a front label featuring the name [NAME_3], as a prominent part of the name [NAME_42], and the use of a pink font for the first letters of the name of the wine ([NAME_42]). Further, there appears the words [NAME_214]. Société Anonyme is a designation used for private companies in France. Further, there appears [NAME_215], Propriétaire [NAME_47]. Propriétaire means owner in English. Further, there is a centrally located image of a stately house. Further, there is a fluted edge profile. 218 Third, there is a back label featuring the name [NAME_3], as a prominent part of the name [NAME_42], the use of a pink font for the first letters of the name of the wine ([NAME_42]), and since the 2016 vintage, the statement "… a passionate marriage of old world and new … hallmarking its European heritage". 219 Now the first vintage of the [NAME_51] was the 2011 vintage, which was released in 2013. The following subsequent vintages of the [NAME_51] have also been released: 2016, 2017, 2018, 2019 and, very recently, 2021. 220 The first vintage of the [NAME_51] being the 2011 vintage was sold with the label depicted below, which featured the prominent depiction of [NAME_49]'s family home on the Mt Pleasant Estate vineyard in Tasmania: 221 The next vintage of the [NAME_51] being the 2016 vintage was sold in the packaging depicted below, which still featured the prominent depiction of [NAME_49]'s home: 222 Later vintages of the [NAME_51] were sold in the packaging depicted below: 223 Let me go back into the history a little more. 224 [NAME_49] gave instructions to [NAME_216] in relation to the design and packaging of the [NAME_51] at a meeting in around September 2012 at her office in Sydney. Apparently it was his intention to pay homage to his family heritage rather than to copy an existing brand. Apparently he did not intend to create a label which represented an association between the [NAME_51] and [NAME_41] or its wines. 225 According to [NAME_49], the development of the [NAME_51] was to capture the sensual flavours and elegance of old world wine, while producing a cool climate pinot noir with the unique distinction of both new and old world characters. He wanted to produce a pinot noir in keeping with the traditional, old world style of Burgundy, that is, a wine that is lighter in colour, subtle and intense, but with the hallmark of what Tasmania can offer from a cool climate perspective. 226 [NAME_49] explained that his motivation for creating the [NAME_51], and the use of the word "[NAME_3]" as part of that name, was to create a wine of exceptional quality to pay homage to his great-grandfather, [NAME_68], and to the generations of the [NAME_69] including his grandmother which inspire and motivate him in his commercial endeavours to this day. 227 The [NAME_51] being the 2011 vintage was first offered for sale in 2013. It is made in very limited quantities, with on average around 150 cases produced annually. In the first vintage, only 12 cases were made available to the public. It is not produced every year. 228 The [NAME_51] retails for around $75 to $95 per bottle. As of 30 June 2022, 10,510 bottles of [NAME_51] had been produced from the 2011, 2016, 2017, 2018, 2019 and 2021 vintages, and 5,371 bottles of [NAME_51] had been sold. By that time, sales of the [NAME_51] generated a total of $193,934 in revenue. 229 [NAME_41] first became aware of the [NAME_51] in about April 2014, when [NAME_76] was told about the 2011 vintage by an American wine merchant based in San Francisco. When this came to his attention, he conducted some internet searches with the assistance of his son and discovered how the 2011 vintage of the [NAME_51] was presented. 230 On 3 April 2014, [NAME_76] sent an email to [NAME_49] in the following terms: Just a question to ask you: [NAME_42] noir 2011, is this an April fool's joke or a new creation? I just heard about it from a San Francisco wine merchant whose friend is an expert on Tasmanian wines. 231 I should note that in this judgment I have used the English translations for the communications in French. 232 This email led to the following exchange of email correspondence between [NAME_49] and [NAME_76] over the course of the next eight days. 233 On 5 April 2014 there was an email from [NAME_49] to [NAME_76] saying: [NAME_42] is not an April Fool's joke, [NAME_75], but my tribute to the living soul of my great-grandfather [NAME_68]; a family for which I have a deep respect. It is not a creation either, that would be lacking in humility. It is a rebirth perhaps, like a formidable head of the family who left [NAME_167] to invest in [NAME_57]. I also have no doubt that his other descendants will share the immense pleasure I feel through this meeting with my history. … Ps. Production: 50 dozens. Distribution: 50% my private cellar/Australia. Trademark registered since 1999. 234 On 8 April 2014 there was a letter from [NAME_76] to [NAME_49] saying: I received your email of 5 April and thank you very much. You tell me: "The [NAME_42] is not an April fool's joke". How I wish it was! I must admit that this confirmation, as manager of the Société Civile du [NAME_38], not only shocks me, but also fills me with sadness because I will have to defend the image of the domain that you shamelessly plagiarise. That you transcend the past generations beyond all comprehension does not concern me. However to take advantage of the image of [NAME_38] to promote a copy for commercial purposes and for your own profit is in my eyes reprehensible. To have acted without the knowledge of everyone, whether or not they are wine professionals, and to have presented us only today with a fait accompli is already highly questionable. The quantity produced is not relevant for the purpose of reducing the damage. Before setting in motion an obvious and automatic procedure for any other wine of the level of [NAME_38] against any counterfeiter, I would like us first of all to be able to see eye to eye. Indeed, this is the kind of issue that the media feasts on to the major detriment of the infringer, not to mention the costs inevitably incurred, coupled with the loss of time and energy combined. That, dear [NAME_32], is what your bottle, the branding of which is too close to that of the [NAME_38], inspires in me. I look forward to hearing from you. 235 On 11 April 2014 there was an email from [NAME_49] to [NAME_76] saying: So I reconfirm my honest intentions of homage, and deep respect on the one hand, combined with the immense pleasure that I experience every day through my programme, of which the [NAME_42] is an integral part. I hereby acknowledge receipt of your attached letter, whose subtle interpretation of my intentions invites me to measure the opposition of values that we each hold today. Having said that, I had deliberately omitted any consideration of legal consequences, in designing [NAME_42], in my presumably naive belief that you might share my pleasure rather than attempt to downgrade it. On that note, I have instructed the immediate removal of all [NAME_42] iconography from the network and you should note that the commercial production of 12 dozen 2011 [NAME_42] is sold out. I will also keep you informed in advance of any future branding initiatives. This should alleviate your sadness, which I believe to be sincere, and which I regret even if I do not understand it. 236 [NAME_49] in his evidence said that the assurance he provided related to the then current trade dress of the [NAME_51], but was not any form of assurance about the use of the name [NAME_42] in the future. 237 [NAME_49] passed on the substance of his communications with [NAME_76] to [NAME_146] at some point between April 2014 and January 2016. [NAME_146] could not recall exactly when this occurred, but he thought it was likely to be shortly after the exchange. 238 Now from [NAME_41]'s perspective, having received [NAME_49]'s assurance about the cessation of the conduct, the matter rested there until 2018, when [NAME_76] became aware of the 2016 vintage of the [NAME_51]. 239 However, almost immediately after this exchange of correspondence in April 2014, the respondents took various steps. 240 [NAME_49] set about making some very minor modifications to the label of the [NAME_51], namely, replacing the words "[NAME_47]" with the word "Tasmania", removing the text "Appellation Tasmania Controlee", and replacing "Product of Australia" with "[NAME_218]". 241 Once those changes were made, the front label of the [NAME_51] remained the same for the 2016, 2017, 2018, 2019 and 2021 vintages. The respondents did not at any time consult [NAME_76] or [NAME_41] about these changes to the label or the use of the modified label. 242 Further, on 17 April 2014 [NAME_4] applied to register the following Australian trade mark in respect of inter-alia wine: 243 This trade mark application no. 1618270 was not accepted and was allowed to lapse. No notice of this application was given to [NAME_76] or [NAME_41]. 244 Further, in May 2015, [NAME_49] instructed [NAME_146] to register the domain name newcertan.com. Again, no notice of this was given to [NAME_76] or [NAME_41]. 245 Further, on 26 January 2016 [NAME_146] prepared a note of his advice about the [NAME_51] for [NAME_49]. This advice concerned the overall branding of the [NAME_51], including the label and the pink screw cap. This advice was prepared against the backdrop of the plan to launch the 2016 vintage of the [NAME_51]. The advice noted that the [NAME_67] was available for sale through some Australian retailers (including [NAME_219] and [NAME_221]). It also offered the following suggestions as to how the [NAME_51] should be promoted and sold: To aid your future defence and to minimize their chances of any form of success, it is recommended that you:

1. Not advertise [NAME_42] to any consumers that you do not have a relationship with (so only via [NAME_203], your email lists or Gold Club).

2. Not sell through standard retail outlets ([NAME_157], [NAME_222] etc).

3. Fly under the radar as much as possible.

4. Not compare your wine to [NAME_41] or mention [NAME_41] in any literature.

5. Make sure that it is crystal clear that this is a Tasmanian/Australian wine. 246 Further, on 26 July 2018, [NAME_146] prepared a further note of his advice about the [NAME_51] for [NAME_49]. It stated: As we have always acknowledged, the look of the artwork echos the [NAME_41] labelling and that could be an issue. But they would be on weak ground Having said that, there is nothing stopping them having a crack at you. I suggest that you wait and see what happens. If they send a letter, we will respond with a short piece of advice that combines sex and travel. 247 [NAME_49] replied the same day, noting that "… travel advise [sic] would certainly be of use…". 248 On 22 March 2021, [NAME_41]'s Australian lawyers issued a letter of demand. [NAME_41]'s demands were not met. 249 Let me at this point say something more concerning the respondents' promotional activities concerning [NAME_42]. 250 In an article dated 6 July 2018 reporting on the [NAME_223], the following statements appear in relation to the [NAME_51]: Somewhat prosaically referred to as the [NAME_224] when first mooted in 2005, [NAME_33]'s privately-owned and funded initiative has since become the production base for a 200-case single vineyard Pinot Noir called [NAME_42]. The wine had its first vintage in 2011. Its labelling and packaging—not to mention its [NAME_3] moniker and pastel pink neck capsule—have proved somewhat contentious in evoking [NAME_33]'s European ancestry and wine heritage. Great grandfather [NAME_68] was a successful wine merchant in Belgium and purchased [NAME_57]'s prestigious [NAME_38] in 1924. Almost a century later, the esteemed 16ha [NAME_7] property remains in family hands, with cousin [NAME_75] making its wines, as well as managing a fabled vineyard down the road at [NAME_40] Le Pin owned by garagiste winemaker and cousin, [NAME_192]. 251 A report on [NAME_205] website dated 6 February 2019 stated: The wine's labelling and packaging – not to mention its [NAME_3] moniker – reflect [NAME_33]'s family heritage. Great grandfather [NAME_68] was a successful wine merchant who purchased [NAME_7]'s prestigious [NAME_38] in 1924. Nearly a century later, the 16ha [NAME_57] property remains in Belgian hands, with [NAME_33]'s cousin [NAME_74] in charge. [NAME_40] Le Pin, located nearby, is owned by another cousin, [NAME_192]. Links to such esteemed properties help drive [NAME_33]'s unique viticultural quest. Like his European peers, he is keenly aware of the steadfast stewardship that historic properties invariably demand from their custodians. Indeed, [NAME_33] believes many of the world's great wine estates enjoy their positions of pre-eminence because their owners did whatever was needed to optimise the quality and consistency of their production. 252 An article published online at [NAME_163] and dated November/December 2021 stated: The [NAME_33] family are related to the owners of the respected [NAME_225] in [NAME_7], owners of the respected [NAME_225] in [NAME_7], hence paying homage with the name [NAME_42] for a premium single vineyard pinot noir. [NAME_37] has undergone several changes, and regular changes of winemaker, over its close to half a century of existence but [NAME_226] is the current chief winemaker with the business overseen by [NAME_31] … The [NAME_33] family has wine links back through generations. [NAME_31]'s great grandfather, [NAME_68], was a successful wine merchant who purchased [NAME_1] in 1924. Nearly a century later, the [NAME_57] property remains in the family's hands, with [NAME_33]'s cousin [NAME_74] in charge. Highly regarded Chateau Le Pin, located nearby, is owned by another cousin, [NAME_192], underlining the family's love of the wine industry. [NAME_37] is carrying on that tradition and is one of the largest Tasmanian-owned wine estates. [NAME_36] is today home to five labels: [NAME_37] Estate, Ninth Island, [NAME_4], [NAME_42] and the newest addition being the Pipers Tasmania range, which is a modern expression of the more traditional estate wines. 253 The [NAME_44] [NAME_203] training manual and various [NAME_4] documents in evidence also provide an indication of how [NAME_56] intended to and have gone about promoting the [NAME_51]. 254 In February 2019, [NAME_44] prepared a [NAME_203] training manual. [NAME_49] agreed that one of the purposes of this document was to provide staff at the [NAME_203] with information about the [NAME_51] which would be of interest to consumers. On the page dedicated to the [NAME_51], the [NAME_203] training manual contained the following text: The label features the [NAME_47] family homestead which was built in 1865 on the vineyard's estate property, in Launceston. The name and the colour are inspired by [NAME_164], founded by family in Europe and the wine is produced in small quantities from the single [NAME_47] vineyard around the house, that is 3.3 hectares in size, producing on average 200 cases per vintage. 255 [NAME_49] accepted that it was likely that [NAME_229] was involved in the preparation of the [NAME_203] training manual. [NAME_49] also gave evidence that the National Sales Manager, [NAME_232] must have been aware of it. [NAME_49] claimed that he had not seen this document before, and that he would have disapproved of the reference to "[NAME_164]". 256 When [NAME_49] was asked to explain his objection to the [NAME_164] text, his evidence was as follows: MR [NAME_23]: It says the name is inspired by [NAME_164]? [NAME_49]: Yes. Q: Now, [NAME_164] is a reference to my client's estate and wine, is it not? A: Correct. Q: So it's saying the name is inspired by [NAME_41]? A: Yes. It should say then it is inspired by [NAME_1] founded by a family, but all that is something that – that I – that I would have refused to put there because it is not my merit. … HIS HONOUR: What's the problem with that so far as your state of mind is concerned? A: My problem is fundamental with regards to the principle of – of – of doing that in a commercial document. That is my problem, fundamentally. When you want to go into detail, they could have said, yes, it inspired with the pink cap that you find on [NAME_1] found by a family, but I – all that, to me, is – is – is – I have a problem with all that, fundamentally. 257 On 11 February 2020, [NAME_235], the [NAME_236] manager for [NAME_4], sent a draft "[NAME_42] brand story" document to [NAME_49] for his review as the summary of their discussion. The draft "[NAME_42] brand story" reproduced the [NAME_164] text that I have set out earlier. 258 [NAME_49] claimed under cross-examination that he was reading the document for the first time. He claimed that he would have removed the reference to "[NAME_164]" in this document because it was "rubbish". However, he accepted that the document was compiled based on a discussion between him and [NAME_235]. 259 Between 29 October 2020 and 11 November 2020, [NAME_235] and [NAME_237], the national sales manager for [NAME_4], exchanged emails with [NAME_238], assistant category manager of fine wine for the retailer [NAME_157]. The emails related to the possibility of featuring the [NAME_51] in a direct marketing promotion for [NAME_157] customers. In the course of this exchange, [NAME_235] provided a tasting note, [NAME_42] bottle shot and some marketing information to Mr [NAME_241]. Her covering email to Mr [NAME_241] reproduced the [NAME_164] text that I have set out earlier. 260 On 19 July 2021, [NAME_237] exchanged emails with [NAME_242] of [NAME_162]. The emails related to the possibility of featuring the [NAME_51] as a part of the "cellar section" of some of [NAME_162]' Victorian stores. In the course of this exchange, [NAME_237] provided a tasting note and some marketing information to Mr [NAME_243]. His covering email to Mr [NAME_243] reproduced the [NAME_164] text that I have set out earlier. 261 [NAME_49] denied knowledge of either of the communications with [NAME_157] or [NAME_162]. And he sought to distance himself from the development and use of the [NAME_164] text. He was asked about this directly by me: HIS HONOUR: And yet you're saying these documents spanning February 2019 through to July 2021 contain a story that you say you had no knowledge of? [NAME_49]: This – this text is the first time I read them, your Honour. … HIS HONOUR: If that had read the name and the colour are inspired by [NAME_1] - - -? A: [NAME_1]? Q: - - - that would have been - - -? A: Yes. Well, that - - - Q: - - - fine by you? A: It wouldn't be fine, because I still would have – have an objection by the whole – the whole fact – the – the whole topic is out of place. The – [NAME_42] is not – it's – it's – it's inspired by it, but this is not the topic – certainly not in – when you – when you want to sell it. You don't want to sell something. It's like you don't want to win a game if you know you cheat. Where is the benefit to sell something and then you refer to another brand? 262 This aspect of [NAME_49]'s evidence is problematic. The [NAME_164] text appeared in the [NAME_203] training manual, the draft "[NAME_42]", and each of the emails sent to [NAME_157] and [NAME_162]. Those publications span the period between 11 February 2019 and 19 July 2021. 263 In my view and given the personal nature of the information contained in the [NAME_164] text, it is improbable that [NAME_49] was not aware of the statement contained in the [NAME_164] text.

The significant resemblance between the [NAME_51] and [NAME_41]'s wine 264 Let me begin with [NAME_93]'s evidence. 265 [NAME_93] had previously tasted and written a review of a later vintage of the [NAME_51] and he recognised the label from doing so. At the time that he wrote his review, it never occurred to him that the [NAME_51] had any association with [NAME_41]. Indeed, he did not think of [NAME_41] at all. In fact, he had initially spelled the name of the [NAME_51] incorrectly in his review and on his website, spelling it "New Certain". 266 [NAME_93] commented on the main features of the [NAME_42] front label (2016). 267 He noted that whilst there are some similar aspects to the [NAME_41] label, [NAME_42] is clearly labelled as a wine from Tasmania and as a pinot noir. 268 On review of the front label, and undertaking a comparison with the label of the [NAME_67], the main common features appear to be the capitalisation and colour of the starting letter of each word of the name '[NAME_42]', the picture of the property, the colour wash through the label and the edges of the label. However, the property on the [NAME_244] did not remind him of a [NAME_40], but evoked a grand house. Upon close scrutiny, he observed that both capsules were coloured pink. There are some words on the [NAME_244] that are French, specifically '[NAME_214]'. These words do not appear on the front label of the [NAME_67]. Furthermore, [NAME_4] is an Australian wine brand. 269 In his opinion, there is a sense of playfulness about the label. He considered it to be amusing, meaning that there is a little bit of fun brought to mind by the [NAME_244]. On a side by side comparison, he perceived that the [NAME_244] has likely taken inspiration from the [NAME_245]. However, in his view it is plainly different in that the [NAME_244] does not state that it is from [NAME_57]. Indeed, the [NAME_244] states that it is a '[NAME_218]', a 'Pinot Noir' and from 'Tasmania'. Furthermore, the wording of 'Pinot Noir' on the label is bold. He also found the label to be amusing because it says 'Anonyme', meaning anonymous, but it is made by [NAME_4]. 270 He was asked to comment on whether he considered there was a risk that Australian consumers, encountering the [NAME_51], might believe the [NAME_51] to be associated with [NAME_41]. 271 He considered that the main issue, when answering this question, was whether a pinot noir, the label of which announces it as a pinot noir from Tasmania, could be mistaken as, or associated with, a [NAME_7] from [NAME_57], which are producers of merlot or cabernet sauvignon, and which also have different bottle shapes. In his opinion, no Australian consumer of Tasmanian pinot noir would pick up a bottle of [NAME_42] and think they that had picked up a bottle of [NAME_67]. 272 In his opinion, there are five primary reasons why [NAME_42] would not be confused with the [NAME_67]. 273 First, he would expect that few Australian consumers of Tasmanian pinot noir would have heard of, far less be able to recall much if anything about, the [NAME_67]. An ordinary Australian wine consumer will not have [NAME_67] in mind when confronted with [NAME_42]. 274 When he reviewed the [NAME_51], he never thought of [NAME_67], and he has more than thirty years' experience working in wine writing and consultancy in the wine tourism industry. At no time when reviewing the [NAME_51] did it remind him of the branding feature of any other wines, nor did he think of [NAME_41]. If he had thought of [NAME_41], he would likely have written something in his review to the effect of the label being humorous or a bit of fun. Furthermore, he spelled the name incorrectly on his website. 275 In his opinion, most buyers of Tasmanian pinot noir at the price point of $75 to $95 would buy [NAME_42] without any knowledge of what the label "pokes fun" at. In his view purchasers of Tasmanian pinot noir are a smaller segment of the Australian wine market, due to pinot noir's small production and the fact that Tasmania produces less than 1% of Australia's wine. These buyers are generally different people to those who collect [NAME_7]. There would be very few consumers who are both informed drinkers of $500 [NAME_7] red wines, and consumers of $75 to $95 Tasmanian pinot noir. 276 Second, he considered that the name of the variety on the front label immediately indicates that [NAME_42] is a pinot noir, which is a very different style to wines produced in [NAME_7]. 277 Third, the front label identifies the location where the wine is produced as Tasmania and Australia. He was not aware of any Tasmanian producer of still table wine entering into any commercial arrangement with any French wine producer, far less a châteaux in [NAME_7]. In his view, it would be quite incongruous for this to occur, as pinot noir produced in Tasmania is a radically different type of wine to that produced in [NAME_7]. 278 Fourth, he also attached significance to the bottle shape. [NAME_42] is sold in a Burgundy shaped bottle, which is the bottle shape used for pinot noir. Contrastingly, the [NAME_67] is sold in a classic [NAME_7] (cabernet sauvignon) shaped bottle. He said that it would be odd for a cabernet sauvignon or merlot such as [NAME_41]'s wines to be offered for sale, or associated with, a Burgundy shaped bottle. In his experience, a consumer at the price point of $75 to $95 would be aware of the different types of bottle shapes and in his opinion would be shocked to see a cabernet sauvignon or merlot in a Burgundy shaped bottle. He said that the association between pinot noir and the Burgundy bottle shape dates back more than one hundred years, and applies in all but the rarest of cases. Similarly, he said that it is extremely rare to find a red wine from the [NAME_7] varieties sold in a Burgundian bottle shape. 279 Fifth, when he looked at the front label of [NAME_42], there is no text on the label to suggest that the [NAME_42] producer has a connection with [NAME_41], and he could not recall reading about any such connection in the wine media. The [NAME_67] is approximately five to six times higher in price than [NAME_42], the wines come from different families of grape varieties, and are produced on different sides of the planet. In his opinion, a Tasmanian pinot noir and an established [NAME_7] blend from [NAME_57] are fundamentally different wines and are diametrically opposed. 280 Sixth, upon review of the back label (2016), he considered the wording to be typical marketing-type information, in the sense that it was both philosophical and historical. He said that the back label provides information that the wine was produced at a single vineyard in Tasmania. In his opinion, this further reduces the likelihood of anyone purchasing the [NAME_51] thinking it was [NAME_67] or associated with [NAME_41]. No reference is made anywhere on the label to [NAME_41] or [NAME_7]. 281 Seventh, the three lines from the bottom of the label read: It is the passionate marriage of old world and new, capturing multiple sensual flavours and is an elegant expression of this profound site whilst hallmarking its European heritage. Crafted with emotional precision. 282 But in his opinion, this is a type of marketing hype commonly used on back labels of Australian wine. On this label, Tasmania, being located in Australia, is considered to be the particular source of new world wine. However, the techniques used to grow and craft the wine are inspired by techniques of the old world, being Europe. 283 Eighth, the back label also says "The privileged vineyard site; comprising of 64 Pinot Noir clones on five different root stocks…", which he considered to be reflective of the "mass selection" of clones within the vineyard. In essence, in his view the label is saying that it does not matter which clones are in the vineyard, but the wine is reflective of the whole site. In his opinion, that is the "passionate marriage" between old and new worlds that is being described in the back label. In short, he considered the old world is referring to the planting of the vineyard and to the wine making techniques deployed, whilst the new world is referring to the fact that the wine is grown and made in Australia. 284 Ninth, he was also asked to comment on the expression "is an elegant expression of this profound site whilst hallmarking its European heritage". In his opinion, this is typical language used in marketing wines. He said that he has observed that it is common for Australian winemaking families with a European heritage to use words to this effect, to seek to evoke their European heritage when marketing their wines. As he understood it, the sentence is indicating that the family who owns [NAME_4] is European and this is reflected in the cultural approach underpinning the growing and the making of the wine. 285 Tenth, in his opinion, a notable feature of the 2011 front label is the phrasing 'Appellation Tasmania controlée', which he understood is a system that does not exist and therefore is a bit of fun. Another notable feature is that the label says it is a 'Product of Australia'. In comparison to the 2016 [NAME_42] front label, this label includes the words 'Mis En Bouteille Au Chateau' but those words did not appear on the 2016 label. The label also says 'Pinot Noir' and '[NAME_47]'. 286 Eleventh, when reviewing the 2011 back label, he considered it to be a standard back label. It says that the wine is a pinot noir, made in Tasmania, and references [NAME_47]. He could see that the producer is [NAME_44]. Because he was associated with the wine industry, he was aware that [NAME_4] owns [NAME_44]. The back label told him that this wine is a new and different wine and not to be confused with other [NAME_44] wines. It is a single site and an addition of the already existing range produced by [NAME_44]. 287 Twelfth, [NAME_93] also commented on whether he considered [NAME_42] could possibly be a brand extension of [NAME_41]. In his opinion, the label of [NAME_42] does not suggest that it is a brand extension of [NAME_41]. This is reinforced with the inclusion of the name [NAME_4] which he identifies as an Australian wine brand. 288 In his experience, it would have been significant high profile news if one of the owners of a [NAME_7] [NAME_40] had implemented a brand extension on the other side of the world with an entirely different grape variety and wine making approach. 289 Further, based on his experience and knowledge of the Australian and French wine markets, it is rare for châteaux in [NAME_7] to engage in overseas brand extensions, and therefore those that exist are relatively well-known. For example, he was aware that [NAME_95] has a development in Yantai in China, and [NAME_246] has a brand extension in the Yunnan province in the South of China, as well as its high profile [NAME_247] development in the Napa Valley. In each of these instances the wines produced draw heavily on the varietal composition, style and bottle shape and design of the parent châteaux. 290 In his experience, whilst it is more common for sparkling wine producers to establish joint ventures and collaborations with producers in Australia, it is extremely rare for [NAME_7] [NAME_40] or brand owners to do so. The nearest similar examples he was aware of are [NAME_248] (who was born in [NAME_7]) establishing [NAME_251] in Victoria, and [NAME_252] (whose family is a very significant owner of châteaux in [NAME_7]) creating his own wines in various South Australian regions. However, in the first instance [NAME_251] is fully owned by an American citizen, and in the second, [NAME_253]'s businesses are fully owned by him. In neither case does pinot noir feature as a still red wine. 291 He considered that even if [NAME_41] was trying to capitalise on its reputation and launch a brand extension in Australia, it would make more sense to deploy the brand for a merlot-based red wine rather than a pinot noir. In other words, [NAME_41] would have ventured into a region more suited to merlot or cabernet varieties. [NAME_41] is not known for any specific experience with pinot noir, and thus it would not make sense for it to try making a pinot noir in Tasmania. 292 But in contrast with [NAME_93]'s evidence, the evidence reveals how a number of experienced wine industry professionals have reacted to the presentation of [NAME_51] by thinking that there is a connection between the [NAME_51] and/or [NAME_254] and the [NAME_66]. 293 [NAME_102] first encountered the [NAME_51] being the 2017 vintage when he received a sample for tasting from [NAME_44] in late 2018. He recounted his reaction as follows. 294 He recalled that he received a number of wines from [NAME_44] for review together with a bottle of the 2017 vintage of [NAME_42]. The bottle of [NAME_42] immediately caught his attention because of its appearance, notably the pink screw top cap, the fluted edging to the label, the colour scheme that was selected and the name, all of which brought [NAME_41] and its wines to the front of his mind. 295 On 18 September 2018, he published an article which included a discussion on the 2017 [NAME_42], entitled "Pinot pleasures from 2017" for The Real Review. 296 In his article he discussed the 2017 [NAME_42], including stating the following: Also impressing from Tasmania is a new AUD$95 wine from [NAME_36]: the 2017 [NAME_42]. The name and label are peculiar, in that they evoke the owner's family connection with [NAME_7]'s [NAME_38]. The label is almost a carbon copy, and the name [NAME_3] has no resonance with Australia or Australian wine, and anyway, it's not from [NAME_7] grapes, it's a pinot! The wine is very good, albeit young and a little hard to read, but I suspect it will grow into a ripper. Two other 2017 [NAME_36] pinots, the Estate Bottling (AUD$45) and Single Block A10 (AUD$75) are also excellent wines, the trio making a strong statement about the changes in winemaking since [NAME_255] came on bord [sic] as part-time chief winemaker. These are all delicious, beautifully made pinots. 297 At the time that he received the bottle of 2017 [NAME_42] to review, it did not cross his mind that the wine had not been approved and authorised by [NAME_41]. He regarded it as a whimsical brand extension by [NAME_44], but one which connected the wine with [NAME_41]. He also knew at the time that [NAME_49] was involved in operating [NAME_44] and that he was related to [NAME_73] of [NAME_41]. His reaction to [NAME_42] was to assume, incorrectly, that it had been approved by [NAME_41]. His assumption was only corrected as a result of his involvement with this proceeding. 298 [NAME_93] disagreed with [NAME_102]'s views, but I am inclined to accept [NAME_102]'s evidence. 299 [NAME_106] first encountered the [NAME_51] being the 2018 vintage which she received as a tasting sample. She recounted her reaction as follows. 300 When she first unpacked the [NAME_42] 2018 bottle, at first glance she thought it was a bottle of the [NAME_67] with a screw top cap. In the wine industry, some brands have strong colour associations. For example, [NAME_257]'s [NAME_258] is famous for having a colour association with a particular shade of orange which features on labels and associated merchandise. For her, there is a similar strong colour association with [NAME_41]'s wines and its pink capsule. In her experience, the pink capsule is very unusual for a [NAME_7] wine and for French wine more generally. [NAME_7] wines are traditionally presented in a conservative way and the pink capsule used on [NAME_41]'s wines is distinctive and, in her view, quite daring by comparison. At first glance, the pink and gold screw top cap of the [NAME_42] 2018 wine that was submitted to her for tasting caused her to think that this was a bottle of the [NAME_67] with a screw top cap. 301 She then examined the bottle and the front wine label, from which she understood that this was not a bottle of the [NAME_67], but rather a Tasmanian Pinot Noir called [NAME_42]. When she considered the front wine label which features the name [NAME_42] and a sketch of a [NAME_40], in addition to the pink screw top cap, she thought that there must be a commercial association or connection of some sort between this wine and [NAME_41]. The name [NAME_42] seemed to her to be a play on words of the name [NAME_38], which translates in English as "[NAME_39]". 302 She then examined the back label, and saw that this Pinot Noir was produced by [NAME_44], with [NAME_255] as the chief wine maker. This did not clarify for her how a [NAME_44] wine was connected to or associated with [NAME_41] or the [NAME_67]. 303 [NAME_106] then did some further on-line investigation in relation to the [NAME_51]. She then gave evidence that whilst she was still confused as to what the nature of the relationship could be between [NAME_44] and [NAME_41], as [NAME_259]'s earlier reviews referenced a similar connection or association of some sort based on the appearance of the wine, she decided not to research the matter any further. 304 I have no reason to doubt her evidence. 305 [NAME_110] first encountered the [NAME_51] being the 2018 vintage in the liquor section of an IGA supermarket in New South Wales on 29 November 2021. [NAME_110] recounted his reaction as follows. 306 From a distance, he saw a bottle with what he thought was the [NAME_41] pink capsule and a label that made him think that [NAME_261] was selling a [NAME_67]. This seemed surprising to him, given the rarity of the [NAME_67] and [NAME_77]. When he was close enough to read the label and note that the bottle had a screw top cap and was not the traditional [NAME_7] shape, he realised it was not the [NAME_67] or the [NAME_77], but rather a wine known as [NAME_42], a pinot noir from Tasmania. He took the following photo on his phone and asked one of the [NAME_261] staff about this wine. The staff member he spoke with was not able to provide any further information about this particular bottle. 307 As he was surprised by the branding of this wine, he contacted one of his [NAME_7] negociants, [NAME_262], to ascertain if [NAME_42] was connected or associated in any way with [NAME_41] of [NAME_57]. [NAME_263] of [NAME_262] told him that he was not aware of the [NAME_51] from Tasmania. 308 Again, I have no reason to doubt this evidence. 309 Further, [NAME_114] stated that he was immediately struck by the name [NAME_42] and the product presentation. But his knowledge of [NAME_7] is exceptional compared to other Australian wine trade and media. As a world expert on [NAME_7], his reaction is unlikely to be that of the typical [NAME_7] consumer, both in relation to these specific products, but [NAME_7] wines more generally. [NAME_114] above most others in Australia would know if any [NAME_7] producer had an association or relationship with an Australian producer. 310 Now the respondents rely on the evidence of [NAME_93] to the effect that he did not personally have a similar reaction to the [NAME_51] and that he did not consider that any relevant consumers would have such a reaction to it. But [NAME_93]'s evidence on this matter is not to be preferred. 311 First, the evidence of [NAME_102], [NAME_106] and [NAME_110] in relation to this issue was largely unchallenged. And their reactions were spontaneous and genuine. 312 Second, [NAME_93] encountered the [NAME_51] during a very busy tasting period. His evidence suggested that he gave only cursory attention to the presentation of the [NAME_51]. 313 Third, when [NAME_93] encountered the [NAME_51], the name [NAME_3] simply did not mean anything to him: HIS HONOUR: But what did you mean – what did you think "[NAME_3]" meant? [NAME_93]: I just wrote it down as the word "certain". I stuck an I in it and – and it was only when I was talking to the [NAME_266] team that I had actually realised that I had made that mistake. I didn't make any – the word "[NAME_3]" meant absolutely zero to me. Q: Well, does that mean that the word "[NAME_3]" in [NAME_41] meant nothing to you suggesting that you didn't really know much about [NAME_41]? A: No, I – it – no. I just didn't – I – I didn't read the word as spelt that way. I just – I was typing and it was in a line-up with a lot of wine and I typed it as "New Certain", the English word. 314 It is therefore unsurprising that it did not call [NAME_41] to mind for him. However, he accepted that the use of the word "New" before the word "[NAME_3]" infers that there is an "old" [NAME_3]. 315 Fourth, [NAME_93]'s opinion in relation to the presentation of the [NAME_51] was predicated on the assumed fact that there was no story behind the [NAME_51] regarding an association with [NAME_41]. [NAME_93] did not do any searches, or request any materials from the respondents, to verify that. I agree with [NAME_41] that the evidence demonstrates that assumed fact to be problematic. 316 Fifth, a number of online retailers have also promoted the [NAME_51] on the basis that there is connection between it and the [NAME_38] wine estate. For example, [NAME_219] described that connection as follows: The [NAME_42], with it's recognisable pale pink cap, is a play on [NAME_1], on [sic] of the most expensive wines of [NAME_7] in France. Owners of that estate also own this Tasmanian estate. It is careful selection of only the best parcels across our [NAME_47] in Launceston. [NAME_47] grows an ethereal Pinot noir of elegant intensity. A warm and dry vintage, with cold nights and bright sunny days; providing perfect growing conditions for Pinot Noir. Great tannin ripeness coupled with fruit intensity mark the 2017 vintage. 317 Now the respondents say that all of this evidence does not rise above the level of cause to wonder. But I disagree. 318 Now in my opinion, the presentation of the [NAME_51] vintages promoted, offered for sale and sold to date bear a significant resemblance to the presentation of [NAME_41]'s wines and, in particular, the [NAME_67]. And it is unsurprising that this is so, given the evidence of [NAME_49]'s involvement in the design of the packaging of the [NAME_51]. The foundation of the design process was to provide [NAME_217] with a photo or a bottle of the [NAME_67] including the pink capsule. The label clearly took inspiration from the label of the [NAME_67].

The new branding for [NAME_42] 319 With effect from the 2022 vintage, [NAME_44] intends to rebrand the [NAME_51]. 320 Now in my view the proposed [NAME_42] product looks very different from the previous design of the [NAME_42] product. Other than the name "[NAME_42]", the proposed [NAME_42] product removes all of the [NAME_42] features, including the pink capsule and the image of [NAME_49]'s family home. The new branding is depicted as follows: 321 The new branding has the following features, in addition to other distinguishing features such as the classic Burgundy-style bottle shape, being a solid bronze capsule (the same as used for other [NAME_44] pinot noir wine) with the name '[NAME_37]' in unfilled gold lettering printed onto the bottom half of the capsule, an off white, straight-edged label, and a centrally located lithograph of an artwork depicting the Tamar River in Launceston by Colonial era artist [NAME_267], with solid gold bordering. Further, the branding has the words "[NAME_42]", "Tasmania", "single site", "pinot noir" and the vintage of the wine in deep green or gold text featured centrally on the front label. 322 The text on the back label of the new branding states: 323 A consumer encountering the new branding would have no doubt of the product's commercial origin. It prominently bears the name "[NAME_36]", and its style is consistent with other wines produced by [NAME_44]. There are no references to "European heritage". It is a world away from the packaging of the [NAME_98]. 324 [NAME_93] commented on whether he would consider a bottle of [NAME_42] presented differently, that is, without an image of a [NAME_40] and having different colours, but retaining the name '[NAME_42]', to be connected to [NAME_41]. 325 Having been directed to consider the [NAME_244] against the [NAME_245], he would describe it as amusing and harmless fun. To him, the joke would "fall flat" if the name was retained but the presentation was otherwise different. However, it certainly would not make him think that [NAME_42] was connected to [NAME_41]. 326 After he had expressed these opinions above, he was shown the following images: 327 This label is in the style of a label that he had associated with wines from the [NAME_44] range. 328 He observed that the font used for the words '[NAME_42]' is different to the labels on which he made comments in his affidavit. He noted that in the context of his affidavit and the questions that he had been asked to address, he was necessarily more focused on such design elements than he would normally be. The front and back labels for [NAME_42] on which he commented above were, in his opinion, playful and humorous. He would not use either of those terms to describe this label. 329 Reviewing the back label closely, he observed that the references to European heritage have been removed. The label clearly identifies the wine as being produced by [NAME_44]. 330 He did not consider this bottle to be connected to [NAME_41]. It is clearly a [NAME_44] label. 331 [NAME_41] says that the proposed new branding of the [NAME_51] would also be misleading. It says that the proposed branding prominently features the name [NAME_42]. It says that it does so in a context where, over the course of several years, [NAME_56] have promoted the [NAME_51] and by reference to a connection with [NAME_41], [NAME_41]'s wines and/or the [NAME_66]. It says that the proposed re-branding will leverage and build upon the existing knowledge and reputation in the Australian marketplace of the [NAME_51]. [NAME_41] says that the proposed re-branding does not and could not undo the false connection that has been conveyed by the respondents conduct to date. 332 [NAME_76] explained the difficulty that is inherent in the proposed re-branding. 333 He said that whilst the proposed re-branding removes elements of the existing branding such as the use of the colour pink and the overall label presentation which he regarded as closely mimicking the labels of [NAME_41]'s wines, the proposed re-branding continues to be of serious concern to him. 334 As to the respondents' proposal to continue such conduct into the future through their existing stock of wines and the as yet unreleased 2021 vintage, to him this conduct involves taking advantage of the name and goodwill of [NAME_41] and its wines. He said that the foundations of the market for the [NAME_51] have been built upon this. 335 He said that the name [NAME_42] is a very prominent part of the proposed re-branding. To him, this name continues to reference [NAME_41]. This is because the word [NAME_3] is the important part of the name [NAME_38] and the name [NAME_42], and the word "vieux" in French means "old", the opposite of, but a closely related concept to, the word "new". 336 He regarded the use of the name [NAME_42] as a particularly important part of the respondents' conduct because it is the name by which the [NAME_51] is likely to be identified and recalled by the trade and consumers.

Accordingly, he believed that the use of that name would continue to evoke and reference [NAME_41] and its wines. This is particularly so against the background of how the [NAME_51] has been presented and marketed to date. 337 [NAME_106] said that her initial reaction to the new branding was that it still uses the name [NAME_42]. The name [NAME_42] creates an association for her with [NAME_41]. [NAME_42] is prominently positioned on the front and back labels in green and bronze font, and, in her opinion, this is the name that will be referred to when the wine is spoken about and, in many cases, referred to in wine lists. 338 She said that whilst the wine name remains the same, the new branding uses a different colour scheme for the proposed screw top cap and a different label format which features a [NAME_267] image. With the exception of the name, which creates an association for her with [NAME_41], the new branding is in a style that she recognises as being consistent with wines produced by [NAME_44]. 339 She said that as the new branding retains the name [NAME_42], she associates it with her experience of reviewing [NAME_42] 2018. She said that if she had not been involved in this proceeding and had encountered the new branding as a bottle of [NAME_42] 2022, she thinks that it is highly likely that she would still believe that there was a connection or association of some sort based on the name of the wine, [NAME_42], and her previous experience with it. 340 [NAME_102] stated that the proposed branding is visually very different to the current [NAME_51] presentation. This proposed branding does not draw his attention in the same way as the current presentation of the [NAME_51] does – the bronze screw top cap includes the name [NAME_37], the label featuring the [NAME_267] image and green and bronze font are muted by comparison to the current label. He did not experience the same instant recognition of an association with [NAME_41] that he experienced when he first saw the bottle of the 2017 vintage of [NAME_42] on 2 September 2018, and later saw the 2019 vintage on 18 February 2022. 341 However, he said that the name of the wine, [NAME_42], remains the same. It is prominently featured on the front and back label of the proposed branding. He would expect that the wine will continue to be referred to by that name, including when written or spoken. In his mind, this creates a clear link between any wine using the proposed branding and the [NAME_51] that he is familiar with under the current branding. 342 He said that his assumption about a connection between the [NAME_51] and [NAME_41] has been corrected because of his involvement in this proceeding. If he had not been told that this assumption was incorrect, he believes it is likely that he would still believe that the [NAME_51] was connected with [NAME_41]. 343 Accordingly, if he were to receive or see a bottle with the proposed branding, he is confident that he would identify it as the [NAME_51] that he is familiar with and recalls his previous experiences with the 2017 and 2019 vintages of [NAME_42]. It is the on-going use of the name [NAME_42] which would cause this to be the case. 344 [NAME_114] stated that the proposed branding still includes the name [NAME_42] prominently on both the front and back labels. 345 He said that with the exception of the name, [NAME_42], the elements of the product presentation that he described in his affidavit as being strongly evocative of [NAME_41] are not included in the proposed branding. However, to his mind, the use of the name [NAME_42] means that the wine will continue to be associated with [NAME_41]. 346 From his review of the proposed branding, he expects that the [NAME_51] will continue to be referred to, both verbally and in writing, by the name [NAME_42]. This means that the name [NAME_42] will be used to refer to both the existing vintages which feature the current wine presentation, and any new vintages which feature the proposed branding. To his mind, this creates an ongoing connection between the two wine presentations. 347 In his experience of promoting and selling fine wines, the history and narrative of a wine and its wine producer is important. Wine professionals, such as [NAME_93], who have already seen, reviewed and written about [NAME_42] wines may be asked to review a future vintage with the proposed branding. 348 Further, he said that as can be seen by [NAME_93]'s review of the 2017 vintage of [NAME_42], wine writers generally include in their reviews and articles wine images that have been supplied by the wine producer. In his experience, this creates for the reader a visual association of the wine presentation with the wine that is being reviewed. Wine reviews of fine wines are generally cumulative, in the sense that reviews remain available and accessible online for many years on the websites of wine writers and wine publications, and retailers promoting the wines. Past reviews of [NAME_42] with the current wine presentation are likely to be accessible and included on website pages when wine writers review new vintages of [NAME_42] with the proposed branding. 349 Further, in his view the name '[NAME_42]' is strongly evocative of [NAME_41]. In his opinion, the proposed branding will continue to communicate albeit more subtly, the [NAME_42] product narrative, namely that there is some form of connection or association between [NAME_42] and [NAME_41]'s wines and their respective producers. Further, the use of the name [NAME_37] on the cap together with the name [NAME_42] on the label of the proposed branding reiterates that there is a connection between the producer of the 'New' [NAME_3], being [NAME_44], and the producer of the 'old' [NAME_3], being [NAME_41]. 350 [NAME_93] also gave evidence in cross-examination which [NAME_41] says highlights the difficulty with the proposed re-branding. 351 [NAME_41] says that the name [NAME_42], with all of the connotations it carries based on the respondents' conduct to date, is the primary identifier of the proposed new branding. It says that the wine is unlikely to be referred to as a [NAME_44] wine. 352 It says that the effect of this is that the respondents will continue to capitalise on the goodwill of [NAME_41] which they have called upon in their branding of the [NAME_51]. 353 But I do not accept [NAME_41]'s case and criticisms concerning the proposed new branding of [NAME_42]. I will return to this later.

[NAME_41]'s claims under the ACL and in passing off 354 Let me deal with some general matters before getting into the detail. 355 [NAME_41] alleges that [NAME_50] and [NAME_44]'s promotion and sale of the [NAME_51], both in bottles with the previous [NAME_42] features and in bottles with the new branding, is misleading or deceptive or is likely to mislead or deceive consumers, in that it conveys that there is a connection between the [NAME_51] and [NAME_41] or its wines. 356 [NAME_41] also alleges that [NAME_50] and [NAME_44]'s promotion and sale of the [NAME_51], both in bottles with the previous [NAME_42] features and in bottles with the new branding, falsely represents to consumers that the [NAME_51] has the approval of [NAME_41] or that [NAME_4] and/or [NAME_44] has an affiliation with [NAME_41]. 357 But [NAME_41] does not allege that consumers would be misled or deceived into thinking that the [NAME_51] is either of the [NAME_98]. Clearly, the parties' respective products are distinguishable. They are different products ([NAME_7] from [NAME_57] vs. Tasmanian pinot noir). They sell at different price points ($600 to $800 per bottle vs. $75 to $95 per bottle). And they are presented in different shaped bottles (traditional [NAME_7] shape vs. Burgundy/pinot noir shape). 358 Further, [NAME_41] does not allege that consumers would be misled or deceived into thinking that the [NAME_51] has been produced by [NAME_41]. They are clearly marked with the names of their respective and different producers. 359 Let me make some other general points before proceeding further. 360 The first point is that [NAME_41] does not have a monopoly over each or any of the branding features used on its products. 361 Now the [NAME_98] are sold in or with a combination of the following features being a pink capsule with gold decoration around the base and on top of the capsule, a label featuring the name [NAME_3] as a prominent part of the names [NAME_38] and La Gravette De [NAME_3], the use of a pink font for the first letters of the name of the wine, in the case of the [NAME_67], the words Grand Vin and Mis En Bouteille Au [NAME_40] in pink font, a centrally located image of a stately house known as [NAME_38] that is located on the [NAME_66], and a fluted edge profile. But each of these features is not unique to [NAME_41] or its wines. 362 First, the use of an image of a stately house or [NAME_40] is common, particularly amongst [NAME_7] wines. 363 Second, the words "Grand Vin" ("great wine") and "Mis En Bouteille Au [NAME_40]" ("bottled at the estate") are mere descriptors and are used on wines other than the [NAME_67]. 364 Third, as to the use of a pink capsule or other elements of pink on the packaging of the [NAME_98], I accept that such a colour choice was unusual for [NAME_7] wines. But even the use of a pink capsule in [NAME_7] is not unique to [NAME_41] or its products. A number of producers of wines including French red wines use variations of pink on their respective capsules, including [NAME_270], [NAME_271] and [NAME_272]. But I do accept that [NAME_41] has used a particular and unusual shade of pink. 365 The second point to make is that in assessing the existence of any reputation in the combination of the [NAME_41] features and [NAME_41] itself, it is relevant to have regard to the manner in which the [NAME_98] are sold in Australia. I have touched on some of these aspects earlier but it is useful here to note the following. 366 First, the process through which [NAME_41] sells its wines is known as [NAME_165]. It involves the use of courtiers, who are retained by wine estates to negotiate the sale of wines to négociants, who are wine brokers who then on-sell wine to their distributor contacts. Wines sold through this process are primarily sold en primeur, which means that they are purchased prior to being bottled. The en primeur system is the traditional means by which trade and customers are able to buy wines from [NAME_7] châteaux. This is not a typical retail setting. 367 Second, to the extent the [NAME_98] are sold in Australia, the evidence shows that they are typically sold via mailing lists or wine retail lists. These lists typically do not display pictures of any products. The name [NAME_38] on any such lists appears amongst tens or hundreds of other products, and in some cases also with [NAME_60]. 368 Third, in restaurant settings, to the extent that the [NAME_98] appear on wine lists at restaurants, they are likely to appear in a written list organised by region and sub-region amongst tens or hundreds of other products. For example, the wine list for [COMPANY_128] is 99 pages long. Various vintages of the [NAME_67] appear on one page of that list. [NAME_60] also appears in that list on the preceding page. 369 The third point to make is that neither of [NAME_41]'s wines is referred to solely as "[NAME_3]". And the evidence does not indicate that the wine consuming public or wine professionals refer to the [NAME_67] by reference to [NAME_3] alone. Let me elaborate on these points and make other points concerning [NAME_3]. 370 First, there is no evidence that [NAME_41] has ever promoted or sold either of the [NAME_98] under or by reference to [NAME_3] alone. To the contrary, to the extent that [NAME_41] has used the term [NAME_3], it has done so as part of the composite phrases [NAME_38] and La Gravette de [NAME_3]. The ordinary reasonable consumer is to be credited with awareness of this consistent usage ([COMPANY_8] v [COMPANY_10] (No 8) (2008) 75 IPR 557 at [65] per [NAME_27] J). So, in circumstances where [NAME_41] has never made any use of the term [NAME_3] alone in any branding or marketing activity divorced from the composite phrases [NAME_38] and La Gravette de [NAME_3], there is not any secondary stand-alone reputation in the word [NAME_3]. 371 Second, there are other French wines which include [NAME_3] as part of their name, including [NAME_60]. The third-party usage of [NAME_3] by such wineries is against the proposition that [NAME_41] has acquired any independent reputation in that word. 372 The word [NAME_3], or its alternative, Sertan, originates from the area in [NAME_57] granted by royal decree to the [NAME_175]. It is not a word used exclusively to refer to [NAME_41] or the [NAME_58]. The word [NAME_3] has been for many years used in connection with the sale of wine by other winemakers who are independent of [NAME_41] and who are located on or near the original Sertan estate in [NAME_57]. The original form of Sertan described a large estate that was over time divided into smaller estates. 373 One notable example of this is [NAME_60], previously called [NAME_3] and [NAME_39], and [NAME_211], which is a second wine produced by [NAME_60]. 374 [NAME_60] is sold in bottles which prominently display the words [NAME_57] and [NAME_39] in large font above the text De May de [NAME_3] in smaller font. [NAME_60] has been sold in Australia since at least the early 1980s. It retails at prices between $200 to $300. [NAME_60] is sold through similar trade channels and in similar quantities to the [NAME_67] but in excess of the [NAME_77]. 375 Further, the [NAME_67] and [NAME_60] are listed for sale in close proximity to each other in both of the [NAME_118] "Imported Wine Portfolio" lists in evidence, are both listed for sale on the wine list for [COMPANY_128] under the [NAME_57] sub-heading, and both appear in close proximity in the "[NAME_7]" section of the 1991 [NAME_137]. Both wines also appear in search results for "[NAME_3]" on the [NAME_137] website and on the [NAME_157] website. 376 Further, historically there were other wines which included the word [NAME_3] in their names, including [NAME_273] and [NAME_39], previously called [NAME_3] and [NAME_39]. The evidence relating to other "[NAME_3]" wines in Australia is more limited, but it does indicate that those products have been available for purchase in Australia. The [NAME_211] wine appears on various current wine lists, including at restaurants in Melbourne, Sydney, Canberra and Brisbane. 377 Third, in the context of French wines the evidence establishes that there are many French châteaux which have similar names, and so produce wines with correspondingly similar names or with common words. The practice of including common elements or words in names is very common amongst producers of French wines. There is often a shared common element, which can be reflective of the physical location or historical ownership or which are otherwise highly descriptive. And in my view this naming practice is something that wine experts or consumers willing to purchase a $500 bottle of [NAME_7] would likely be aware of. 378 There are several châteaux with the name "[NAME_95]" or with a near-identical word in them, including: [NAME_40], [NAME_40]-Mengin, [NAME_40], [NAME_40], [NAME_40] [NAME_95], [NAME_40] [NAME_95], [NAME_40], and [NAME_40]. 379 Other examples of producers using a common word or words in their name include the following. 380 La Fleur: [NAME_40] [NAME_184], Chateau La Fleur-Petrus, [NAME_40] [NAME_184], [NAME_40] [NAME_184] de Viaud, [NAME_40] La Fleur des Houx, [NAME_40] La Fleur du Mayne, [NAME_40] [NAME_184] du Roy, [NAME_40] [NAME_184], [NAME_40] [NAME_184]- Landes, [NAME_40] [NAME_184], [NAME_184], [NAME_184], [NAME_40] [NAME_184], [NAME_40] [NAME_184]-[NAME_274], La Fleur Saint Julien, [NAME_40] La Fleur-Vachon, [NAME_40] [NAME_184] and [NAME_40] [NAME_184]. 381 Mouton: [NAME_40] [NAME_40] [NAME_275]. 382 Léoville: [NAME_40] Léoville Barton, Léoville-[NAME_40] Léoville- Poyferré. 383 [NAME_94]: [NAME_270], [NAME_40] [NAME_271], Chapelle de la Mission-[NAME_94], [NAME_40] La Tour-[NAME_94], [NAME_40]-[NAME_94] and [NAME_40]-[NAME_94]. 384 Pichon-Longueville: [NAME_40]-Longueville-Baron (Grands Vins de Gironde) and [NAME_40]-Longueville-Comtesse de Lalande. 385 La Croix meaning "the Cross", which usually has a religious connotation including that it may originally have been produced by monks: [NAME_40], [NAME_40] La Croix de Gay, [NAME_40] la Croix-de-Gay, [NAME_40] La Croix, [NAME_40] de la Croix, La Croix-Barton, [NAME_40] la Croix Bellevue, [NAME_40] la Croix Saint-Pierre, La Croix de Beaucaillou, [NAME_40] La Croix Canon, [NAME_40] La Croix de Belair, [NAME_40] la Croix de Bonneau, [NAME_40] la Croix de Nauze, [NAME_40] la Croix de Pez, [NAME_40] la Croix du Chevalier, [NAME_40] La Croix du Moulin, [NAME_40] La Croix du Bos, [NAME_40] la Croix du Breuil, [NAME_40] la Croix du Casse, [NAME_40] La Croix Figeac (Lamarzelle), [NAME_40] la Croix Fourche Mallard, [NAME_40] La Croix Morand, [NAME_40] La Croix Moulinet. 386 Gay: [NAME_40] La Croix de Gay, [NAME_40] le Gay, [NAME_40] de Gay, La Fleur de Gay, [NAME_40] du Gay de [NAME_40]. 387 Cantenac: [NAME_40] de Cantenac, [NAME_40] [NAME_231]-[NAME_40]. 388 Fourcas: [NAME_40]-Dumont, [NAME_40] Dupré, [NAME_40] [NAME_40]. 389 La Tour meaning "the Tower": [NAME_40] [NAME_96], [NAME_40] [NAME_96], [NAME_40] [NAME_96], [NAME_40] La Tour Blanche, [NAME_40] La Tour Canon, [NAME_40] La Tour Carnet, [NAME_40] La Tour Cordouan, [NAME_40] la Tour de Bessan, [NAME_40] la Tour de Mons, [NAME_40] la Tour de Perrigal, [NAME_40] la Tour de Ségur, [NAME_40] la Tour Figeac, [NAME_40] La Tour Gayet, [NAME_40] la Tour-Guillotin, [NAME_40] la Tour Haut Brion, [NAME_40] la Tour Léognan and [NAME_40] la Tour-Marcillanet. 390 [NAME_275] meaning "younger", which is usually used for a second or junior wine in a portfolio: [NAME_40] [NAME_275]-Bon, [NAME_40] [NAME_275], [NAME_275] D'Arthus, Le [NAME_275] de Gombaude, Le [NAME_275] de Larmadne, Le [NAME_275] de Martinens, Le [NAME_275] de Raymond-Lafon, [NAME_276], [NAME_275] du Grand Bos, [NAME_275] Bruleée, [NAME_278], [NAME_40] [NAME_275] La Vieille FranceChâteau [NAME_275]-Peychez, [NAME_40] [NAME_275]-Piola, [NAME_40] [NAME_275]-Pontet, [NAME_40] [NAME_275] and [NAME_275]. 391 Corbin: [NAME_40], [NAME_279], [NAME_40], [NAME_280] and [NAME_40]-Corbin. 392 Pavie: [NAME_281], [NAME_282] and [NAME_283]. 393 Doisy: [NAME_40], [NAME_284] and [NAME_285]. 394 Fourth, I note that there are French trade marks using the word [NAME_3]. The [NAME_286] as at 27 May 2021 showed French trade marks containing the word [NAME_3] in class 33 of the Nice Classification, which relates to alcoholic beverages including wine. Extracts from the database show the details of the following French trade mark registrations recorded as active and containing the word [NAME_3] that are not related to [NAME_41]: trade mark registration 99821043 for [NAME_39], trade mark registration 99827242 for [NAME_287] and trade mark registration 94506525 for [NAME_288], which are registered in the name of [NAME_289], Société par Actions Simplifiée; trade mark registration 3089496 for [NAME_60] de [NAME_3] and trade mark registration 4290368 for [NAME_40] [NAME_211], which are registered in the name of [NAME_60], Earl, M et [NAME_290] de [NAME_291] et Isabelle, [NAME_292], [NAME_294] et [NAME_297], propriétaires en indivision; trade mark registration 4226864 for [NAME_3], which is registered in the name of M et [NAME_290] de [NAME_291] et Isabelle, [NAME_292], [NAME_294] et [NAME_297], propriétaires en indivision; trade mark registration 3473433 for Clos du [NAME_3], which is registered in the name of [NAME_299]; and trade mark registration 3739942 for Clos du [NAME_3] [NAME_57], which is registered in the name of [NAME_300]. 395 Fifth, the name [NAME_3] has no meaning in respect of Australian wine regions or wines. The name [NAME_3] evokes wines from [NAME_57]. But to the extent that any person has specific knowledge of wines from the [NAME_57] sub-region of [NAME_7], that person would likely be aware of the existence of other wines that use [NAME_3], and in particular [NAME_60]. With that knowledge, and with knowledge of the practice of using similar names or common words amongst producers of French wines, it is problematic that such a person upon seeing the name [NAME_3] would automatically draw an association between that word and [NAME_41] alone. 396 In summary, in my view the use of [NAME_3] alone does not in and of itself indicate any connection or affiliation with [NAME_41]. 397 Let me now turn to identifying the principal legal principles to be applied.

The relevant legal principles 398 Let me first say something concerning the principles relevant to asserted contraventions of ss 18 and 29 of the ACL. I should say as a preliminary observation that it is accepted that the promotion and sale of the [NAME_51] by [NAME_56] is conduct in trade or commerce for the purposes of the ACL. 399 In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, Gibbs CJ stated the general approach in the following terms (at 199 and 200): … Speaking generally, the sale by one manufacturer of goods which closely resemble those of another manufacturer is not a breach of s 52 if the goods are properly labelled. There are hundreds of ordinary articles of consumption which, although made by different manufacturers and of different quality, closely resemble one another. … In all of these cases, the normal and reasonable way to distinguish one product from another is by marks, brands or labels. If an article is properly labelled so as to show the name of the manufacturer or the source of the article its close resemblance to another article will not mislead an ordinary reasonable member of the public… 400 In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 408 ALR 195, the High Court recently set out the well-established principles for determining a breach of s 18 of the ACL (at [80] to [83]). Similar principles apply in the context of claims under s 29 of the ACL, as was said in Self Care at [84]. But of course I am applying these concepts in a factual setting involving a dispute between traders. Let me elaborate on some of the key themes. 401 The question whether conduct has a tendency to lead a person into error is an objective question of fact to be determined on the basis of the conduct of the respondent as a whole viewed in the context of all relevant surrounding facts and circumstances. These circumstances include the strength of the applicant's reputation, and the extent of distribution of its products, the strength of the respondent's reputation, and the extent to which the respondent has undertaken any advertising of its product, the nature and extent of the differences between the products, including whether the products are directly competing, the circumstances in which the products are offered to the public, and whether the respondent has copied the applicant's product or has intentionally adopted prominent features and characteristics of the applicant's product (Verrocchi v Direct Chemist Outlet Pty Ltd (2016) 247 FCR 570 at [61] to [72] per Nicholas, Murphy and Beach JJ). 402 The conduct is tested as against the ordinary or reasonable member of the public or relevant section of the public to whom the conduct is directed ([NAME_12], Limitada v Nike International Ltd (2000) 202 CLR 45 at [102] and [103]). 403 The principles relevant to the classification of the relevant person or class of persons for the purpose of s 18 of the ACL were summarised in Self Care as follows (at [82] and [83]): The third and fourth steps require the court to characterise, as an objective matter, the conduct viewed as a whole and its notional effects, judged by reference to its context, on the state of mind of the relevant person or class of persons. That context includes the immediate context – relevantly, all the words in the document or other communication and the manner in which those words are conveyed, not just a word or phrase in isolation – and the broader context of the relevant surrounding facts and circumstances… Where the conduct was directed to the public or part of the public, the third and fourth steps must be undertaken by reference to the effect or likely effect of the conduct on the ordinary and reasonable members of the relevant class of persons. The relevant class of persons may be defined according to the nature of the conduct, by geographical distribution, age or some other common attribute, habit or interest. It is necessary to isolate an ordinary and reasonable "representative member" (or members) of that class, to objectively attribute characteristics and knowledge to that hypothetical person (or persons), and to consider the effect or likely effect of the conduct on their state of mind. This hypothetical construct "avoids using the very ignorant or the very knowledgeable to assess effect or likely effect; it also avoids using those credited with habitual caution or exceptional carelessness; it also avoids considering the assumptions of persons which are extreme or fanciful". The construct allows for a range of reasonable reactions to the conduct by the ordinary and reasonable member (or members) of the class. [footnotes omitted] 404 Conduct which merely causes confusion or uncertainty in the sense that members of the public might have cause to wonder whether the two products might have come from the same source is not misleading and deceptive conduct. The question is whether a consumer is likely to be misled or deceived. 405 There must be a logical causal connection between the conduct and alleged error. However, not every case involving a logical connection between conduct and alleged error will result in the conduct being regarded as misleading or deceptive for the purposes of the ACL. Even if, strictly speaking, a causal connection exists between conduct and error, where the error is based upon an erroneous assumption derived from, but not logically justified by, the conduct, the conduct will not ordinarily be treated as misleading or deceptive. 406 In [NAME_13] it was observed at [105]: Nevertheless, in an assessment of the reactions or likely reactions of the "ordinary" or "reasonable" members of the class of prospective purchasers of a mass-marketed product for general use, such as athletic sportswear or perfumery products, the court may well decline to regard as controlling the application of s 52 those assumptions by persons whose reactions are extreme or fanciful. For example, the evidence of one witness in the present case, a pharmacist, was that he assumed that "Australian brand name laws would have restricted anybody else from putting the [NAME_301] name on a product other than that endorsed by the [[NAME_301] sportswear company]". Further, the assumption made by this witness extended to the marketing of pet food and toilet cleaner. Such assumptions were not only erroneous but extreme and fanciful. They would not be attributed to the "ordinary" or "reasonable" members of the classes of prospective purchasers of pet food and toilet cleaners. The initial question which must be determined is whether the misconceptions, or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers. 407 Let me linger on [NAME_13] for the moment and the debate concerning the "not insignificant number" formulation. Let me also set out my starting point in Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd (2016) 118 IPR 239 (at [270]): [I]n determining whether a contravention of s 18 has occurred, the focus of the inquiry is on whether a not insignificant number within the class have been misled or deceived or are likely to have been misled or deceived by the respondent's conduct. There has been some debate about the meaning of "a not insignificant number". The [NAME_13] formulation looks at the issue in a normative sense. The reactions of the hypothetical individual within the class are considered. The hypothetical individual is a reasonable or ordinary member of the class. Does satisfying the [NAME_13] formulation satisfy the "not insignificant number" requirement? I am inclined to the view that if, applying the [NAME_13] test, reasonable members of the class would be likely to be misled, then such a finding carries with it that a significant proportion of the class would be likely to be misled. But if I am wrong and that a finding of a "not insignificant number" of members of the class being likely to be misled is an additional requirement that needs to be satisfied, then I would make that finding in the present case. For a discussion of these issues, see Greenwood J's analysis in [NAME_302] v [COMPANY_303] (ACN [PHONE]) (2011) 280 ALR 639; 92 IPR 222; [2011] FCAFC 98 at [206]–[210] and National Exchange Pty Ltd v Australian Securities and Investments Commission (2004) 61 IPR 420; 49 ACSR 369; [2004] FCAFC 90 at [70] and [71] per Jacobson and Bennett JJ. 408 [NAME_304], [NAME_305] JJ in their dicta in Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2020) 381 ALR 507 at [23] and [24] criticised the "not insignificant number" formulation including my own use thereof, whether as an alternative or an addition. They said that such a test is "at best, superfluous to the principles stated by the High Court in [NAME_306] and [COMPANY_307]". And they said that such a test is "at worst, an erroneous gloss on the statutory provision". They concluded (at [24]): Consistently with our view that the "significant number" test is at best superfluous and at worst an erroneous and distracting gloss, we consider it appropriate to approach the ACCC's arguments on the basis of the principles stated by the High Court in [NAME_306] and [COMPANY_307] and to ignore the "significant number" test. Nevertheless, we note that our conclusion would not change even if we were to apply the "significant number" test. 409 But as they said, "[n]o substantive argument was directed to the correctness of that test by the ACCC and our decision in this appeal does not turn upon it" (at [23]). 410 How should one proceed in circumstances where there are at least three binding [ADDRESS] authorities prior to [NAME_308], and importantly after [NAME_13], that perhaps justify applying such a test? [ADDRESS] authority prior to [NAME_308] did not accept the suggestion that [NAME_13] displaced such a test. Three examples will suffice. 411 In National Exchange Pty Ltd v Australian Securities and Investments Commission (2004) 49 ACSR 369, Jacobson and Bennett JJ said (at [67] to [71]): [NAME_309] submitted that the primary judge erred in failing to consider whether a "significant proportion" of shareholders would have been likely to have been misled. He relied on the use of those words by Wilcox J in 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1988) 79 ALR 299 ([NAME_311]) at 302. [NAME_309] also pointed to a possible inconsistency between the remarks of Deane and Fitzgerald JJ in [NAME_312] of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 (Taco Bell) and the test of the ordinary or reasonable shareholder stated by the High Court in [[NAME_13]]. In a well-known passage in Taco Bell at 202, their Honours referred to the need to consider the question of whether conduct is misleading by reference to all those who come within the class including the astute and the gullible. In [[NAME_13]] at [102] and [103] their Honours referred to the attribution of characteristics to the ordinary or reasonable members of the class and to the need to isolate the hypothetical member of the class who has those characteristics. The attribution is to be objective in order to allow for the wide range of persons who would, in fact, make up the class. It is also to allow for unreasonable reactions of members at either end of the spectrum which makes up the class. We see no difference between this approach and that which was contemplated by Deane and Fitzgerald JJ in Taco Bell. Indeed, the same view seems to have been taken by Gibbs CJ in Puxu at CLR 199; ALR 6 as follows: Although it is true, as has often been said, that ordinarily a class of consumers may include the inexperienced as well as the experienced, and the gullible as well as the astute, the section must in my opinion by regarded as contemplating the effect of the conduct on reasonable members of the class. Nor in our opinion is there any distinction between the words used by Wilcox J and the approach stated by the High Court in [[NAME_13]]. In determining the effect of conduct on the reasonable members of the class, it is necessary for the court to consider objectively, as a question of fact, whether those persons have been, or would be likely to be, misled. A finding that reasonable members of the class would be likely to be misled carries with it the determination that a significant proportion of shareholders would be misled. In any event, [NAME_311] was a decision of a [ADDRESS]. Pincus J observed (at 309) that it was not sufficient that "some readers" were affected. [NAME_313] (in dissent, but not as to the test) referred (at 314–15) to the need to prove that a substantial proportion of persons was misled, in contrast to a need to establish that almost all purchasers were of a particular view. [NAME_313] also referred (at 315) to "the usual manner in which ordinary people behave".

Accordingly, it is apparent that the test stated in [NAME_311] is not inconsistent with [[NAME_13]]. We disagree with a suggestion to the contrary by Finkelstein J in Domain Names at [25]–[26]. 412 Further, Dowsett J said (at [23]): I consider that this approach misconceives the respective effects of [NAME_311]. In my view, the relevant passages in both cases merely express, in different forms, the test propound by the High Court in [[NAME_13]]. The way in which such a test is propounded in a particular case may, to some extent, reflect the way in which the applicant has sought to satisfy it. An applicant may seek to prove misleading effect by showing that many representees were misled. To discharge the relevant onus, it may well be necessary to show that a significant proportion was misled. On the other hand, there will be cases, such as the present case, where there is little, or perhaps no evidence that any person was actually misled. Where a regulatory authority seeks to prevent conduct in breach of a provision such as s 52 of the TP Act or s 1041H(1) of the Act, this will often be the case. Such an applicant will rely upon the terms of the representation and the circumstances in which it was, or is to be made, looking to the notional representative class member as the basis for assessing the likely effect of the conduct in question. To speak of a reasonable member of a class necessarily implies that one is speaking of a significant proportion of that class. It is impossible to postulate a situation in which the reasonable member of a class is not representative of such a proportion. Thus the approach adopted by Wilcox J in [NAME_311] is simply an alternative way of expressing the test now clearly prescribed in [[NAME_13]]. 413 Now three points can be made. First, there was non-acceptance of the trial judge's doubts. Second, what is controlling is what Jacobson and Bennett JJ said. Third, the relevant formulation concerning "significant proportion of that class" was not seen as inconsistent with or superfluous to High Court authority such as [NAME_13]. And interestingly, but admittedly fleetingly, [NAME_13] refers to 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1988) 79 ALR 299 in footnote 145, which references [NAME_313] in [NAME_311] at 324 to 325 (324 incorporates by reference aspects of 314 and 315), without any comment let alone criticism of [NAME_311]. 414 Further, in [NAME_16]/S v DKSH Australia Pty Ltd (2011) 280 ALR 639, Greenwood J, with whom Tracey J agreed, said (at [206]): Some debate has arisen in the authorities about whether the test adopted in [NAME_13] by the High Court is inconsistent with the notion that s 52 looks in a normative sense to whether a not insignificant number of persons have been misled or are likely to be misled by the impugned conduct. In [NAME_13], as already indicated, the High Court observed that s 52 must be regarded as contemplating the effect of the impugned conduct on reasonable members of the class of prospective buyers and the question is answered by considering the reactions of the hypothetical individual within the class excluding assumptions which might be regarded as extreme or fanciful. The hypothetical individual is a reasonable or ordinary member of the class and once the responses of the notional hypothetical individual have been determined, they are determined for the class, that is, the whole class. Therefore, the [NAME_13] question might be (in the context of conduct said to involve representations to a section of the public at large such as prospective retail buyers of a product sold by a respondent rival trader) whether the class, as a class, has been misled or deceived or is likely to be misled or deceived by the conduct rather than whether a not insignificant number of persons in the class, in fact or by inference, have been misled or are likely to be misled. The reference to a "not insignificant number of persons" in the formulation of the test in [ADDRESS] authorities of this Court, is taken to be a reference to a not insignificant number of reasonable or ordinary persons in the class. If a not insignificant number of such persons would be misled or deceived by the impugned conduct, s 52 is contravened. That may be a test that asks a different question from whether the class as a class is misled by reference to the hypothetical notional reasonable member of the class. 415 Greenwood J (at [207]) then set out some of the passages of the [ADDRESS] in [NAME_315] of Jacobson and Bennett JJ that I have set out, and then a passage from Dowsett J. It would seem that he also considered what was said by Jacobson and Bennett JJ to be controlling. Then he said at (at [209]): In the absence of a decision of the High Court expressly concluding that the proper approach to the construction of s 52 does not involve normative considerations of whether a not insignificant number of persons within the group would be misled by the impugned conduct, it seems to me appropriate to apply the test of whether a not insignificant number of persons within the relevant section of the public would be misled or be likely to be misled by reason of the impugned conduct. 416 Further, in Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 171 FCR 579, both Tamberlin J (at [46] and [47]) and [NAME_316] (at [66] to [72]) applied the "not insignificant number" or "significant number" test. 417 As far as I am aware, until the dicta in [NAME_308] there has been no [ADDRESS] authority or High Court authority which casts doubt upon the authority of what was said by Jacobson and Bennett JJ in [NAME_315], Greenwood J (supported by Tracey J) in [NAME_17] and [NAME_316] JJ in [NAME_317]. Now in [NAME_308] it was said that such cases "did not resolve the question whether it was a different and additional test to the principles stated by the High Court" (at [23(d)]). That is true. But what such cases do resolve is, first, that it is not a test which is inconsistent with or superfluous to the principles stated in [NAME_13] for that matter, second, that to apply it is not to put an inappropriate gloss on the statutory provisions and, third, that such a test is not a symptom of tort law infection. 418 My reading of [ADDRESS] authority prior to [NAME_308] is that the "not insignificant number" test is not being used to rewrite or gloss the words "likely to mislead or deceive". Rather, it is a formulation of the application of the statutory words. So, taking such words, which are of broad amplitude and enshrine the normative standard to be applied, the cases that I have referred to, which include [NAME_13] itself, have been all about how such statutory words are to be applied and established in different types of circumstances. So in their application, different formulations have been used, the satisfaction of which has been found to have met the statutory requirement of "likely to mislead or deceive". The question then is whether the [NAME_13] formulation is the only application test that should be used where conduct is directed towards the public or a class thereof rather than identified individuals. In other words, is it both a necessary and sufficient test in that context? Or is it a necessary application test but not sufficient, say, in passing off scenario cases? I do not consider, with respect to [NAME_308], that [NAME_13] defined away the second possibility. 419 Let me say something more general about the "not insignificant number" formulation in the context of passing off cases, which is my context and was not the context of [NAME_308]. And recall that one is looking at characterising conduct as "likely to mislead or deceive". One is not looking at causation. And one is not looking at the actual reactions of consumers or others to that conduct. 420 Now although this formulation's genesis was in cases discussing the tort of passing off, judges applying it in the old s 52 context were not making the mistake of applying common law tort concepts to the statutory provision. Rather, they were seeking to solve the problem of applying very broad statutory language "likely to mislead or deceive" to a context which was not straight forward. What do I mean? 421 In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 380 and 381, French J explained: On the Trade Practices Act claim, his Honour adopted what may be in some circumstances a different test for the extent of [NAME_318]'s product reputation necessary to show misleading or deceptive conduct on the part of [NAME_319]. [NAME_318] could show on the balance of probabilities that "a not insignificant number" of persons knew of the [NAME_318] product, then it should be entitled to succeed. His Honour said: "If the number of persons with the necessary knowledge is insignificant, then a fortiori the conduct complained of will not be able to be characterised as conduct that is misleading or deceptive. Once it passes, however, the threshold of insignificance, then there is much to be said for the view that the conduct in question has become misleading." But accepting the possibility that the threshold of requisite reputation under the Act is lower than that required to support a claim in passing off, he did not think that [NAME_318] had satisfied the onus of showing that the number of persons for whom the name "Healthy Choice" and the package design would have the necessary secondary meaning was other than insignificant. The nature of the question to be asked about [NAME_319]'s conduct for the purposes of s 52, Trade Practices Act is to be borne in mind in considering the correctness of the approach taken by his Honour. The question is one of characterisation of the conduct, not of the reactions of consumers or others to that conduct. So where some express representation is made and that representation is demonstrably false, it is not usually necessary to go beyond that finding in order to conclude that it is misleading or deceptive. The case of an obvious puff might be taken as an exception. Where conduct depends upon context or surrounding circumstances to convey a particular meaning, then those factors must be taken into account but only as a way of characterising the conduct. Where the name and get-up of a product are in issue, the question for the purposes of s 52 is whether they are misleading or deceptive in the circumstances. The fact that some members of the relevant public may be aware of a similar product in another country does not affect the characterisation of the conduct if that number is small. The word "insignificant" was used by his Honour to identify the threshold of public awareness below which such conduct is not misleading for the purposes of the section. That word is normative but not for that reason inappropriate. Attention must be paid to the policy of the relevant provision which, as the heading to Pt V and many of its provisions indicate, is one of consumer protection. If the similarity complained of is commercially irrelevant having regard to the number of people who know of it, then it can be concluded that the use of the name and/or get-up complained of is not misleading or deceptive. That is essentially the kind of evaluation which underpinned his Honour's finding in this case and on the primary facts that he found I am not persuaded that he erred in his approach. 422 What this is making plain is that in a passing off context, for the purposes of applying the statutory language one has to focus on the conduct considered in the circumstances. But in that context, the circumstances relevant to whether conduct is misleading or deceptive or likely to mislead or deceive include the level of public awareness of the applicant's product or service or indeed awareness of the applicant itself. That really explains the "not insignificant number" genesis. What is the level of public awareness of such matters? If you do not have such a threshold, the reasoning seems to proceed on the basis that you have not shown such an awareness. But if you have such a threshold, it is easy to see why one could conclude that in such a context, the rival's conduct considered in such circumstances is likely to mislead or deceive. [NAME_311] and [NAME_318] so proceed and were not seen as inconsistent with Puxu. [NAME_17] and [NAME_317] also so proceed and were not seen as inconsistent with either Puxu or [NAME_13]. 423 Let me put the point another way to explain what I mean. 424 Say the class is all members of the public in Victoria. Now consider two scenarios. 425 First, take a simple case being a newspaper advertisement representing internet speeds of a service provider. Say it is said that the advertisement is misleading or deceptive or likely to mislead or deceive by reason of an exaggeration or a half-truth. The [NAME_13] formulation could rightly be seen as necessary and sufficient, albeit that the High Court has frequently said in many fields that its own words are no substitute for the statutory language and should not be the subject of overly fine interpretation as if they were inscribed in some inflexible Talmudic text. But the [NAME_13] formulation works well in such a context by considering a hypothetical reasonable member of that class. That is all you need. The "not insignificant number" formulation is superfluous. Indeed, satisfying the former would satisfy the latter. So far so good. 426 Second, now take the passing off scenario type case, but keep the class fixed as all members of the public in Victoria. Say the applicant and the respondent are rival boutique beer producers. Say the get-up for their products are similar and that they seek to target the workers, which I might add can be found at all echelons of [COMPANY_320]. Say that the respondent starts up its marketing and promotion throughout Victoria. And also assume, as one of the relevant circumstances, that the applicant's product and get-up is not well-known. So, the question is whether the promotion by the respondent using similar get-up is misleading or deceptive or likely to mislead or deceive. [NAME_308] would suggest that you only need apply the [NAME_13] formulation, namely, whether a reasonable or ordinary member of the public in Victoria would be likely to be misled or deceived by the respondent's product and get-up. But that would be a hollow enquiry. And it would be divorced from part of the circumstances. What you also need to factor in is the public's awareness of the applicant's product and get-up; if you like, its reputation. That is part of the relevant circumstances within which to assess whether the respondent's conduct falls foul of the statutory standard. Hence the injection of the "not insignificant number" formulation. It is to recognise that conduct is not likely to be misleading or deceptive unless a "not insignificant number" knows of the applicant's reputation and therefore are likely to be misled or deceived by the respondent's use of its rival's product and get-up. So the potential effect of the respondent's rival get-up on such a "not insignificant number" can be seen as driving the analysis. Put another way, if only an insignificant number of the public in Victoria know of the applicant's product and get-up, the use by the respondent of rival get-up is unlikely to mislead or deceive members of the public in Victoria into thinking that the respondent's product is associated with the applicant's product. In other words, where reputation as a question of fact, rather than as a legal element for the statutory claim, is in issue, it is not sufficient to simply ask without more, in my example, what would be the likely reaction of a reasonable or ordinary member of the public when exposed to the respondent's conduct, being the promotion of its product and get-up. You would have left out an important part of the equation. And the obvious response would be: it all depends upon what they knew or likely knew of the applicant's product or get-up. That is why the proxy "not insignificant number" formulation is being used. It can be seen as creating a practical floor to address the factually relevant circumstances of reputation. Admittedly though, it is not conceptually pure. But with respect to [NAME_308], it is nevertheless a useful proxy according to prior and binding [ADDRESS] authority. 427 It is neither heretical nor revolutionary to state the self-evident. A failure of an applicant to establish a relevant reputation in Australia for the purposes of the law of passing off may cause it to fail also in its case alleging a breach of the ACL as there is not a sufficiently substantial number of people in Australia aware of the applicant's product. In the absence of sufficient consumer knowledge or familiarity with the applicant's product at the relevant date, there can be no confusion or likely confusion. 428 So, in Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at 387 [NAME_313] noted that "reputation and likelihood of deception are distinct issues, the first preceding the second, so that if the plaintiff fails on reputation that is the end of the case"; he was commenting on a case concerning both passing off and also a contravention of s 52 of the then Trade Practices Act 1974 (Cth); see also Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 75 IPR 505 at [74] per [NAME_321] J. 429 Well then if this is all good, why was this not discussed in [NAME_13]? After all, it was a passing off case. That is a good question to ask oneself. And with respect, the answer to it is provided by the specific question that the High Court was addressing, which took the reputation of the suing party, [NAME_301], as a given in that case; of course, it is not a given in the case before me. 430 The [NAME_13] formulation appears in the section headed "Causation and erroneous assumption". It was said (at [101]): The other classes of case which their Honours had in mind include those of actual or threatened conduct involving representations to the public at large or to a section thereof, such as prospective retail purchasers of a product the respondent markets or proposes to market. Here, the issue with respect to the sufficiency of the nexus between the conduct or the apprehended conduct and the misleading or deception or likely misleading or deception of prospective purchasers is to be approached at a level of abstraction not present where the case is one involving an express untrue representation allegedly made only to identified individuals. 431 And it was said (at [103]): Where the persons in question are not identified individuals to whom a particular misrepresentation has been made or from whom a relevant fact, circumstance or proposal was withheld, but are members of a class to which the conduct in question was directed in a general sense, it is necessary to isolate by some criterion a representative member of that class. The inquiry thus is to be made with respect to this hypothetical individual why the misconception complained has arisen or is likely to arise if no injunctive relief be granted. In formulating this inquiry, the courts have had regard to what appears to be the outer limits of the purpose and scope of the statutory norm of conduct fixed by s 52. Thus, in Puxu, Gibbs CJ observed that conduct not intended to mislead or deceive and which was engaged in "honestly and reasonably" might nevertheless contravene s 52. Having regard to these "heavy burdens" which the statute created, his Honour concluded that, where the effect of conduct on a class of persons, such as consumers, was in issue, the section must be "regarded as contemplating the effect of the conduct on reasonable members of the class". 432 But in this context, [NAME_301] was suing [NAME_13] and the case proceeded on the basis that [NAME_301] (the applicant) had a world wide reputation including in Australia and that [NAME_13] (the rival) had no reputation in Australia. As Sheppard J said at first instance (Nike International Ltd v Campomar Sociedad Limitada (1996) 35 IPR 385 at 408): The documents to which I have referred and other documents in the case, particularly the letters written in 1985 and 1986, reinforce me in my conclusion that [NAME_322] had for a number of years perceived the advantage his organisation could expect to gain by the worldwide marketing of its products under the [NAME_301] name in conjunction with, or with the approval of, [NAME_324] or one or more of its associated companies. [NAME_13] had no reputation in Australia when its marketing activities were commenced in 1993. [COMPANY_325] had a worldwide reputation. By 1993 its products had become very well known in Australia. 433 So in the High Court, [NAME_301]'s reputation was a given. The level of public awareness of [NAME_301] and its products was notorious. Clearly a "not insignificant number" of members of the public were well aware of [NAME_301] and its products' reputation. So, on this aspect the only issue that the Court had to address was the erroneous assumption question. And it was for that purpose that a criterion for the hypothetical member of the relevant class was being stipulated, which then backed out certain erroneous assumptions. That was what the Court was addressing at [105] when it said: Nevertheless, in an assessment of the reactions or likely reactions of the "ordinary" or "reasonable" members of the class of prospective purchasers of a mass-marketed product for general use, such as athletic sportswear or perfumery products, the court may well decline to regard as controlling the application of s 52 those assumptions by persons whose reactions are extreme or fanciful. For example, the evidence of one witness in the present case, a pharmacist, was that he assumed that "Australian brand name laws would have restricted anybody else from putting the [NAME_301] name on a product other than that endorsed by the [[NAME_301] sportswear company]". Further, the assumption made by this witness extended to the marketing of pet food and toilet cleaner. Such assumptions were not only erroneous but extreme and fanciful. They would not be attributed to the "ordinary" or "reasonable" members of the classes of prospective purchasers of pet food and toilet cleaners. The initial question which must be determined is whether the misconceptions, or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers. 434 But where the applicant's reputation in Australia is in issue and is one of the circumstances to consider, it seems to me that the "not insignificant number" formulation may have relevance because it is a proxy relevant to the applicant's reputation, which is part of the matrix on which you are posing the question of whether the respondent's conduct is likely to mislead or deceive. You are not posing that question devoid from the applicant's reputation. But as I say, in [NAME_13] that was a given. And there was no need to consider cases such as [NAME_318] and [NAME_311] on such matters. 435 And as so understood, one is not applying tort concepts to the statutory framework. Rather one is identifying the setting of the circumstances. [NAME_318], [NAME_311], [NAME_17] and [NAME_317] make this plain. Contrastingly, neither [NAME_308] nor Trivago NV v Australian Competition and Consumer Commission (2020) 384 ALR 496 involved the passing off scenario. 436 Now if only the dicta in [NAME_308] was to be matched against [NAME_315] (albeit not a passing off case), [NAME_17] and [NAME_317], which post-date [NAME_13], I would not have the option not to apply the earlier [ADDRESS] authority. But post [NAME_308], [NAME_326] would now seem to have enshrined the dicta from [NAME_308] in a manner that now binds me, although I am a little unclear as to what debate took place in [NAME_326] (see at [192], [193] and [206] per [NAME_321], [NAME_327] JJ). But now given [NAME_326], I do not think that I am entitled to draw any comfort from the even more recent [COMPANY_14] v [NAME_15], Inc [2020] FCAFC 235 at [119] per Nicholas, Yates and Burley JJ where the matter was not debated. For completeness, I also note that the discussion in RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10 at [168] per Nicholas, Burley and Hespe JJ was not dealing with a classic passing off type scenario. Further, PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at [193] et seq per Jagot, Nicholas and Burley JJ does not relevantly add to the debate. 437 In all the circumstances, I will treat [NAME_326] as binding and superseding earlier [ADDRESS] authority. So, in terms of the claims concerning ss 18 and 29 of the ACL, I will apply [NAME_13] without any "not insignificant number" test. But if I were permitted to and did apply a "not insignificant number" test, whether as an alternative or an addition, then the result would not change. As I have indicated elsewhere, [NAME_41] succeeds on the ACL claims save and except for the proposed re-branded [NAME_51]. 438 Let me make one other point. [ADDRESS] in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397 observed at [99]: Whether or not there is a requirement for some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Part V of the Trade Practices Act. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of the knowledge of consumers in Australia of the claimant's product. 439 Let me conclude this section by saying something about the tort of passing off. For present purposes I repeat what I said in [NAME_328] at [278] to [282]. 440 In summary, the elements of this tort are the following concerning products. 441 First, there has to be the existence of a reputation, at the time of the respondent's impugned conduct, in the mind of the relevant purchasing class for the applicant's products or a reputation in the get-up of the applicant's products such that the get-up is recognised by relevant purchasers as distinctive of the applicant's products. 442 Second, there has to be a misrepresentation by the respondent, whether intentional or inadvertent, that its products are those of the applicant or affiliated with the applicant or a misrepresentation by the respondent's use of the same or a similar get-up to indicate that the respondent's products are the same as the applicant's products or come from or are associated with the applicant. 443 Third, the applicant must have suffered or be likely to suffer damage flowing from the erroneous belief engendered by the misrepresentation. 444 Let me now return to the topic of reputation in the context of the tort of passing off and add a little more. 445 On the question of reputation [NAME_313] said in [NAME_318] at 372: In my view, where the plaintiff, by reason of business operations conducted outside the jurisdiction, has acquired a reputation with a substantial number of persons who would be potential customers were it to commence business within the jurisdiction, the plaintiff has in a real sense a commercial position or advantage which it may turn to account. Its position may be compared with that of a plaintiff who formerly conducted business within the jurisdiction and has retained a reputation among its erstwhile customers, and with that of a plaintiff with a reputation which arises from its trade in the jurisdiction, but extends to goods or services which are not presently marketed by him. If the defendant moves to annex to itself the benefit of such a reputation by attracting custom under false colours, then the defendant diminishes the business advantage of the plaintiff flowing to it from the existence of his reputation. This is so whether the plaintiff is a party which may expand into a new field of business or resume a former business conducted in the jurisdiction, or a party which may enter the jurisdiction to establish a business for the first time. The immediacy and intensity of the intention of the plaintiff to commence or resume business is, in my view, a question going not so much to the invasion of the plaintiff's rights as to the imminence of a threat sufficient to justify an injunction. 446 Further, the required reputation is something more than a reputation among a small number of persons; there must be "a substantial number of persons who are aware of the plaintiff's product" ([NAME_318] at 346 per Lockhart J). 447 The relevant reputation must be determined having regard to all the relevant circumstances, including the history of the applicant's product, the circumstances in which the respondent's get-up was adopted, and the circumstances prevailing in the market at the relevant time. And the relevant circumstances include the nature and extent of the relevant consumers' awareness of the features of the applicant's packaging in which a reputation is said to inhere. 448 In a get-up case an applicant must establish that it has acquired the relevant reputation in the name or get-up such that the name or get-up has become distinctive of the applicant's business or products (see Burley J in Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd (2017) 349 ALR 598 at [22]). An applicant must show a reputation attached to goods in the mind of the purchasing public by association with the identifying get up under which his particular goods are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the applicant's goods. 449 Further, the relevant date for assessing whether the applicant has established the necessary reputation is the date on which the respondent's impugned conduct commenced (Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 at 861 per [NAME_329]; Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 at 302 per [NAME_313]; [NAME_328] at [275]). 450 In the present case, for the pre-existing and previously offered [NAME_51] the respondents say that the relevant date is about 2013, being the time at which the first vintage of the [NAME_51] was sold in Australia. For the proposed [NAME_42] product, the respondents say that the relevant date is the current date, or alternatively the date on which the proposed [NAME_42] product bearing the new label will be released to the market being mid to late 2024.

Relevant classes of consumers 451 I have touched earlier on [NAME_93]'s evidence concerning this. Contrastingly, [NAME_41] submits that there are two relevant and potentially overlapping classes of consumers. 452 The first relevant class is Australian wine consumers who have an interest in premium wines, particularly from France (the consumer class). The second relevant class are members of the fine wine trade (the trade class). I should say now that generally speaking I would adopt [NAME_41]'s position. Let me take the consumer class first. 453 It is said that the consumer class is an appropriate class because the [NAME_67], the [NAME_77] and the [NAME_51] are all premium wines sold a high price points and, in the case of the [NAME_67], a markedly higher price point. It is said that it is not appropriate to limit the relevant class of consumers to those individuals who have bought or may buy one or other (or both) of the wines in question. I agree. 454 First, the [NAME_67] and the [NAME_77] are scarce and expensive, yet acclaimed in the case of the [NAME_67]. And many Australian consumers who are interested in premium wines may have heard of the [NAME_66] and its wines by having read or been told about them, rather than by having bought or tasted them. They could be considered to be aspirational products. 455 Second, the respondents conduct in relation to the [NAME_51] cannot be said to be limited to a specific subset of wine consumers. Whilst the respondents might target aspects of their marketing to particular mailing lists or wine clubs, they have also promoted the wine through high street retailers in a manner that exposes the product to wine consumers who frequent such stores. The evidence also shows that the [NAME_67] is available for sale through the same retail channels as the [NAME_51]. 456 Now the respondents assert that the likely consumers of, on the one hand, cheaper Tasmanian pinot noir and, on the other hand, a premium [NAME_7] wine are likely to fall into different groups that are unlikely to cross-over. The respondents also assert that even if a consumer existed whose interests straddled these two types of premium wines, that consumer would be too knowledgeable to fall within the relevant class of consumers. But in my view the buying and drinking habits of Australian premium wine consumers are not so rigidly divided, either in respect to the prices of the wines they consume or the varieties of wine that they buy. 457 Now as I have already indicated, [NAME_93] categorised Australian wine consumers into distinct groups. These groups include consumers who purchase wines under $25 and may buy a $50 bottle of wine for a gift or special occasion but not very often, consumers who purchase wines at a price point of $70 to $100, including consumers who would purchase a $75 to $95 bottle of Tasmanian pinot noir, and consumers who purchase a $500 bottle of wine, including Australian consumers of [NAME_7] wines. And the effect of [NAME_93]'s evidence appears to be that he regards the prospect of any cross-over between those groups of consumers as minimal. 458 [NAME_102] disagreed with [NAME_93]'s views of the purchasing habits and interests of Australian wine consumers and wine professionals. He regarded those views as too narrow and he did not consider that many Australian wine consumers or wine professionals typically have such specific and focused habits. He said that Australia has a very accessible wine market for consumers. In his experience, many Australians purchase and drink wine as a regular part of their lives, and enjoy learning about different wines and wine producers from Australia and overseas through a range of publications, educational events, travel and the hospitality industry. In his experience, Australian consumers who are interested in good wine are more engaged, curious and eclectic in their purchasing and drinking habits. In his experience, many such consumers would buy and drink a wide range of Australian wines and imported wines. Having said that, he agreed that there may be some Australian wine consumers who have very specific interests and may only drink a very narrow range of wines such as only French wines. 459 I tend to agree with [NAME_102]'s position, although whether any of this ultimately matters is another question. The fact that different types of consumers exist highlights the difficulty with the groupings proposed by [NAME_93]. An Australian consumer who would buy a $500 bottle of [NAME_7] may also buy a premium Tasmanian pinot noir. However, such a consumer is in the minority of Australian wine consumers, given the costs of the wines in question. 460 [NAME_114] agreed that although Australian consumers with an interest in fine wines may have some of the characteristics listed by [NAME_93], this characterisation overlooks those people who simply enjoy tasting and learning about wines and wine producers. What these people can afford to do and purchase in connection with their interest is linked to their specific socioeconomic circumstances and what they consider to be good value for money. So, many consumers with an interest in fine wine attend wine tasting events, subscribe to newsletters, read wine columns and books, but may not be able to purchase or experience the ultra-fine wines or visit the wine estates first hand. 461 I agree with [NAME_114] that the Australian fine wine market and the behaviour of the consumers who engage with it is complex and cannot be as easily categorised in the way that is described by [NAME_93]. If a consumer has an interest in fine wines, and has the opportunity and financial means to do so, they are likely to purchase and taste different styles of wines from different regions. Moreover, even if there are individuals who are interested in and collect a very specific style of fine wine such as [NAME_7] or Burgundy wines, it does not follow that these consumers would not buy a cheaper Tasmanian pinot noir if given the opportunity to do so. 462 Generally speaking I am inclined to accept [NAME_41]'s approach in identifying the consumer class, which is a broad church. 463 I also accept [NAME_41]'s position that the trade class is an appropriate class. As the evidence in this case shows, [NAME_56] have made a number of representations in the course of trade or commerce directed at the fine wine trade. The fine wine trade is also an appropriate class of consumers, although I accept that the boundaries and content of what is meant by the wine trade or fine wine trade lack precision. 464 Now assuming [NAME_41]'s class divisions, how would a relevant class member react? The asserted reputation must be assessed against the objectively attributed characteristics and knowledge of the ordinary and reasonable member of the relevant class. And as I have indicated, the question is the reputation amongst two classes of persons being Australian wine consumers who have an interest in premium wines, particularly from France, and members of the fine wine trade. Now I would note here that [NAME_41] has not adduced any evidence from any member of the first class, but such evidence is not necessary for it to make out its case. 465 But let me take the purchaser or likely purchaser of the [NAME_51] who must surely be part of the focus for analysis. 466 The [NAME_51] is a single-vineyard pinot noir from Tasmania. As I have indicated, Tasmania accounts for a very small percentage of Australia's total wine production, and further, Tasmanian pinot noir accounts for a miniscule percentage of Australian wine production by volume. 467 Now consumers of Tasmanian pinot noir in the $75 to $95 range are likely to be committed to pinot noir and in particular Tasmanian pinot noir. And within that class [NAME_41] may need to establish that, in addition to being in the market to purchase a $75 to $95 bottle of Tasmanian pinot noir, the ordinary and reasonable member may also have to have the following characteristics. First, they may also have to be in the market for or have an interest in or knowledge of bottles of wine in the $500 plus range. Second, they may also have to be in the market for or have an interest in or knowledge of international wines, and specifically French wines from the [NAME_7] region, including $500 plus bottles of [NAME_7] wine, including wines from the [NAME_57] sub-region. Third, they would also have to have an interest in or knowledge of the [NAME_98], and specifically recall the [NAME_98] and draw a connection between the name [NAME_3] or the [NAME_41] features and the [NAME_98]. 468 [NAME_41] asserts that Australian consumers' engagement with and therefore knowledge of the [NAME_67] can be split into three concentric circles, being those fortunate few who can actually buy it, more broadly those who can taste it, and even more broadly a greater number of people who have an interest in fine wines and read the literature and know about the [NAME_67], who might aspire to purchase it. 469 Now clearly only a fortunate few can afford to purchase the [NAME_67] in Australia. 470 Further, as to those who can taste the [NAME_67], the evidence about this group seems to be confined to members of the trade with an interest in French wines whose job it is to taste and judge these wines. 471 Further, the ordinary and reasonable member of the consumer class interested in fine wines is unlikely to have any knowledge of or interest in [NAME_41] or its wines. 472 First, the [NAME_67] is variously described as "an ultra-fine wine", "a rare fine wine" and a wine which is "rare and can be expensive to purchase". There are few consumers with the disposable income and the interest to be spending $500 (or more) on a bottle of wine. Those that do are likely to take substantial care in their purchasing decisions. It cannot be assumed that a consumer with the means to spend $95 on a bottle of wine will also be in the market for a rare fine wine costing more than five times as much. 473 Second, the products have different target consumers. The people interested in buying [NAME_7] are often different. A purchaser of Tasmanian pinot noir who is also interested in French wines would be more likely to be interested in wines from the Burgundy region, given their similar wine styles. Contrastingly, rather than having an interest in pinot noir or Tasmanian pinot noir, consumers of [NAME_41]'s wines are likely to be committed to [NAME_7] wines, and perhaps Australian wines of that style and grape type. In any event they would represent a small percentage of wine buyers in Australia. 474 Third, even if it is accepted that there is a general awareness amongst Australian wine consumers that [NAME_7] is a wine-producing region of France, the consumer would also need to have knowledge of wines from [NAME_57], a smaller and lesser-known sub-region within [NAME_7], including in particular the [NAME_98], in addition to having an interest in or being in the market for a single-vineyard Tasmanian pinot noir. 475 Now I accept that there may be consumers who are both prepared to spend around $95 on a bottle of Tasmanian pinot noir and who are also prepared to spend more than $500 on a red wine from [NAME_7] and, moreover, from the [NAME_57] sub-region of [NAME_7], and therefore have an interest in or knowledge of both parties' products. But they would be few in number. Further, any such person would necessarily be very knowledgeable. But he may not be representative of the ordinary and reasonable consumer. In Comité Interprofessionnel du Vin de Champagne v Powell (2015) 330 ALR 67 I said at [171]: [W]here the issue is the effect of conduct on a class of persons such as consumers (rather than identified individuals to whom a particular misrepresentation has been made or particular conduct directed), the effect of the conduct or representations upon ordinary or reasonable members of that class must be considered ([NAME_12], Limitada v Nike International Ltd (2000) 202 CLR 45 at [102] and [103]). This hypothetical construct avoids using the very ignorant or the very knowledgeable to assess effect or likely effect; it also avoids using those credited with habitual caution or exceptional carelessness; it also avoids considering the assumptions of persons which are extreme or fanciful. Further, the objective characteristics that one attributes to ordinary or reasonable members of the relevant class may differ depending on the medium for communication being considered. There is scope for diversity of response both within the same medium and across different media. 476 Before drawing the threads together, let me say something further concerning reputation and the relevant time frame to be considered, which the parties agreed to be 2013 concerning the ACL claims and the tort of passing off.

What was the reputation at the relevant date? 477 [NAME_41]'s claimed reputation must be assessed as at 2013, when the respondents' impugned conduct commenced. But when the evidence of sales and promotion of [NAME_41] in Australia prior to 2013 is considered, I agree with the respondents that two general conclusions can be drawn. First, the overall sales and promotion were minor. Second, little of that promotion involved any depiction or exposure of the pink cap or other visual features of the [NAME_41] product's overall presentation. 478 Now as the respondents have pointed out, no witness has perceived a connection between any of the earlier [NAME_42] products and [NAME_41] without reference to the pink cap and other visual features of the [NAME_41] product. And [NAME_41]'s case is that it did not claim that its reputation accrues in relation to the name [NAME_3] alone. Its case has been that the name [NAME_3] keeps company with the rest of the words and the rest of the markings on the label. [NAME_41]'s case is that there was some form of copying of the overall presentation. 479 Now the evidence of promotion of [NAME_41] by [NAME_118] prior to 2013 is limited to the [NAME_118] 2009 price list, which included 7 pages listing 284 red [NAME_7] wines, spanning 112 different brands, including five vintages of [NAME_3] de May and only two vintages of [NAME_41], located on one page which alone lists 52 different wines under the single heading [NAME_57], without any visual depictions of any products. 480 Further, there is no evidence indicating any volume of sales of the [NAME_67] prior to 2013 by [NAME_189]. The most that [NAME_139] can say is that the store did secure [NAME_98] from time to time. [NAME_139] could only adduce one list for [NAME_189] en primeur campaigns, from June 2011. There is no evidence as to how many people or to whom that list was distributed, and in any event [NAME_41] appeared at the very end of a four page list including 75 different brands of [NAME_7] wines, again without any visual product depictions. 481 Further, [NAME_191] did not commence offering the [NAME_67] for sale in Australia until 2012, which it did by way of a 10 page list in which [NAME_41] appeared obscurely on one page as the 42nd out of 52 [NAME_7] red wines, again with no visual depictions of any products. [NAME_2] de May appeared earlier in that list. There is no evidence as to how many people or to whom that list was distributed. [NAME_110]'s sales reports record sales of only two bottles of the [NAME_67] before 2013. 482 Further, there is no evidence to establish the quantum of [NAME_67] sold by [COMPANY_128] before 2013. 483 Further, [NAME_114] only gave vague evidence that the [NAME_67] was sold at auction by [NAME_330] in 1986, and by [NAME_331] in 1989, with no detail at all as to any volume of sale or how the [NAME_41] product was promoted. 484 Further, the main evidence of any tasting events in Australia prior to 2013 are two dinners being at [NAME_134] in Melbourne in February 2011, and at Golden Century restaurant in Sydney in September 2011. There is no evidence as to how many people attended either event. The invitation to the event at [NAME_134] noted that [NAME_98] were rarely available in Australia. [NAME_41] relies on [NAME_106]'s evidence of attending a tasting course from 3 to 7 November 2008, in which [NAME_41] was one of over 200 of wines tasted. [NAME_41] also relies on [NAME_110]'s vague evidence about tasting events held by [NAME_332] in 2011. 485 Further, over the period 1999 to 2013, there is evidence of a total of only 22 media articles, from anywhere in the world, referring to [NAME_41]. Of those articles, only one, the English magazine [NAME_204], included an image of the [NAME_67], and even in that case it was limited to the label and did not include the pink cap. There is no evidence as to the circulation or readership of that magazine in Australia prior to 2013, or of the US magazine [NAME_201] on which [NAME_41] also relies. To the extent the wine industry specialists speculate about where such readership might exist, it would consist of very engaged or deeply committed consumers, which are a small number of people, not the ordinary reasonable consumer of the [NAME_51]. Nor is there evidence that any such readers would have noticed, let alone remembered, a reference to [NAME_41] or its wines out of the hundreds of other articles appearing in these publications over that period. 486 Further, between 2009 and 2014, [NAME_106] wrote around 250 weekly columns and 60 feature articles for The [NAME_193], only two of which mentioned [NAME_41] at all. Neither of those two articles depicted [NAME_41]'s product label or pink cap. Similarly, in that period [NAME_102] wrote hundreds of columns and articles in Australian media about wine, none of which mentioned [NAME_41] at all other than a single report in [NAME_193] in September 2011 regarding the event at Golden Century, with reference to "[NAME_1]" but no depiction of the product. 487 Further, the only other reference to [NAME_41] in Australian media is one article in Australian Gourmet Traveller in 2009 which included references to the 2008 [NAME_2] de May de [NAME_3] and the 2008 [NAME_67] as part of a review of 10 French wines, again without depicting any images of those products. 488 Further, there is an article published in 2001, which was 12 years before the relevant date, by a UK-based online wine publication [NAME_202], which has a limited audience, without any depiction of the product. 489 Further, there are social media posts on 9 December 2009 by the UK writer [NAME_260], on 20 October 2010 by the UK writer [NAME_186], and on 2 August 2011 by the [NAME_7] based writer [NAME_333], all of which refer only to [NAME_41], and do not depict any product. 490 Further, there is a collection of books written about wine, all published outside Australia, without any evidence as to anyone in Australia reading any of them other than the experts [NAME_102], [NAME_106] and [NAME_114]. 491 Now when one analyses the relevant class of consumers postulated by [NAME_41], described by reference to three concentric circles that I have referred to earlier, the following may be noted. 492 As to the first concentric circle being the fortunate few who can actually buy [NAME_41]'s wines, that was few people before 2013. 493 As to the second concentric circle being those who can taste it, this was limited to the unknown number of people who attended two tasting events at [NAME_134] in 2011, plus immediate friends and family with whom the people within the first circle might share any [NAME_98] actually purchased. 494 As to the third concentric circle being those who have an interest in fine wines and read the literature and know [NAME_41], this is necessarily limited by the small amount of literature referring to [NAME_41] or its wines prior to the relevant date. 495 So, a problem for [NAME_41] is that on the evidence of promotion before 2013, not many of those people outside the first two circles would have been exposed to the pink cap and other visual features of the overall presentation of the [NAME_41] product which played a significant role in leading [NAME_102], [NAME_106], [NAME_110] and [NAME_114] to perceive a connection with [NAME_41]. 496 [NAME_41]'s case rests on the overall presentation of its product, but there is thin evidence to find that ordinary consumers and members of the trade in 2013 had knowledge of that overall presentation. 497 Now the respondents have pointed out that the evidence in the present case bears some resemblance to the evidence of reputation in CA Henschke & Co v Rosemount Estates Pty Ltd (1999) 47 IPR 63. [NAME_89] claimed that Rosemount had infringed its Hill of Grace trade mark and engaged in misleading and deceptive conduct by use of the words Hill of Gold in relation to its wine of the same name. [NAME_89] relied upon evidence from wine writers, commentators, restaurateurs and retailers in seeking to establish the existence of a reputation of the Hill of Grace wine amongst Australian wine consumers, described as an "icon wine" second only in reputation to Penfolds in Australia. Finn J admitted evidence from the so-called wine experts in which they expressed an opinion as to the reputation of the wine amongst the relevant segment of the wine consuming public, but attributed little if any weight to that evidence, which his Honour characterised as mere assertion, both as to reputation and as to the possibility that consumers would see an association between the wines. In relation to documents, Finn J commented that whilst there was a voluminous number of newspaper articles put into evidence, it was necessary to bear in mind the respective periods of time over which they appeared to put that volume in perspective. He noted that there was a very real question whether such consumers would have read and/or have taken any interest in, and/or have any memory of, the newspaper articles and of the reputation for the wine they communicated. His Honour held that, as reputation could not be established, neither could trade mark infringement or misleading or deceptive conduct. This reasoning was approved on appeal (CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42). But in my view there is little to be gleaned from factual scenarios dealt with by judges in other cases. 498 But on balance and not without considerable hesitation, in my view [NAME_41] has made out its reputation case as at 2013. 499 Although the evidence is thin, it seems to me that on the assumption that members of the fine wine trade are part of the relevant class, there was sufficient reputation in 2013 based upon the various types of evidence that I have discussed in some detail. 500 Let me turn to another topic.

Was there copying with an intention to mislead? 501 In [NAME_335] at [103], the [ADDRESS] noted that proof of "a subjective intention to mislead (in the sense that the respondents' get-up is adopted for the purpose of appropriating part of the trade or reputation of a rival) may be some evidence that in a borderline case the respondents' conduct is likely to mislead or deceive." It was emphasised that there is a distinction between an intention to copy and an intention to deceive. And the former does not establish the latter. 502 I am not able to conclude that [NAME_49] adopted a course intent on capitalising on the reputation and goodwill associated with [NAME_41], let alone intended to mislead. 503 [NAME_49] explained to [NAME_217] that whilst he wanted the [NAME_336] to be inspired by [NAME_41], he wanted it to remain within the legal boundaries and he did not want anyone to be confused. I accept this. 504 [NAME_49]'s creative intention was to pay homage to family heritage, not to copy an existing brand, and he did not intend to create a label which represented an association between the [NAME_51] and [NAME_41] or its wines. To [NAME_49], the name [NAME_42] is more than a brand. To him, this wine is a very personal project. He gave evidence that he was not interested in the commercial success of [NAME_42]. And he was not interested in potential clients thinking that [NAME_42] had an association or an agreement with or an approval of [NAME_41]. I accept his evidence as to this. 505 [NAME_49] accepted that he was the person in control of the ultimate label produced by the design process that he and [NAME_217] engaged in. He also accepted that he wanted the label of [NAME_42] to be inspired by the [NAME_67]. He explained that it was important to him that the [NAME_51] featured a pink screwcap. He said that he wanted not just a pink cap. He wanted the pink cap that he had always known. 506 I accept that whilst the label of the [NAME_51] was inspired by [NAME_41], [NAME_49] did not intend to mislead consumers into thinking there was a commercial association or connection between the parties' respective products or businesses. He explained that in his mind, the words "[NAME_42]" refer to the sense of a site in Tasmania, inspired by [NAME_3] in [NAME_57]. This is consistent with general references to new world wines, in contrast to old world wines, which can connote differences in, for example, geography, wine makers and wine making. [NAME_49] did not create the label for the [NAME_51] as an implement for the purpose of misleading potential customers. His motivations for creating the [NAME_51] were quite personal. I accept his evidence as to this.

Interim conclusion 507 Clearly, on the evidence [NAME_41] has not established any relevant reputation as at 1999 concerning the two classes identified by [NAME_41]. The 1999 date will become relevant when I deal with the cancellation question concerning the relevant [NAME_4] trade mark registration which I will discuss later. 508 But as to the reputation question as at 2013, on the evidence but just barely, [NAME_41] has established the requisite reputation in the two classes identified but only because of the composite of the [NAME_41] features including the distinctive pink cap. So, it has made out its case concerning breaches of ss 18 and 29 of the ACL and the principal liability questions on passing off concerning the sale and marketing of the pre-existing and past [NAME_51] but putting damages to one side. 509 On the evidence, members of the fine wine trade being part of the relevant consumer class are likely to have been misled or deceived into thinking that the [NAME_51] had some association with [NAME_41]. 510 I have discussed the evidence of [NAME_41]'s witnesses including their approach and perceptions when first presented with [NAME_42]. Their evidence in my view travels a little beyond having just a "cause to wonder". And there is little doubt as to the distinctive features of the [NAME_67] including the peculiar and distinctive pink colour that in important respects were mirrored in the pre-existing and past [NAME_51] as I have discussed. 511 But I should say now that such findings only assist [NAME_41] concerning its case as to the sale and marketing of the pre-existing and past [NAME_51]. Such findings do not assist it concerning the proposed re-branded [NAME_51] that is yet to be released. The proposed new labelling is sufficiently distinctive. I will return to this shortly.

Is there damage? 512 [NAME_41] claims that it has suffered, and will continue to suffer, loss and damage as a result of the respondents' conduct. The nature of the loss and damage asserted by [NAME_41] is the diminution in the value of [NAME_41]'s goodwill or rights in the name "[NAME_3]", the name "[NAME_38]" and the [NAME_41] features. 513 But I agree with the respondents that there is no evidence that [NAME_41] has suffered any loss or damage at all, and there is similarly no basis to infer that it would. In my view, in a case such as this, damages for the purposes of liability cannot readily be inferred. This is not a case of product substitution, where it might be inferred that the respondent's product might be purchased by a consumer in the mistaken view that he or she is purchasing the applicant's product. This is similarly not a case where an applicant makes money from a business which is based upon sales of character merchandise to the public. 514 [NAME_41] also asserts a diminution of goodwill arising from the sale of the [NAME_51]. But in my view there is no basis to suggest that anyone would think less of [NAME_41] or its products as a result of the promotion and sale of the [NAME_51]. 515 Now as at the time of trial, 1,755 bottles of [NAME_51] in the existing packaging up to the 2021 vintage remained in stock. This old stock has been withdrawn from sale. It has been withdrawn from the website and all promotional activity relating to that stock has ceased. The first and third respondents have agreed not to sell any of the old stock. 516 I note that the following undertaking has been proffered to the Court, which, subject to further discussions with counsel, I am prepared to accept: UNDERTAKING Definitions: [NAME_337] means the website owned and operated by [COMPANY_338] [NAME_339] and as at the date of this undertaking published online at www.winecompanion.com.au [NAME_51] means the product presented, promoted, offered for sale and sold by the First and Third Respondents under or by reference to the combination of features defined as the [NAME_42] in paragraph 17 of the Further Amended Statement of Claim dated 18 November 2022 (FASOC), being the 2011, 2016, 2017, 2018, 2019 and 2021 vintages of [NAME_42]. [NAME_51] means the product which the First and Third Respondents intend to present, promote, offer for sale and sell under or by reference to the name "[NAME_42]" but without the other [NAME_42], as depicted in paragraph 20B of the FASOC. Undertaking:

1. Without admission, the First and Third Respondents undertake to the Court that: (a) from 14 August 2023, they will not advertise, offer for sale or sell any of the stock on hand of the [NAME_51]; (b) they will forthwith take all reasonable steps to procure the publisher of the [NAME_337] to remove all images of the [NAME_51] from the [NAME_337], including those published at the following URLs: i. www.winecompanion.com.au/wineries/tasmania/tasmania/pipers-brook­vineyard/wines/red/pinot-noir/new-[NAME_3]-pinot-noir/2019 ii. www.winecompanion.com.au/wineries/tasmania/tasmania/pipers-brook­vineyard/wines/red/pinot-noir/new-[NAME_3]-pinot-noir/2018 iii. www.winecompanion.com.au/wineries/tasmania/tasmania/pipers-brook­vineyard/wines/red/pinot-noir/new-[NAME_3]-pinot-noir/2017 iv. www.winecompanion.com.au/wineries/tasmania/tasmania/pipers-brook­vineyard/wines/red/pinot-noir/new-[NAME_3]-pinot-noir/2017/1 v. www.winecompanion.com.au/wineries/tasmania/tasmania/pipers-brook­vineyard/wines/red/pinot-noir/new-[NAME_3]-pinot-noir/2016 Other matters:

2. Without admission, the First and Third Respondents note that, if so required by the Court, they will abide by any requirement to apply a disclaimer to the label of the [NAME_51].

3. The First and Third Respondents confirm that, as at 14 August 2023, the stock on hand referred to in paragraph 1 above comprises 1755 bottles. 517 The undertaking has been proffered in circumstances where there have been very few sales of the [NAME_51], the [NAME_51] has not made any profits, there is no evidence of any damage to [NAME_41], and the commercial value of the remaining old stock is insignificant. In my view the undertaking is adequate to deal with the question of stock and any known on-line material. [NAME_41] has expressed concern about "old" images remaining on the internet. This concern was over-stated but in any event is met by the undertaking or any necessary modification.

The proposed [NAME_42] product 518 [NAME_41] says that the proposed re-brand will leverage and build upon the existing knowledge and reputation in the Australian marketplace of the [NAME_51]. But as the respondents correctly point out, whilst [NAME_44] and [NAME_4] have their own reputations as established and well-known producers of wine in the Australian wine industry, the [NAME_51] does not. The product has been the subject of limited and targeted marketing activity. It has never been subject to a proper launch. 519 The [NAME_51] has been promoted through the [NAME_44] newsletter with 910 subscribers as at 6 September 2022, the [NAME_340] with 11 members as at September 2022, the [NAME_44] [NAME_203], and the [NAME_44] social media accounts (Facebook and Instagram) which do not have significant followings. 520 The [NAME_51] has been promoted and sold in limited quantities primarily directly to consumers through the [NAME_4] website and the [NAME_44] [NAME_203], to various outlets for retail sales, via the [NAME_341] loyalty program, to the [COMPANY_342] and to certain restaurants in Tasmania through [NAME_50] distribution company. 521 Now although [NAME_102], [NAME_106] and [NAME_93] had reviewed the [NAME_51], this is not surprising given the volume of wines they are required to taste and review each year. 522 [NAME_114] had also encountered the wine in 2014, although significantly for present purposes he had forgotten about it by the time he gave evidence; he over-looked a tweet he had made on 15 May 2014. Further, that tweet was a little cryptic. 523 Further, none of [NAME_139], [NAME_141] or [NAME_142] had seen or heard of the [NAME_51] prior to this proceeding. Further, whilst [NAME_110] encountered the product in 2018, this was only by chance, and there is no evidence it was ever part of his portfolio of products. 524 In any event, the 2022 vintage of the [NAME_51], which bears the new packaging, is still some time away from sale. That stock, being 2,249 standard bottles and 20 magnums, has been bottled, but the products are currently unlabelled. And they all have a bronze cap on them. Whilst under normal circumstances the 2022 vintage would have been on the market by mid-2024, their labelling awaits the outcome of this proceeding. Those products will not reach the market until after this judgment. 525 The effect of this is that the respondents will not offer for sale or sell the [NAME_51] bearing the previous packaging at the same time as the [NAME_51] bearing the new packaging. Moreover, by the time the [NAME_51] bearing the new packaging comes onto the market in its limited quantities, there will have been a substantial period since the respondents offered for sale or sold any [NAME_51]. Further, the withdrawal from sale of the old stock further reduces any theoretical likelihood of consumers drawing any association between the new packaging and the old packaging, let alone between the new packaging and the old packaging and therefore [NAME_41] or its wines. 526 Moreover, the period in which there is no [NAME_42] available for sale means that the memories of the few consumers who have encountered the product in the original packaging will necessarily fade before the 2022 vintage is released. And even if a theoretical consumer or member of the wine trade did draw an association between the new packaging and the old packaging, that person would notice the significant differences between the labels. 527 Now the respondents correctly point out in my view that [NAME_41]'s case against the proposed [NAME_42] product depends on ordinary reasonable consumers who have an interest in premium wines, particularly from France or members of the fine wine trade who may encounter the proposed [NAME_42] product, at some point in the future having the following characteristics. 528 First, they have actually encountered an earlier vintage of the [NAME_51], despite it having been sold in limited numbers, through limited retail outlets, with no launch and limited promotion, and being no longer on sale. 529 Second, when they encountered such an earlier vintage of the [NAME_51], having had sufficient actual prior knowledge of not just the name "[NAME_38]" but also the pink cap and other product presentation of the [NAME_67] so as to be likely to have perceived a connection between the earlier [NAME_42] product and [NAME_41] or its products. 530 Third, they sufficiently remembered the first and second matters, including a detailed recollection of the visual features of both the earlier [NAME_51] and the [NAME_67], so as then to be likely to perceive two matters. 531 The first matter is a connection between the proposed [NAME_42] product and that earlier [NAME_42] product, despite the stark differences between the proposed label and the earlier [NAME_244], and the prominence given to "Tasmania", "Pinot Noir" and the [NAME_267] colonial era landscape. 532 The second matter is a further connection between that earlier [NAME_42] product and [NAME_41], despite the absence of any reference to [NAME_41] and despite the clear identification of the product's source as [NAME_44], one of the oldest and most important wineries in Tasmania and a respected producer of high quality wine in Australia. 533 But I agree with the respondents that this is all unlikely. Of the witnesses who had any knowledge of [NAME_41], most of them had never seen or heard of the [NAME_42] product after it went on sale in 2013 and before providing their evidence in this proceeding. This was the case with [NAME_139], [NAME_141] and [NAME_142]. Further, [NAME_106] had not seen or heard of the [NAME_42] product for seven years until it was sent to her to review in January 2020. Further, as to [NAME_102], despite his considerable knowledge of and involvement in Tasmanian pinot noir, he did not encounter the [NAME_42] pinot noir product for over five and a half years until it was sent to him to review in September 2018. Further, [NAME_93] did not encounter the [NAME_42] product until he reviewed it in late August 2018, shortly before [NAME_102]'s review was published. And he gave the [NAME_42] product sufficiently little attention when he reviewed it that he mis-spelt its name as "New Certain". It never occurred to him that the [NAME_51] had any association with [NAME_41], indeed he did not think of [NAME_41] at all. The word "[NAME_3]" meant "absolutely zero" to him. 534 [NAME_41] relies on the respondents' conduct in promoting the earlier [NAME_42] product. But such promotion was minor and had little actual effect in building a lasting recognition of the earlier [NAME_42] product amongst potential customers of the proposed [NAME_42] product, particularly the consumers who have an interest in premium wines, particularly from France and members of the fine wine trade identified by [NAME_41] as the relevant classes of consumers. 535 And even those people who actually encountered the earlier [NAME_42] product and perceived a connection with [NAME_41] are likely to have forgotten it. 536 [NAME_114] had a special interest in [NAME_41], having visited it 20 times since 2004, and had socialised with members of the [NAME_69] who told him they had cousins in Tasmania. Yet he forgot having seen the [NAME_42] product in May 2014, despite taking the time to post a photograph of it on his Twitter account. He said that "it didn't really have much of an impact on me in the long term … I must have seen it in 2014, but I didn't think very much about it afterwards". 537 Now to the extent [NAME_41] relies upon the evidence from [NAME_102], [NAME_106] and [NAME_114] as to their reactions when encountering the proposed [NAME_42] product, each of them purports to draw a link between the proposed [NAME_42] product and the previous branding of the [NAME_51], about which they have already given evidence. But there is no evidence as to the reaction to the proposed [NAME_42] product by a person who has not been compromised by exposure to the previous branding in the context of this case. Further, that evidence is not representative of the reaction of an ordinary and reasonable consumer when encountering the [NAME_51] as depicted in the proposed [NAME_42] product for the first time. There is no evidence from an ordinary and reasonable consumer in relation to the proposed [NAME_42] product. 538 [NAME_110] is the only witness who encountered the [NAME_42] product in an actual retail environment, which did not occur until 29 November 2021, almost eight years after it first went on sale. It was a chance encounter with no meaningful commercial context. He was not seeking to buy or sell the product. He only noticed it and drew a connection with [NAME_41] because of its pink cap, which he had known about from his many encounters with the [NAME_67] from an early age. From a distance, [NAME_110] was able to distinguish the particular [NAME_41] pink from other pink caps, including from the "copper pink" cap of [NAME_270], another wine with which [NAME_110] was familiar. [NAME_110] was intimately familiar with the [NAME_67], having consumed it many times before, having visited [NAME_41] a dozen times, and having sold a small number of bottles of [NAME_67] since he opened his premium [NAME_7] wine business, [NAME_191], in 2012. His evidence hardly carries the day for [NAME_41]. 539 Further, each of the witnesses who drew a connection between the earlier [NAME_42] product and [NAME_41] did so by reference to the combination of features including the pink cap and other visual features of the product. It was the combination of features that led to that connection being drawn. But those visual features of the overall presentation of the [NAME_41] product would not be apparent to persons who were merely exposed to the name "[NAME_38]" in media articles, or on lists of [NAME_7] wines, such as those distributed by [NAME_118] or [NAME_189]. Nor would those visual features be apparent to readers of restaurant wine lists. But in any event these features are to significantly change with the proposed re-branding. 540 Further, [NAME_41]'s case in relation to the proposed [NAME_42] product also depends in part upon [NAME_41] establishing some sort of reputation in [NAME_3]. But it cannot do this as I have already indicated. First, the word [NAME_3] has been for many years used in connection with the sale of wine by a number of winemakers who are independent of [NAME_41]. Second, as I have said, knowledgeable consumers would be familiar with the practice of French wines including common elements or words in names. Such consumers would not assume common ownership or a commercial connection between products merely as a result of the existence of a common word. 541 Further, whilst [NAME_44] and [NAME_4] are both well-known wine producers, there is little evidence to suggest any established reputation in the [NAME_51] itself. It is pushing the envelope to suggest that existing sales or marketing of the [NAME_51] would provide a basis to find that sales of the [NAME_51] with the redesigned label would be or be likely to be misleading or deceptive, in that it would leverage and build upon the existing knowledge and reputation in the Australian marketplace of the [NAME_51]. 542 Finally, if there was any substance to [NAME_41]'s concerns regarding the proposed re-branding, it can also be adequately dealt with by the inclusion of an appropriate disclaimer on the label as contemplated by the proposed undertaking. I will hear further from counsel on this question if necessary. 543 In summary, [NAME_41]'s claims concerning the proposed [NAME_42] product are not made out.

[NAME_41]'s claim against [NAME_49] – accessorial liability 544 [NAME_41] alleges that, as the controlling mind of [NAME_56], [NAME_49] has accessorial liability for their conduct in relation to the [NAME_51]. As to the applicable principles, they are well established. In [NAME_328], I said (at [333] to [340]): Let me first deal with what is required to establish that an individual director is a joint tortfeasor with the company. [NAME_343] v [COMPANY_344] (ACN 100 887 474) (VID 167 of 2009) (2010) 185 FCR 449; 268 ALR 613; 87 IPR 1; [2010] FCAFC 55 ([NAME_343]) elaborates on a number of different approaches to establishing such joint liability. They are variously that the alleged joint tortfeasor must have: (a) done something more than acting as a director and been involved in invading the applicant's rights (at [83] and [84] per [NAME_346]); (b) had a close personal involvement in the infringing acts of the company (at [291] per Besanko J); or (c) made the company's tort his own (at [405] per Jessup J). The variation between these particular formulations is of little moment in the present case although I note that there are conceptual differences but generally broad consistency (see [COMPANY_348] (ACN [PHONE]) v [COMPANY_349] (ACN 128 263 561) (No 3) (2010) 275 ALR 258; 88 IPR 242; [2010] FCA 1162 at [108]–[118] per Nicholas J). In Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 at [94]–[105], Kenny J accepted (albeit in the context of a summary judgment application) that there was a strong prima facie case that two of the directors of the respondent who were "in effective control of the business of [the company]" and who were "intimately involved in the company's activities" were liable as joint tortfeasors and as persons involved in contraventions of applicable consumer law provisions. Relevantly, Kenny J found that the directors knew that the company's use of the applicant's trade mark on business cards and letterhead was, or was likely to be, infringing. Her Honour concluded that there was a strong case that the directors were personally involved in the trade mark infringements, passing off and statutory breaches of the applicable consumer law provisions by the company and used the company for their own wrongdoing. Similarly, in Taleb v [COMPANY_350] (ACN [PHONE]) (2011) 286 ALR 309; 94 IPR 459; [2011] FCAFC 168 at [18]–[23] per Finn and Bennett JJ, the [ADDRESS] upheld the conclusion of the primary judge that the appellant was liable as a joint tortfeasor for the trade mark infringement and passing off of the company. The appellant had established the business and directly controlled it until his son took over its day-to-day management. A further example of the manner in which these principles have been applied can be found in [NAME_351]. Besanko J found that there was sufficient evidence to find both [NAME_352] (who set up the companies) and [NAME_353] (who oversaw the impugned website), both directors of the relevant company, to be joint tortfeasors. His Honour summarised the various formulations in [NAME_343] at [142]–[148] and considered the liability of [NAME_352] to follow from his involvement in the company to be "quite plain", his Honour apparently applying his preferred formulation of "a close personal involvement". In relation to accessorial liability concerning the contraventions of the Australian Consumer Law, the following may be noted. The grant of an injunction may include any person who is involved in a contravention. The Australian Consumer Law defines a person involved in a contravention in the following terms (s 2(1)): involved: a person is involved, in a contravention of a provision of this Schedule or in conduct that constitutes such a contravention, if the person: (a) has aided, abetted, counselled or procured the contravention; or (b) has induced, whether by threats or promises or otherwise, the contravention; or (c) has been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention; or (d) has conspired with others to effect the contravention. Further, damages can be awarded against persons involved in a contravention. It is necessary to show inter alia that the person had knowledge of the essential matters that make up the contravention: Yorke v Lucas (1985) 158 CLR 661 at 670; 61 ALR 307 at 312 per Mason ACJ, Wilson, Deane and Dawson JJ. Knowledge of each of the essential elements of the contravention on the part of the individual must be established: [NAME_343] at [334]–[337] per Besanko J. 545 The evidence shows that [NAME_49] has been instrumental in, and controlled, the development and promotion of the [NAME_51]. While that wine is produced and marketed through [NAME_56], it is a very personal project for [NAME_49]. His deep involvement in that conduct is sufficient to found the accessorial liability alleged by [NAME_41]. 546 [NAME_49] readily accepted that the [NAME_51] was a very personal project for him, and he also accepted that he was closely involved in, and controlled, the design of the [NAME_244]. 547 [NAME_146]'s evidence was consistent with that of [NAME_49]. As [NAME_146] made clear, the [NAME_51] is a very personal project driven by [NAME_49]. [NAME_146] himself was strongly opposed to the labelling of the [NAME_51] that has been used to date. In his oral evidence, he said he "hated" it, did not think it was "appropriate" for the Australian market, and thought it was "crap". [NAME_146] asserted that he had previously told [NAME_49] this most emphatically. 548 As [NAME_146] explained under cross-examination: MR [NAME_23]: Yes? [NAME_146]: The normal process for a label is that you put the label out to the trade. You get a consensus of opinion: is this a good label? Is it – will it sell? Does it appeal to a consumer? This label did not go through that process. [NAME_49] had no interest in getting feedback on the market appeal of that label. And my comment was I believed it was not commercial. I did not think it would sell. I think I've been proven correct. I didn't like it. 549 [NAME_146] elaborated on this further in response to a question from me: HIS HONOUR: So you're allowing [NAME_49] as the CEO to engage in his own private passion - - -? [NAME_146]: Well - - - Q: - - - in a manner which is not really commercially consistent with - - -? A: No, no. Sorry, that's not what I meant to say. Q: Right? A: There's two aspects. The first of all is the research project. Q: Yes? A: That's very important. Q: Sure? A: Fully support. Q: Yes, but you could have the research project without this particular product? A: Yes. Now, you have a wine that spins off it from the top. That wine is never going to be commercial. 550 It seems to me clear that [NAME_49] stepped outside his ordinary role as a director of [NAME_254] in a manner that makes him personally involved in the promotion of the [NAME_51]. 551 In summary, if and to the extent that [NAME_56] have contravened ss 18 and 29 of the ACL and/or committed the tort of passing off, then in my view [NAME_49] has been knowingly concerned in such conduct and also should be treated as a joint tortfeasor.

Cancellation of [NAME_50] registered trade mark for [NAME_42] 552 [NAME_4] is the registered owner of Australian Trade Mark Registration No. 815277 for [NAME_42] in class 33 in respect of "alcoholic beverages including wines" ([NAME_42]). The [NAME_42] has a priority date of, and is registered with effect from, 25 November 1999 (the priority date). 553 [NAME_41] seeks cancellation of the [NAME_42] pursuant to s 88(2)(c) of the Trade Marks Act 1995 (Cth) on the basis that as at 11 May 2021, being the date this proceeding was commenced, the use of the [NAME_42] was likely to deceive or cause confusion. 554 [NAME_41] also seeks cancellation of the [NAME_42] pursuant to s 88(2)(a) on the basis that as at the priority date the use of the [NAME_42] would have been contrary to law (s 42(b)), and the [NAME_42] was likely to deceive or cause confusion within the meaning of s 60 as it stood at the priority date. 555 Let me address some aspects of s 88(2)(c) first.

Cancellation under s 88(2)(c) 556 Under s 88(2)(c), a registered mark is liable to be cancelled, removed or amended if as at the date of the removal application it is likely to deceive or cause confusion. The focus in my context is on the question of confusion. 557 Now in this context, the test for confusion is not whether consumers may think that two marks in question are the same. Rather, it is sufficient that consumers will be caused to wonder whether the parties' goods or services might come from the same source or be connected in the course of trade. The threshold for confusion is relatively low. There is no requirement that it be more probable than not that the impugned mark will have this effect. All that is required is that there is a real and tangible danger of confusion or deception. 558 In Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited (1954) 91 CLR 592, Kitto J stated (at 595): It is not necessary … to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough – for there must be a real, tangible danger of its occurring … it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains reasonable doubt. … (footnotes omitted) 559 A more recent formulation of the principle was set out by French J in Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 (at [50](ii)) as follows: A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. 560 Now the notion of confusion incorporates contextual confusion, where consumers might think that the product bearing the impugned mark is a variant of or related to an existing brand. 561 Now if a case for cancellation or removal has been made out, the Court retains a discretion not to make an order cancelling or removing the mark. But if the evidence does not disclose a sufficient reason not to do so, cancellation or removal should follow. And it is for the registered owner to persuade the Court that there is a sufficient reason not to cancel or remove the mark. In Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514, Nicholas, Yates and Beach JJ said (at [146] and [158]): All of this indicates to us that the broad discretion conferred by the use of the word "may" in s 88(1) was not intended to be confined unless the power to cancel depends on the application of s 24 or s 25 (s 88(1)(a)) or on a finding that the trade mark is liable to deceive or confuse (s 88(1)(b) and (c)). In our view, unless s 89 is engaged, the discretion under s 88(1) is at large, constrained only by the general scope and objects of the Act. … Leaving aside situations in which s 89(1) of the Act applies, when deciding whether to exercise the discretion under s 88(1), the correct approach is to ask, as McLelland J did in [NAME_355], whether sufficient reason appears not to order the cancellation of a registered mark once the statutory discretion to make such an order has been enlivened. If the evidence does not disclose sufficient reason not to cancel the mark then it should be cancelled. In the ordinary course of events, it will be for the party that resists the cancellation of the registered mark to persuade the court that there is a sufficient reason not to order its cancellation.

Cancellation under s 88(2)(a) 562 Let me turn to s 88(2)(a) and first the hypothetical opposition concerning s 42(b). 563 Section 42(b) provides: An application for the registration of a trade mark must be rejected if: … (b) its use would be contrary to law. 564 [NAME_41] says that the use of the [NAME_42] would as at the priority date have been contrary to law because it would have contravened the legislative predecessors to ss 18 and 29(1)(g) and (h) of the ACL. [NAME_41] says that the evidence shows that [NAME_41] had the relevant reputation as at the priority date.

Accordingly, [NAME_41] says that the use of the [NAME_42] as at the priority date would have contravened such provisions. 565 Let me say something about the hypothetical opposition under s 60. 566 As at the priority date, s 60 in its then form provided: The registration of a trade mark in respect of particular goods or services may be opposed on the ground that: (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion. 567 The clear purpose of s 60 is to provide protection for prior well-known marks, whether registered or not. The reputation required for the purposes of s 60 must exist at the priority date of the opposed application. And more than minimal reputation is required. 568 [NAME_41] says that it had the requisite reputation at the priority date, being 25 November 1999, to found an opposition under this section. It says that the evidence shows that [NAME_41] had the requisite reputation as at the priority date and, indeed, long before that date. It says that its reputation subsisted in both the full name of the [NAME_38] wine estate and its main wine (the [NAME_67]) and the name [NAME_3]. It says that the [NAME_42] is substantially identical with the name [NAME_3]. It says that the [NAME_42] incorporates the name [NAME_3] and that the word New is descriptive and not distinctive. It says that [NAME_42] is deceptively similar to the name [NAME_38]. It says that [NAME_42] and the name [NAME_38] have a visual and aural similarity, and both end in the word [NAME_3]. It says that the word [NAME_3] is likely to be a memorable part of the name [NAME_38]. It says that the structure of the marks would suggest to Australians that there is a common source of trade. It says that the word [NAME_3] has no inherent meaning to Australians and would therefore cause Australians to consider these two marks to be related. Further, it says that the use of the [NAME_42] as at the priority date would have caused or would have been likely to cause confusion.

Analysis 569 Let me turn to the analysis and begin with s 88(2)(a). 570 [NAME_41]'s claims for cancellation under ss 88(2)(a), 42(b) and 60 must be determined as at the filing date of 25 November 1999. 571 Now each of those claims requires [NAME_41] to establish a sufficient reputation in Australia in [NAME_38], La Gravette de [NAME_3] and/or [NAME_3] such that the use of [NAME_42] at that time would be likely to confuse or mislead ordinary consumers or members of the trade. 572 But as I have already indicated, the evidence of promotion of the [NAME_98] prior to 1999 by Australian distributors is minimal. It is limited to the 1991 [NAME_137] Guide, which included 31 pages listing the names without any product depictions of 207 red [NAME_7] wines, including the names of [NAME_41]'s competitors [NAME_2] de [NAME_2]-Giraud and bare textual references to the name [NAME_38] on several pages. There is no evidence as to how many copies of this guide were published, or how or to whom it was distributed, let alone how many people read it. 573 [NAME_102] recalls selling a number of [NAME_7] red wines at [NAME_356] in Paddington during the 1980s, including [NAME_2] de May, but not [NAME_41]. 574 Moreover, the evidence establishes no more than that by November 1999, 147 bottles of the [NAME_67] had been sold by [NAME_118], and there is no evidence that [NAME_118] had substantially promoted the [NAME_67] in any substantial way. Further, by that time, save for generalised assertions, there is no evidence to establish the quantum of sales of [NAME_67] by [COMPANY_128] or [NAME_189]. Further, there is no evidence before me of the [NAME_77] being sold or promoted in Australia before 2011. 575 Further, to the extent that any ordinary consumers of wine in Australia read articles in specialist international publications like [NAME_201], there is only one brief article in evidence prior to 1999, which contained only a passing reference to [NAME_76] and the [NAME_58] and did not include any images of the [NAME_41] product. 576 I agree with the respondents that such evidence does not get anywhere close to establishing that [NAME_41] had any sufficient reputation of the type relied upon by [NAME_41], particularly when assessed against the target audience defined by the scope of the registration, which specifies all "alcoholic beverages including wines" across Australia, rather than any particular segment of that market. As the respondents rightly point out, the relevant comparison is between the prior mark as actually used and a notional normal and fair use of the mark sought to be registered. 577 In these circumstances, the claim for cancellation under ss 88(1) and 88(2)(a), when based upon s 42(b), must fail. 578 Further, [NAME_41]'s case under s 60 also does not succeed. 579 First, it did not have the requisite reputation as at November 1999 to establish any such ground of opposition, whether in relation to the name [NAME_38] or the name [NAME_3] alone. 580 Second, the comparison between [NAME_42] and [NAME_3] is irrelevant. [NAME_41] did not have and does not have any rights in the name [NAME_3] alone. 581 Third, on any view the names [NAME_42] and [NAME_38] are not deceptively similar. The existence of a common element, being the word [NAME_3], does not make them so. For the purposes of the assessment, it is the impression of the respective trade marks as a whole which must be considered. It is not appropriate to ignore the presence of other elements in the marks (PDP Capital at [104] per Jagot, Nicholas and Burley JJ). And the evidence does not support the proposition that consumers would refer to [NAME_41] or its products by the name [NAME_3] alone. 582 Fourth, in 2021, and I must say very belatedly if it thought that it had the requisite reputation in Australia in 1999, [NAME_41] obtained registration of [NAME_1] (Registered Australian trade mark no 2156243) on the basis that the Registrar of Trade Marks did not consider it deceptively similar to the prior registration of [NAME_42] so as to prevent registration under s 44. This conclusion incorporates or at least implies a finding that the two marks do not so nearly resemble each other so as to cause confusion. No party has asserted that the Registrar erred in that assessment. 583 Let me now turn to s 88(2)(c). 584 [NAME_41]'s claim under s 88(2)(c) seeks cancellation of the [NAME_42] on the basis that as at 11 May 2021 the use of the [NAME_42] was likely to deceive or cause confusion. 585 [NAME_41]'s claims under the ACL and passing off emphasised the resemblance in the get-up of the respective products and the respondents' promotional conduct and the effect of such conduct. But such matters of product get-up and promotional conduct are extraneous to and beyond the ambit of the registration of the plain words [NAME_42]. I agree with the respondents that they are irrelevant to the statutory inquiry required by s 88(2)(c). 586 The question posed by s88(2)(c) is whether by reason of the circumstances applying at the time when the application for rectification is filed, and regardless of whether those circumstances existed pre-registration, the use of the trade mark "is likely to deceive or cause confusion". The phrase "likely to deceive or cause confusion" reflects the language of deceptive similarity. The word "likely" means a real and tangible danger; a mere possibility of confusion is not enough. 587 Now the question posed by s 88(2)(c) is whether the use of the trade mark which is the subject of the registration is likely to deceive or cause confusion, that is, in the present case, the plain words [NAME_42]. 588 The question whether the use of a registered mark is likely to deceive or cause confusion is a question of fact, and must be considered in the context of any normal and fair use of the mark. And it is necessary to have regard to all legitimate uses to which the mark might be put by its owner. Regard is to be had to the use to which the trade mark owner could properly put the mark within the ambit of the registration. So, the question whether there is a likelihood of confusion is not answered by reference to the manner in which the trade mark owner has used its mark in the past. In [NAME_13] it was said (at [72]): Further, the phrase … "would be likely", involved a particular prospective inquiry. The question whether there was a likelihood of confusion was not to be answered by reference to the manner in which the applicant for registration had used its mark in the past. Rather, regard was to be had to the use to which, within the ambit of the registration, the applicant could properly put the mark if the application were to be granted. The onus to show that there was no such likelihood was to be discharged by the applicant in respect of all of the goods coming within the specification in the application, not only in respect of those goods on which the applicant proposed to use the mark immediately. Thus, if registration were sought in respect of particular goods and there would be a likelihood of deception if the mark were used upon such goods marketed as expensive products, it was no answer that the applicant proposed to use the mark only upon goods to be sold as inexpensively produced items. But that is not to give s 28(a) the secondary or continuing operation for which the respondents contended on these appeals. (footnotes omitted) 589 Moreover, the consideration of use of other features external to the registered trade mark and beyond the ambit of the registration, such as product get-up or promotional materials, is not the main question. 590 For this reason, I agree with the respondents that it is wrong for [NAME_41] to emphasise under s 88(2)(c) consideration of the pink cap or other visual features of the respondents' product or statements made in promotional communications. None of those matters are within the ambit of the registration of the plain words [NAME_42]. Further, normal use in this context means use for all goods covered by the trade mark registration, which in the present case extends to alcoholic beverages including wines across Australia. Normal use is not to be narrowed to any particular segment of that market. 591 Further, there are various other reasons why [NAME_41]'s claim under s 88(2)(c) fails, as the respondents correctly point out. 592 First, [NAME_41] explicitly eschews any reputation in the word [NAME_3] alone. 593 Second, to the extent that any narrow class of consumers who have an interest in fine wines, particularly from France may have been exposed to the name [NAME_38] by way of restaurant wine lists and retailers' price lists, many of those lists include [NAME_3] De [NAME_211], which are both also from [NAME_57] and compete with [NAME_41]. Any assumption that all such uses of [NAME_3] refer to [NAME_41] would be erroneous. The respondents' use of [NAME_42] would not be the cause of any incorrect perception based on that erroneous assumption. 594 Third, as I have already indicated, the Registrar of Trade Marks in 2021 accepted and registered [NAME_41]'s trade mark [NAME_1] on the basis that it is not likely to be confused with, and thus not deceptively similar to, the prior registration of [NAME_42]. Whilst each of the names includes the word [NAME_3], each of the marks must be considered as a whole. [NAME_38] is significantly longer than [NAME_42]. Further, by the inclusion of the words [NAME_40], the name [NAME_38] is obviously French. There is no such connotation in the name [NAME_42], which has no obvious meaning in English or French, and is more likely to be mis-spelled "Certain" than assumed to be of French origin. 595 Fourth, each of [NAME_41]'s witnesses who perceived a connection between an earlier [NAME_42] product and [NAME_41] did so by reference to the combination of features which included the pink cap and other visual features of the respective products. But none of them perceived any real connection merely by reference to the plain words [NAME_42] and [NAME_38]. 596 Fifth, [NAME_41] has made some play of the fact that "Vieux" means "old" in French. But this assumes that relevant Australian consumers would understand the meaning of that word, and that that understanding would form part of the hypothetical consumer's imperfect recollection of the name [NAME_38] when encountering a product bearing the registered mark [NAME_42]. But there is insufficient evidence to establish a likelihood of any such understanding amongst consumers, particularly where the notional use extends to wine generally and other alcoholic beverages and is not limited to consumers with particular interest in or knowledge of French wines. 597 In summary, the s 88(2)(c) ground is not made out.

Discretion 598 But even if any ground of cancellation was made out, I would exercise my discretion under s 88(1) not to cancel or remove the [NAME_42], having regard to the following matters. 599 First, the [NAME_42] has been used in connection with the promotion and sale of the [NAME_51] since at least 2013. 600 Second, [NAME_41] failed to oppose the registration of the [NAME_42], and did not prior to the commencement of this proceeding make any attempt to cancel or remove the mark from the Register of Trade Marks. 601 Third, there has been a substantial delay by [NAME_41] in taking any steps to seek to restrain the use of the [NAME_42] or to apply to have the mark cancelled or removed. [NAME_41] has been on notice of the existence of the [NAME_42] since at least 5 April 2014, when it was referred to by [NAME_49] in correspondence with [NAME_76]. [NAME_49]'s email to [NAME_76] on 11 April 2014 did not contain any statement that he would stop using the name [NAME_42], and in fact stated that he would keep [NAME_76] informed of "toute initiative d'habillage future de la marque". [NAME_49] clarified in re-examination that "l'habillage" is a verb that means "getting dressed"; that is, [NAME_49] drew a distinction between the name of [NAME_42] ("la marque") and the visual features of the product ("l'habillage"). While there was a period during which no [NAME_51] was sold by the respondents, [NAME_76] was aware that the product had re-entered the market by no later than mid-July 2018. Taken at best, from at least that time until the commencement of this proceeding, a period of approximately 3 years, [NAME_41] sat on its hands.

Conclusion 602 For the foregoing reasons I have concluded as follows. 603 First, [NAME_41] has substantially succeeded on its case under ss 18 and 29 of the ACL concerning the past and present conduct up to the point of trial of the respondents concerning the [NAME_51]. But I am not convinced that it has suffered any damage or is entitled to any injunction, particularly given the undertaking proffered by the respondents which I will discuss further with counsel. It is also follows that if no damage has been sustained or is likely, then the tort of passing off has not been established. 604 Second, to the extent that there has been infringing conduct, [NAME_49] is liable as an accessory. 605 Third, [NAME_41] has not made out its case concerning the proposed re-branded [NAME_51]. Whether or not an express disclaimer is to be added to the labelling is something that I will discuss further with counsel. 606 Fourth, [NAME_41] has not succeeded on its case to cancel [NAME_50] trade mark registration concerning the [NAME_42]. 607 Fifth, given that each party has had some measure of success, I am inclined to order that each party bear their own costs of the proceeding. 608 I will hear further from counsel as to the appropriate orders. The various three-dimensional exhibits will be returned to the parties upon suitable security arrangements being made. I certify that the preceding six hundred and eight (608) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Beach.

Associate: Dated: 15 March 2024