Comite Interprofessionnel des Vins Des Cotes de Provence & Anor v Bryce, Stuart Alexander & Anor [1996] FCA 742

CATCHWORDS

INTELLECTUAL PROPERTY - Part VIB Australian Wine and Brandy Corporation Act 1980 (Cth) - trial of separate issue - wine sold under name "La Provence" - whether "Provence" a registered geographical indication - whether respondents sold wine with false description "knowingly" - whether knowledge of name "Provence" being on register under Act - whether name "Provence" resembles "Côtes de Provence" - whether so resembles as to be likely to be mistaken - whether knowledge (if any) acquired in the course of proceedings sufficient to support injunction.

Australian Wine and Brandy Corporation Act 1980 (Cth): ss 4, 5C, 40A, 40C, 40D, 40E, 40F and 40L

Federal Court Rules: O 29 r 2

Dare v Pulham (1982) 148 CLR 658

Giorgianni v The Queen (1985) 156 CLR 473

Jones v Dunkel (1958) 101 CLR 298

Pereira v Director of Public Prosecutions (1988) 82 ALR 217

Saville Perfumery Ltd v June Perfect Ltd and Woolworth & Co Ltd (1941) 58 RPC 147

Slazenger v A G Spaulding & Bros (1910) 27 RPC 20

Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89

Yorke v Lucas (1995) 158 CLR 661

Comite Interprofessionnel des Vins Des Cotes de Provence & Anr v Stuart Alexander Bryce and Kay Mary Bryce

No. VG 452 of 1994

Judge: Heerey J

Date: 23 August 1996

Place: Melbourne (heard in Hobart)

IN THE FEDERAL COURT OF AUSTRALIA )

)

TASMANIAN DISTRICT REGISTRY ) No. VG 452 of 1994

)

GENERAL DIVISION )

B E T W E E N:

COMITE INTERPROFESSIONNEL DES

VINS DES COTES DE PROVENCE

First Applicant

INSTITUT NATIONAL DES APPELLATIONS D'ORIGINE

Second Applicant

- and -

STUART ALEXANDER BRYCE and KAY MARY BRYCE

Respondents

JUDGE: Heerey J

DATE: 23 August 1996

PLACE: Melbourne (heard in Hobart)

MINUTES OF ORDER

The Court orders that:

1) The questions ordered to be heard separately be answered as follows:

1.(a) & (b) (i)No

(ii)Yes

(iii)No

2.(a) & (b) No, although the applicants have standing to bring these proceedings.

3. No.

2) Directions hearing will be adjourned to a date to be fixed by the Tasmanian District Registrar.

3) Applicants pay the respondents' costs relating to the trial of questions under O 29 r 2, including reserved costs.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules

IN THE FEDERAL COURT OF AUSTRALIA )

)

TASMANIAN DISTRICT REGISTRY ) No. VG 452 of 1994

)

GENERAL DIVISION )

B E T W E E N:

COMITE INTERPROFESSIONNEL DES

VINS DES COTES DE PROVENCE

First Applicant

INSTITUT NATIONAL DES APPELLATIONS D'ORIGINE

Second Applicant

- and -

STUART ALEXANDER BRYCE and KAY MARY BRYCE

Respondents

JUDGE: Heerey J

DATE: 23 August 1996

PLACE: Melbourne (heard in Hobart)

REASONS FOR JUDGMENT

The applicants are public bodies established under French law. They have brought this proceeding against the respondents who own a vineyard at Lalla, some 27 km north east of Launceston. The applicants complain of the sale by the respondents of wine under the name "La Provence". By their amended statement of claim the applicants allege contraventions of s 52 of Trade Practices Act 1974 (Cth) and s 14 of the Fair Trading Act (Tas) 1990 and various other sections in Part V of the Trade Practices Act and equivalents in the Fair Trading Act. Allegations are made of passing off and also contraventions of ss 40C and 40E of the Australian Wine and Brandy Corporation Act 1980 (Cth) (the Act).

The claims under the Trade Practices Act, Fair Trading Act and the passing off claim would involve substantial evidence.
Accordingly the parties very sensibly agreed that there should be a trial as a preliminary issue of the questions arising under the Act. On 26 March 1996 an order by consent was made that certain questions be heard separately from and before the trial of the proceeding pursuant to O 29 r 2 of the Federal Court Rules. Those questions are as follows:

1. (Whether) the conduct of the respondents or one of them in selling:

(a) one or more of the bottles of wine referred to in sub-paragraph (a) of the particulars appended to paragraph 29 of the Amended Statement of Claim herein'

(b) any wine under or by reference to the name "Provence", whether alone or in combination with any other words, marks, devices or geographical depictions;

constitutes:

(i) a contravention of each of:

(a) Section 40C; and

(b) Section 40E

of the Australian Wine and Brandy Corporation Act 1980 (Commonwealth) ("the Act");

(ii) a false description or presentation of wine within the meaning of sub-section 40D(2) of the Act;

(iii) a misleading description or presentation of wine within the meaning of sub-sections 40F(2) and (4) of the Act.

2. (Whether) each of the:

(a) First applicant; and

(b) Second applicant

is entitled to apply for an injunction pursuant to Section 40L of the Act restraining the respondents or one or other of them from contravening the Act by engaging in the conduct described in questions 1(a) and (b) hereof.

3. (Whether) pursuant to section 40L of the Act the respondents should be restrained from engaging in the conduct described in questions 1(a) and (b) hereof.

The Respondents' Wine

The respondents' vineyard was established in 1956 by Jean Miguet, the son of a fifth generation winemaker from Provence who came
to Tasmania to work on a hydro-electric scheme. It is the oldest vineyard in Tasmania. M. Miguet returned to France in 1975. The vineyard had a number of other owners until it was purchased by the respondents in 1980. The total area under vines is about 3.25 ha. Annual production is approximately 350 to 400 cases, of which more than 90 per cent is sold in Tasmania.

In 1985 the respondents registered the name "La Provence Vineyards" as a business name under the Business Names Act 1962 (Tas). They lodged a renewal application on 4 May 1994. In 1986 the respondents commenced living in a house adjoining the vineyard. They were divorced in July 1993.

Initially the grapes grown on the property were sold to the Heemskerk Vineyard but from 1986 wine has been made by Heemskerk for the respondents and marketed under a label bearing the name "La Provence". The following is the label on one of the bottles referred to in the amended statement of claim:

The labels on the other four bottles referred to in the amended statement of claim each bear the words "La Provence" and the Tasmanian tiger emblem shown above together with the following respective words and figures:

(i)Miguet 1990

Tasmanian Pinot Noir

(ii) 1992

Chardonnay

(iii) 1993

Chardonnay

(iv) 1993

Riesling

On the back of the Miguet 1989 bottle is a label as follows:

The other four bottles each bear a similar back label. The text varies but for present purposes it is not necessary to repeat each variation. In each case there is a reference to Jean Miguet as the founder and to La Provence being Tasmania's oldest vineyard. In each case the names Stuart and Kay Bryce and the
address La Provence Vineyards, Lalla, Tas. 7267 appear. I shall refer to all these labels (front and back) as "the respondents' labels".

The Australian Wine and Brandy Corporation Act

The present case concerns Part V1B which was introduced into the Act by an amending Act in 1993. By s 40A of the Act as so amended it is provided that the object of Part VIB is

to regulate the sale, export and import of wine:

(a) for the purpose of enabling Australia to fulfil its obligations under the prescribed wine-trading agreements; and

(b) for certain other purposes for which the Parliament has power to make laws;

and this Part is to be interpreted and administered accordingly.

In his second reading speech in the Senate on 28 October 1993 the Minister, the Honourable Senator McMullan, said:

The purpose of this bill is to implement the EC/Australia Wine Agreement.

...

This legislation enables the Agreement to enter into force and our winemakers to enjoy its benefits.

The Agreement provides for the mutual recognition of each Party's winemaking practices and standards; it affords mutual protection to each Party's geographical indications, that is, the names of our wine regions such as Coonawarra and Hunter Valley.

...

The Agreement recognises the importance of European geographical indications to the European Community. It also recognises the widespread use of EC names on Australian wines. The Agreement provides for the gradual phase-out of our use of EC geographical indications according to their commercial importance.

The agreement referred to by the Minister was the Agreement between Australia and the European Community on Trade in Wine, and Protocol, Australian Treaty Series 1994 No. 6, (hereafter "the Agreement") which entered into force on 1 March 1994. The
Agreement includes the following:

Title II

Reciprocal Protection of wine names and related

provisions on description and presentation.

Article 6

1. The Contracting Parties shall take all measures necessary, in accordance with this Agreement, for the reciprocal protection of the names referred to in Article 7 which are used for the description and presentation of wines originating in the territory of the Contracting Parties. Each Contracting Party shall provide the legal means for interested parties to prevent use of a traditional expression or a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question.

2. The protection provided for in paragraph 1 also applies to names even where the true origin of the wine is indicated or the geographical indication or traditional expression is used in translation or accompanied by expressions such as "kind", "type", "style", "imitation", "method" or the like.

The Agreement nowhere prescribes any detail as to what "legal means" are to be provided. Under article 7 certain names are protected including

(a) as regards wines originating in the [European] Community

...

IV. The geographical indications and traditional expressions referred to in Annex II.

Relevantly Annex II provides:

The wines covered by this Agreement are the following:

A. WINES ORIGINATING IN THE EUROPEAN COMMUNITY

...

II. WINES ORIGINATING IN THE FRENCH REPUBLIC

(A) Quality wines produced in specified regions

These wines are described by the terms "vin de qualité produit dans une région déterminée" or by a specific traditional expression listed in point 1; they are listed in paragraph 2.

These wines may be described in addition by the name of a geographical unit which is smaller than the specified region and not listed individually in this Annex and an additional traditional expression, as listed in point 3

1. Specific traditional expressions:

- Appellation d'origine contrôlée

- Appellation - contrôlée

- Appellation d'origine - Vin délimité de qualité supérieure

2. Names of specified regions:

...

2.6 Provence and Corsica regions:

2.6.1 Appellations d'origine contrôlées

...

Bandol

Bellet

Cassis

Coteaux d'Aix-en-Provence

Coteaux d'Aix-en-Provence, followed by the name:

Les-Baux-de-Provence

Côtes de Provence

...

Vin de Bandol

Vin de Bellet

...

I shall hereafter refer to the names under 2.6.1 as "the AOC names".

To return to the Act, the substantive provisions alleged to have been contravened by the respondents are ss 40C and 40E. In each case, there are further provisions amplifying the primary statutory meaning. By s 40L the Federal Court is empowered to grant an injunction restraining a person from engaging in conduct in contravention of Division 2 of Part VIB (which includes ss 40C and 40E).

Section 40C(1) provides :

A person must not, in trade or commerce, knowingly sell wine with a false description and presentation.

Subsections (2) and (3) make similar provisions in relating to the export and import of wine. Subsection (4) provides:

It is not a defence to a prosecution for an offence against subsection (1), (2) or (3) that the description and presentation indicated the country, region or locality, as the case may be, in which the wine originated.

A penalty of imprisonment for two years is prescribed. Under s 4B(2) of the Crimes Act 1914 (Cth) a court may impose an appropriate fine instead of or in addition to a term of imprisonment. The maximum fine for a two year term of imprisonment is 120 penalty units. A penalty unit currently has a value of $100.

Section 40D provides:

(1) This section has effect for the purposes of section 40C.

(2) Subject to this section, the description and presentation of wine is false if:

(a) it includes the name of a country, or any other indication that the wine originated in a particular country, and the wine did not originate in that country; or

(b) it includes a registered geographical indication and the wine did not originate in a country, region or locality in relation to which the geographical indication is registered.

(3) ...

(4) For the purposes of subsection (2), a registered geographical indication, a registered traditional expression or a registered ancillary protected expression is taken to be included in the description and presentation of wine even if the indication or expression is accompanied by another word or expression such as "kind", "type", "style", "imitation" or "method", or any similar word or expression.

The meaning of "description and presentation" is defined comprehensively in s 5C in terms which include names appearing on a bottle label.

Section 4 contains a number of relevant definitions.

"Geographical indication" is defined as follows:

"Geographical indication", in relation to wine, means:

(a) a word or expression used in the description and presentation of the wine to indicate the country, region or locality in which the wine originated;

(b) a word or expression used in the description and presentation of the wine to suggest that a particular quality, reputation or characteristic of the wine is attributable to the wine having originated in the country, region or locality indicated by the word or expression.

"Registered Geographical Indication" is defined to mean:

a geographical indication that is included in the register in relation to a particular country.

"Register" is defined to mean the Register of Protected Names kept under section 40ZC.

Division 5 of Part VIB provides for a Register of Protected Names. By s 40ZA(1) there is to be a Registrar of Protected Names who is to be an employee of the Australian Wine and Brandy Corporation. The functions of the Registrar include the keeping of the Register of Protected Names (s 40ZB(a)). By s 40ZC the Registrar is to keep a register to be known as the Register of Protected Names (hereafter "the Register"). Section 40ZD relevantly provides:

(1) The Register is to be divided into the following parts:

(a) a part containing geographical indications in relation to wines manufactured in Australia and the conditions (if any) applicable to those indications;

...

(c) a part containing geographical indications in relation to wines manufactured in an agreement country and the conditions (if any) applicable to those indications.

...

(2) The Registrar is to enter in the appropriate part of the
Register, in accordance with the directions of the Corporation, the following particulars:

...

(c) in relation to an agreement country - each geographical indication that, under a prescribed wine-trading agreement to which that country is a party, is a geographical indication in relation to wines manufactured in that country and the conditions (if any) applicable to those indications.

France is an "agreement country" and the Agreement is a "prescribed wine-trading agreement".

Under s 40ZE(1) the Registrar is to ensure that the Register is available for inspection at the office of the Registrar by any person during ordinary hours of business of that office. Sub-section (2) authorises keeping the Register by use of a computer and giving members of the public access to particulars on a screen or in print-out form. Under sub-section (3) the Registrar may supply a copy of the Register or part of the Register to a person on payment of a prescribed fee.

An extract from the Register was in evidence. It bore the heading:

PART (c)

GEOGRAPHICAL INDICATIONS: THE FRENCH REPUBLIC.

2. Names of Specified Regions:

2.1 Alsace and other eastern regions:

Various other regions and localities are mentioned such as Champagne, Bourgogne etc.

The Provence and Corsica regions and the AOC names appear in
terms and layout identical to Annex II to the Agreement (see above).

The foregoing completes the statutory material relevant to the case under s 40C. The alternative case is under s 40E(1) which relevantly provides:

A person must not, in trade or commerce, knowingly sell wine with a misleading description and presentation.

Again a penalty of two years imprisonment is prescribed.

Section 40F provides:

(1) This section has effect for the purposes of section 40E.

(2) Subject to subsection (7), the description and presentation of wine is misleading if:

(a) it includes a registered geographical indication, a registered traditional expression or a registered ancillary protected expression; and

(b) the indication or expression is used in such a way in the description and presentation as to be likely to mislead as to the country, region or locality in which the wine originated.

(3) ...

(4) Subject to subsection (7), the description and presentation of wine is misleading if:

(a) it includes a word or expression that so resembles a registered geographical indication, a registered traditional expression or a registered ancillary protected expression as to be likely to be mistaken for the registered geographical indication, the registered traditional expression or the registered ancillary protected expression, as the case may be; and

(b) the wine did not originate in the country, region or locality in relation to which the indication or expression is registered.

Section 40C - Is "Provence" a Registered Geographical Indication?

Counsel for the respondents argued that "Provence" is not a registered geographical indication and that the word where it appears opposite the numbers 2.6 in the Register is simply a heading for the sake of convenience, merely identifying the part
of France in which the localities bearing the AOC names listed under 2.6.1 are to be found.

I do not accept this argument. The statutory definition of "geographical indication" in s 4(1) includes a hierarchy - country, region, locality - which is repeated in s 40D(2)(b) as well as frequently elsewhere in the Act. As a matter of ordinary language, the name of a region is a geographical indication of a particular part of the Earth's surface. "Region" is a term frequently used to identify a part of a country, usually of fairly substantial size, and often, although not necessarily always, an area without precisely fixed legal or administrative boundaries, as for example "the Riverina region".

The Provence region of France lies on the Mediterranean coast, east of the Rhône river and in the French Departments of Var, Alpes-Maritimes, Bouches-du-Rhône, Vaucluse and Alpes de Haut-Provence. Wine has been grown in Provence since the 6th Century BC, originally by the Greeks and subsequently by the Romans who ruled the area for 600 years. There was evidence of standard works on wine having a chapter or division treating Provence as a distinct winegrowing area, for example "The World Atlas of Wine" by Hugh Johnson and "The Wine Atlas of France" by Hugh Johnson and Hubrecht Duiker.

Provence is well known in Australia as a wine producing region. The leading trade publication "Thompsons Liquor Guide" has for many years listed Provence wines under a separate heading
"Provence". Similarly "Parkers Wine Buyers Guide", published in a large number of countries around the world including Australia, refers to Provence wines under the heading "Provence" in a separate section of the book.

Thus Provence is not only a region in the ordinary meaning of the word, but is well (and favourably) known as a wine producing region. "Provence" is therefore a word used in the description and presentation of wine to indicate the region in which it originated and thus a "geographical indication" within the meaning of the Act.

Moreover, it is not in my opinion a valid argument to call the words "Provence and Corsica regions" a heading and then say that as a heading they are merely directions to the reader and not an operative and substantive part of the Register. The word "heading" is not used in the extract from the Register which was in evidence nor, as far as I could see, in Annex II or in any other part of the Agreement. The layout of the Register, and Annex II, is a coherent and understandable way of setting out the names to be protected. The whole structure of Annex II of the Agreement mirrors the country, region, locality hierarchy. Annex II is divided into countries, France, Germany etc which are in turn divided into regions such as Provence and then into localities.

There is no reason for inferring that the word "Provence" was intended to be any less protected than the AOC names appearing
immediately under that word - and which logically appear there because they are localities in Provence.

Counsel for the respondents also argued that since the expression "La Provence" was not a "registered geographical indication" there could be no breach of s 40D(2)(b). I do not accept that argument. The "description and presentation" of the respondents' wine "includes" the word "Provence" because that word appears on the respondents' labels, and particularly on the front label which is part of the "description and presentation" of the wine: see s 5C.

I find therefore that wine sold in bottles bearing the respondents' labels would be sold with a false description and presentation within the meaning of s 40C(1) by reason of the inclusion on the labels of the word "Provence", which is a "registered geographical indication". It is common ground that the respondents' wine did not originate in Provence. In the case of the first respondent Mr Bryce it is clear that he sold the wine. There is dispute on this issue as to the second respondent Mrs Bryce. I shall return to this later. The critical issue however remains whether the respondents "knowingly" sold their wine with the false description and presentation mentioned.

"Knowingly"

Knowledge is explicitly made one of the essential elements constituting the offence created by s 40C(1). Although in the present case the applicants only seek civil remedies, the
elements which must be established to make out a contravention of s 40C(1) remain the same: see Yorke v Lucas (1995) 158 CLR 661 at 668, 673. Where actual knowledge is a specific element of the offence, it may be established as a matter of inference from the surrounding circumstances. But the question remains one of actual knowledge. It is never the case that something less than knowledge may be treated as satisfying the requirement of actual knowledge: Pereira v Director of Public Prosecutions (1988) 82 ALR 217 at 219-220. However, "wilful blindness, the deliberate shutting of one's eyes to what is going on, is equivalent to knowledge": Giorgianni v The Queen (1985) 156 CLR 473 at 482 per Gibbs CJ.

Importantly for the present case, Gibbs CJ in Giorgianni at 483 goes on to say:

In Davies, Turner & Co Ltd v Brodie [1954] 1 WLR 1364 at 1367 Lord Goddard CJ, after repeating what he had said in Johnson v Youden [1950] 1 KB 544 at 546 continued:

"If a person shuts his eyes to the obvious or refrains from making any inquiry where a reasonably sensible man would make inquiry, I think the court can find that he was aiding and abetting, certainly if he shuts his eyes to the obvious."

With all respect this dictum was too wide, as indeed Lord Goddard himself may have recognized by the concluding words of the sentence quoted; those words are omitted from the report in the All England series, but the word "perhaps" is inserted. As Lord Devlin pointed out in Roper v Taylor's Central Garages (Exeter) Ltd [1951] 2 TLR at 289:

"There is a vast distinction between a state of mind which consists of deliberately refraining from making inquiries, the result of which the person does not care to have, and a state of mind which is merely neglecting to make such inquiries as a reasonable and prudent person would make."

The failure to make such inquiries as a reasonable person would have made is not equivalent to knowledge; it is not enough to render a person liable as a secondary party that he ought to have known all the facts and would have done so if he had acted with reasonable care and diligence. That is so even when the offence
is one of strict liability, so that the actual perpetrator may be convicted in the absence of knowledge.

The present case is stronger since knowledge is expressly required by s 40C(1).

In the circumstances of the present case, the critical fact of which the respondents' knowledge must be established is the fact that the Register contained the name "Provence". It is that fact which makes the name a "registered geographical indication". If knowledge by the respondents of that fact be established, it would not matter if they did not realise its legal significance or had a mistaken view as to its legal effect.

The applicants correctly accepted the burden of establishing the respondents' knowledge in the relevant sense. In para 18 of their points of claim the applicants alleged:

18. By selling the respondents' wine under or by reference to the said words "La Provence", the respondents have, in trade and commerce, knowingly sold wine;

(a) with a false description or presentation in contravention of s 40C(1) of the Act; or

(b) with a misleading description and presentation in contravention of s 40E(1) of the Act

PARTICULARS

The respondents' conduct was undertaken "knowingly" by reason of:

(a) the fact that the Register is a public document open to inspection by all members of the public;

(b) the respondents consciously used and have continued to use a reference to "Provence" to identify their property with the homeland of M. Miguet by whom the respondents' vineyard was established and first named;

Further particulars will be provided after discovery herein.

No further particulars were provided, although at the hearing the applicants sought to rely on two further letters to which I shall
shortly refer.

In my opinion particular (a) does not establish knowledge of the respondents in the relevant sense. There are many instances of course where matters on a public register are deemed to be published or matters of which the public are deemed to be aware. But in the present case we are concerned with the actual knowledge of the respondents. The fact that somewhere in Australia there is a Register open for inspection by all members of the public (although there is no evidence in this case as to where it exists) does not establish that the respondents in fact knew there was such a Register, still less knew that it contained the name "Provence". As the passage from the judgment of Gibbs CJ in Giorgianni makes clear, failure to make reasonable enquiries is not enough. But in any event I do not think there was any failure on the respondents' part to make reasonable enquiries since, as will hereafter appear, there is nothing to indicate that the existence of the Register was bought to their attention.

Particular (b) seems quite irrelevant. It has nothing to do with the presence of the name "Provence" on the Register.

The letter referred to in particular (c) is as follows:

5 April 1994

Stuart & Kay Bryce

La Provence Vineyards

LALLA TASMANIA 7267

Dear Mr & Mrs Bryce

Our Ref: SMS:001678549

Our firm acts on behalf of the French National Institute of Appellations of Origin, (the Institut National des Appellations d'Origine, the "INAO") which is a semi-governmental authority of the French government whose tasks include the regulation and protection of French appellations of origin, as well as ensuring that consumers throughout the world are not misled into believing wines have a French origin or connection, when in fact they do not. We have been instructed to write to you in respect of your misuse of the word "Provence" in the description of the wines sold by you. In particular, the INAO is concerned about you offering for sale, promoting and selling a wine under the name "La Provence".

We have advised our client that the use by you of the name "La Provence" on your wine labels constitutes a passing-off by you of your wine as being wine produced in France and in particular in the Provence region or, alternatively, that your wine is the same wine as that produced in Provence. Moreover, the use by you of the name "La Provence" also constitutes misleading and deceptive conduct contrary to the provisions of your State's Fair Trading legislation which prohibits such conduct. What adds to the strength of our view is that there is no reference on your front label to the source of the wine as to whether it emanates in Tasmania, Australia or anywhere else. Indeed, of the only two other words used on the label other than the name "La Provence", one is a proper name and the other is also a French word, namely "Vignoble".

Equally important is the fact that such labelling is likely to breach sections 40C and 40E of the Australian Wine and Brandy Corporation Act by being false description and/or a misleading description of the wines sold by you. Such breaches make you not only liable to prosecution and fines, but also to the making of injunctions against you from using such labels.

Accordingly, we have been instructed by our client to write to you to take formal objection to your use of the name "La Provence" and to seek your written undertaking that you will cease and forever desist from using the name "La Provence" in respect of wines not emanating from the Provence region of France.

In particular, we are instructed to bring to your attention the fact that the Treaty recently signed by the European Community and Australia specifically protects all French geographical indications and appellations of origin for wines of which "Cote de Provence" [sic] is one. The Australian legislation giving effect to the Treaty is the legislation referred to above, namely the Australian Wine & Brandy Corporation Act. That Act prohibits the use of any of the geographical indications which include "Cote de Provence" [sic] and prohibits the selling of wine bearing protected geographical indications such as "Cote de Provence" [sic]. It is our view that use of the distinguishing part of the name "Cote de Provence" [sic] as used by you would constitute a breach of Section 40C. Further, Section 40E referred to above prohibits the sale of wine with "a misleading description and presentation". That is described as including the use of a word or expression that so resembles a registered geographical indications [sic] as to be likely to be mistaken for it.

We have drawn to our client's attention the fact that your
vineyard has used the name "La Provence" for some years. Thus whilst our client certainly does not approve of your company's misuse of the word "Provence", if you will agree to cease using that name in respect of all future vintages, our client's demands are made only in respect of future vintages. Moreover our client is prepared to take no further objection to you selling all remaining stocks of existing vintages under the name "La Provence". However, this concession is subject to our client receiving the written undertakings sought by it.

Our client has adopted this realistic and commercial attitude in order to avoid litigation. On the other hand, you should not treat this offer as a sign of weakness. The INAO is committed to ensuring that consumers in Australia and throughout the world are not misled into believing wines are produced in France, or are the same wines as those produced in France, when this is not the case. It will therefore not hesitate, if necessary, to take formal steps to prevent any consumer deception.

Accordingly, we look forward to receiving your response and undertaking and request the same within two weeks from the date of this letter.

Yours faithfully,

(sgd) Freehill Hollingdale & Page

FREEHILL HOLLINGDALE & PAGE

It will be noted immediately that this letter makes no mention of the Register. Insofar as there is any specificity as to the allegation of contravention of the Act, it is based on rights claimed in respect of the name "Cote de Provence". The actual AOC name is "Côtes de Provence", with the word Côtes (French for "hills") in the plural and with a circumflex accent.

Counsel also tendered a fax from Freehills to the respondents' Hobart solicitor Mr R M Webster dated 1 June 1994 and Mr Webster's reply the following day, although as will be seen most of the latter was written before the receipt of the former and was addressed to issues raised in Freehills' letter to the respondents of 5 April.

The fax of 1 June (omitting certain privileged parts) was as
follows:

Dear Mr Webster

Comite Interprofessional Des Vins Cotes De Provence

& Institut National Des Appellations D'Origine

-v- Stuart Alexander Bryce & Kay Mary Bryce

I refer to our telephone conversation yesterday and have now had a chance to consider the various provisions of the Australian Wine & Brandy Corporation Act 1980 (as amended) as they apply to your clients' conduct.

Before turning to the various provisions of that Act that I believe clearly make your clients' conduct unlawful, I should stress that we are not suggesting that it is only provisions of this Act that apply to your clients' conduct. The Fair Trading Act provisions certainly, in our view, also apply and will continue to do so in respect of your clients' conduct to date even if future conduct is modified.

Turning to the Australian Wine & Brandy Corporation Act 1990 [sic] ("the Act"), I make the following comments.

1. As your clients are selling a wine the description and presentation of which "includes ... (some) other indication that the wine originated in a particular country, and the wine did not originate in that country", then your clients have sold a wine with a false description and presentation. In this respect I refer you to Section 40D(2) of the Act. There is no requirement under this provision that the conduct be misleading or deceptive.

2. Secondly, Section 40D(3) of the Act explains that the conduct referred to in Section 40D(2) as a false description and presentation is a non-exhaustive definition. Thus even if your clients use a qualifying statement on their labels as discussed, whilst your clients might argue that such conduct was no longer misleading or deceptive (which is not admitted and is denied by my client), that would not stop your clients' conduct from making a false statement. In other words, your clients will then have two contradictory statements on their wine labels. If one is false, the falsity of that statement is not negatived by having another contradictory and true statement on the label.

3. I also draw your attention to Section 40F(4) of the Act. As your clients have used a description and presentation which "includes a word or expression that so resembles a registered geographical indication ... as to be likely to be mistaken for that registered geographical indication ... and the wine did not originate in that region or locality", then Section 40F(4) makes the description and presentation misleading. As you will note from reading that Section, it is not stated that the entire label or the description and presentation itself must be misleading or deceptive or that the wine must be likely to be mistaken as having come from the country, region or locality in question. Rather the only question as to which mistake is relevant is whether the word or expression used so resembles a registered geographical indication as to be mistaken for that registered geographical indication. Accordingly addition of words such as "Tasmanian Pinot Noir" will not assist
your clients in avoiding liability under that Section.

4. Similarly, even if a contradictory statement such as "Tasmanian Pinot Noir" is used on the label, by retaining the name "La Provence" on the label, your clients will be using a description and presentation of wine which includes "the name ... of the winery at which the wine was manufactured, and the name ... is used in such a way in the description and presentation as to be likely to be mislead as to the country, region or locality in which the wine originated". Again I refer to my comments above concerning the situation where a wine label has two contradictory statements on it.

5. I also refer you to Section 40F(6) of the Act, which makes it clear that sub-sections 2 to 5 of Section 40F do not limit what constitutes a misleading description and presentation of wine.

Yours sincerely

(sgd) Steve Stern

STEPHEN STERN

Partner

Mr Webster's reply of 2 June was as follows:

I acknowledge your letter of the 27th May and draft Application and Statement of Claim enclosed. I have considered the same and discussed the matter in great detail with my clients.

...

Let me put on record the broad advice I have given them.

I do not accept that my clients are in breach of Section 40C(1) of the Australian Wine and Brandy Corporation Act in that they knowingly sold wine with a false description and presentation. I query whether the description of the wine can be said to be false. My advice includes the fact that under Section 40D(2)(b) the description and presentation must include a registered geographical indication. The geographical indication which has been registered under the act is "Cote de Provence" [sic]. The mischief at which the section is directed, in my opinion, is the use of the exact indication and not merely "Provence" which may, by custom, have been used as an abbreviation or otherwise. However, unless "Provence" has been registered I do not consider that there can be a breach of the section. It should be borne in mind that the legislation can hardly be called beneficial and should therefore be strictly construed.

My view in this regard is confirmed by sub-section 4 of that section where a registered geographical indication cannot be used even if it qualified by the words referred to in the sub-section. In my view it is plainly to protect indications such as "Champagne, Chablis, Burgundy etc". To use one of those indications, however qualified, would breach the section. It is plain that Australian Beaujolais would be in breach of this section. However, in the case of "Provence", that is not the registered indication and it is not a recognised wine as is the case with Champagne, Chablis, etc. My advice is that my clients are not in breach of Section 40E in that they did not knowingly
sell wine with a false description and presentation.

Section 40E(1) forbids knowingly selling wine with a misleading description and presentation. The section deems a description to be misleading if it includes a word or expression that so resembles a registered geographical indication as to be likely to be mistaken for that indication. In my opinion the mere use of the words "La Provence" is sufficiently different from the registered indication "Cote de Provence" [sic] as to eliminate confusion. No doubt if the matter proceeded to hearing evidence would be called by both sides as to whether or not the description on the label was misleading, as in the cases under Section 52 of the Trade Practices Act. At the end of the day it really is a matter of opinion as to whether something is or is not likely to be mistaken.

I note that in your letter in referring to the Tasmanian Appellation and Control system you assert that Federal laws would take precedence. That may well be so, but you should bear in mind that in your application you seek, as part of the relief sought, damages under Section 37 of the Tasmanian Fair Trading Act. Clearly, that is a different situation from either the Wine and Brandy Act or the Trade Practices Act and it would be highly unlikely that a court would find that something is deceptive or misleading under the Fair Trading Act when in fact, it has been accepted under the Liquor and Accommodation Act. I merely refer to this in order to note another area where there would need to be considerable argument as to whether your claim for damages would succeed.

As you are aware, La Provence Vineyards has been in existence for 39 years having been established by Jean Miguet, a French migrant, and son of a fifth generation winemaker from Provence, who died in France in 1976 and is buried in Provence. The vineyard is the oldest in Tasmania and Jean Miguet is revered as the founder of the latter day wine industry in this state. His endeavours are recorded by my clients on the label of their wine.

When the vineyard was purchased by my clients in 1980 they made a conscious decision to continue to trade under the name which was historical and in due deference to Jean Miguet as a pioneer of the wine industry.

I note your assertion that the name "Provence" is in fact protected irrespective of the registered geographical location. In part your assertion relies on the reference in some wine books to "Provence" as a particular region. That may well be so, but in some other wine books it is referred to as the Côtes de Provence as is the Côtes du Rhône referred to as a region. I do not consider that anything turns on that in whether or not your claim would succeed.

Yours faithfully,

(sgd) R M Webster

R.M. WEBSTER

ADDENDUM

Since the drafting and printing out of the foregoing I have received your facsimile of June 1. I note that in your letter of 5th April you referred to the use of a registered geographical indication by my clients. However, I take it that you are now referring to Section 40D(2)(a) and rely on the use of the name "La Provence" to indicate the wine originated in France. I do
not accept that it has such effect, even read in isolation. However, notwithstanding your assertion to the contrary I do not consider that your argument that a qualifying statement on a label can prevent another statement from being false. My view is simply that all material on a wine bottle must be considered to determine whether or not there is a false description. If that is not so one could construe a clause in a contract without regard to the remainder of the contract.

Your remarks concerning Section 40F(4) of the Act are noted. I repeat what I have written above. To do other than consider the entire label or description defies logic.

It is quite clear that our views about the interpretation of the several provisions in the legislation are far apart. [Emphasis in original]

I am unable to draw the inference, urged by counsel for the applicants, that when Mr Webster discussed the matter with his clients they had in front of them a copy of, or extract from, the Register. There is no mention in the correspondence of the Register, or of the name "Provence" appearing in the Register. Mr Webster states that "unless `Provence' has been registered I do not consider that there can be a breach of the legislation" which naturally speaks of a belief that the word was not registered. Later he asserts "... in the case of `Provence' that is not the registered indication". There was nothing in Freehills' letters to suggest that it was.

The case which the applicants made at trial, and which I have upheld, is that the name "Provence" at 2.6 of the Register is itself a "registered geographical indication". But that claim was not made in their earlier correspondence, or indeed until the first day of the hearing. At the commencement of the trial on 12 August 1996 counsel for the applicants sought and was granted leave to amend para 13 of their points of claim dated 4 April 1996. Prior to amendment para 13 read:

13 The registered geographical indications in relation to wines manufactured in France include under the words "Provence and Corsica":

(a) Côtes de Provence

(b) Coteaux d'Aix-en-Provence; and

Les-Baux-de-Provence;

("the registered Provence geographical indications").

The amendments consisted of deletion of the word "under" and insertion of the word "and" after "Provence and Corsica". These small but important changes had the effect of claiming, for the first time in this litigation, that the name "Provence" itself is a registered geographical indication.

The complaint made in the letter of 5 April 1994 was based on the alleged similarity of the words "La Provence" on the respondents' labels to the expression "Cote de Provence". It is clearly that allegation to which Mr Webster and the respondents were directing their attention. Support for that conclusion comes from the fact that in Mr Webster's letter of 2 June he repeats the misspelling "Cote de Provence" which appeared in Freehills' letter. This is a further indication that what the respondents and their solicitor had before them was not a copy of the Register but the correspondence. The reference to "Côtes de Provence", correctly spelt, in the last paragraph of Mr Webster's letter before the addendum comes from "some other wine books". In context Mr Webster is there dealing with a claim by Freehills that the name "Provence" is protected even if it is not a registered geographical indication. Plainly this passage points against inference of any knowledge that the name "Provence" was on the
Register.

Counsel for the applicants relied on the rule in Jones v Dunkel (1958) 101 CLR 298 at 308 where Kitto J said that

any inference favourable to the plaintiff for which there was ground in the evidence might be more confidently drawn when a person presumably able to put the true complexion on the facts relied on as the grounds of the inference had not been called as a witness by the defendant and the evidence provides no sufficient explanation of his absence.

This rule was said to apply because of the unexplained absence from the witness box of the second respondent, Mrs Bryce. But, for the reasons already given, I am not satisfied there is any ground at all in the evidence for the inference that prior to the commencement of this proceeding the respondents knew of the existence of the Register and the fact that it contained the name "Provence". In any case, Mr Bryce was called as a witness and was cross-examined by counsel for the applicants. No question was asked as to whether he had ever seen a copy of or extract from the Register, or knew of its existence, or whether he knew or even suspected the name "Provence" was on the Register.

Since there is no evidence to support a finding that the respondents have in their possession a copy of or extract from the Register, or knew of its existence, no question can arise of their "wilfully closing their eyes" to any matter contained in it.

Accordingly, I am not satisfied that this element of the alleged contravention is made out.

Sale by Mrs Bryce

In his evidence Mr Bryce said that he first sold wine commercially from the vineyard in 1989, but his "dealings in relation to the wine" were conducted by himself and not by himself and his former wife. He said that in tax returns Mrs Bryce was not shown as a person receiving income from the vineyard. He conceded of course that the respondents' labels bore his former wife's name as well as his and that the application for the registration of the business name showed Mrs Bryce as one of the two "persons carrying on business" under the business name "La Provence Vineyards". I asked Mr Bryce what he intended to convey by putting the names "Stuart and Kay Bryce" on the label. His answer was:

The property is jointly owned by Stuart and Kay Bryce. It still is at this stage, your Honour, and it was her request that that be so as was it was her request that her name also be included on the registration of business names. I deferred to that request and have no knowledge of the legal ramifications of so doing.

He was cross-examined by counsel for the applicants as to his understanding of the words "carrying on business" in the business names registration application. His answers were not convincing.

The way this issue emerged was not at all satisfactory. Both in their defence and in the points of defence in relation to the trial of separate issues, there is no hint that the respondents were going to take the point that although Mr Bryce sold the wine, Mrs Bryce did not. If that were the case it is obviously contrary to what one might reasonably infer from the registration of the business name and the appearance of both names on the
respondents' labels. The basic function of pleadings is to define the issues and thereby inform the parties in advance of the case they have to meet so as to enable them to take the steps necessary to deal with it: Dare v Pulham (1982) 148 CLR 658 at 664.

Indeed in the present case the question only arose in re-examination of Mr Bryce. His evidence-in-chief took the form of an affidavit sworn on 13 February 1995. That affidavit did not assert that Mrs Bryce was not a seller of the wine and in fact conveyed a misleading impression because it spoke of "the respondents" purchasing the vineyard and then in a later paragraph stated that

... more than 90 per cent of wine produced by the vineyard is sold in Tasmania. Some is sold at the vineyard but the bulk of production in sold to Tasmanian restaurants and hotels.

Criticism of use of the passive voice in legal documents is not pedantry. The present case is a good example of how a false impression can be conveyed, although I do not suggest it was done deliberately by the respondents or their solicitor.

On this issue I think it is appropriate to apply the rule in Jones v Dunkel. The appearance of Mrs Bryce's name with her consent on the label and her signature of the business name application raises a reasonable inference that she was, together with Mr Bryce, carrying on the business of growing and selling wine from the vineyard. Her unexplained absence from the witness box enables me to more confidently draw the conclusion that this
was in fact the case.

Section 40E - Misleading Description and Presentation

In their case under this section, the applicants have in my opinion failed to establish that the respondents knowingly sold wine with a misleading description and presentation. For the purposes of s 40F(4)(a) what would make the description and presentation misleading is the resemblance, to the extent required, of the word "Provence" in the respondents' labels to a registered geographical indication. The respondents have to know at least that the name which their word resembles is a registered geographical indication, that is to say, it is a name which is on the Register. There is no evidence from which it can be inferred that the respondents had this knowledge. For the reasons already mentioned, the fact that the Register is open to public inspection is not enough. Neither of Freehills' letters assert the fact that Côtes de Provence (or Cote de Provence) or the other AOC names mentioned in the applicants' points of claim is on the Register. The fourth last paragraph of the letter of 5 April 1994 (commencing "In particular, ...") does not assert this fact. Rather, it argues a legal conclusion.

But apart from the issue of knowledge, the applicants have not established resemblance in the relevant sense. The applicants' case under s 40E was based on an alleged resemblance of the word "Provence" as used on the respondents' labels to the AOC names referred to in para 13 of their points of claim and in particular to "Côtes de Provence". It was said that to take "Provence" out
of "Côtes de Provence" was to take something that so closely resembles "Côtes de Provence" as to be likely to be mistaken for it. This result, it was said, was not altered by use of the definite article "La" in front of the word "Provence".

On this part of the case counsel for the applicants urged that there was a close analogy between the protection by registration regime under Part VIB of the Act and trade mark registration. At the outset I note that this submission is at odds with the affidavit of Frédérique Helin filed by the applicants. Mme Helin is a French lawyer and is the Chief of the Legal and Foreign Division of the second applicant, Institut National des Appellations d'Origine. Mme Helin deposes:

41. In contrast to other intellectual property rights, appellations of origin are not intellectual creations, but are the fruit of the intimate link which unites a group of people to the soil which supports them. In this manner, appellations of origin are indefeasible and inalienable, in contrast to trade marks which live and die as their proprietor pleases.

Counsel referred to the decision of the Full Court of this Court in Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89. That was a case of alleged infringement of a registered trade mark under s 62(1) of the Trade Marks Act 1955 (Cth). The Full Court held that the trial judge was in error in comparing the defendant's use of its mark with the plaintiff's mark instead of comparing the mark itself (49 FCR at 102, 105). Gummow J (at 117) pointed out:

Neither protection of goodwill nor deceptive conduct are the primary concern of the action for trade mark infringement under the present legislation.

His Honour also referred (at 122) to Saville Perfumery Ltd v June Perfect Ltd and Woolworth & Co Ltd (1941) 58 RPC 147 where Sir Wilfred Greene MR said:

In an infringement action, once it is found that the defendant's mark is used as a trade mark, the fact that he makes it clear that the commercial origin of the goods indicated by the trade mark is some business other than that of the plaintiff avails him nothing, since infringement consists in using the mark as a trade mark, that is, as indicating origin.

But although the regime established by Part VIB of the Act is based on registration of names, in my respectful opinion it does not follow that doctrines of trade mark law necessarily apply. Although comparisons may be made between some provisions in Part VIB and trade mark legislation, and between such provisions and some in Part V of the Trade Practices Act, the fact remains that in providing the "legal means" contemplated by Article 6.1 of the Agreement Parliament has chosen a means of enforcement which is sui generis. Part VIB is notably different from trade mark legislation and Part V of the Trade Practices Act in that it prescribes a sanction of imprisonment. There is no mention in the Minister's speech, the explanatory statement, or any other extrinsic material tendered in evidence in the present case as to why this was done. Presumably the sanction of imprisonment was the reason why contraventions of Part VIB must be made "knowingly" - again a matter of contrast with trade mark legislation and Part V. Ultimately what governs is the language of Part VIB of the Act, construed according to ordinary principles of construction.

As to trade mark law, the point is made by comparison of s 62(1) of the Trade Marks Act, which was at issue in Wingate, with s 40F(4)(a) of the Act. Section 62(1) provides:

A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user of the trade mark using by way of permitted use, uses a mark which is substantially identical with, or deceptively similar to, the trade mark, in the course of trade, in relation to goods or services in respect of which the trade mark is registered.

By contrast, s 40F(4)(a) makes a description and presentation of wine misleading if it includes a word or expression that so resembles a registered geographical indication "as to be likely to be mistaken for" that registered geographical indication. This necessarily requires some assessment by the Court as to the likely impact of the description and presentation on consumers.

Therefore the questions which arise are:

(i) Does the word or expression resemble a registered geographical indication?

(ii)If yes, does it so resemble the registered geographical indication as to be likely to be mistaken for it?

"Resemble" means "to be like or similar to" (Macquarie Dictionary). The word "Provence" does not in my opinion resemble the words "Côtes de Provence" or any of the other AOC names any more than the word "Australia" resembles the words "South Australia". Considered as words, the words "Australia" and "South Australia" have a connection because the geographical areas they denote are connected, the latter being part of the former. But for that very reason the one word is not like or
similar to the other. They both convey different meanings, that difference being that one refers to the whole, and the other a part only, of Australia.

In any case, if "Provence" does resemble "Côtes de Provence" I do not think the former so resembles the latter as to be likely to be mistaken for it. "Provence" denotes Provence, the region of France known by that name. "Côtes de Provence" would convey a smaller geographical entity, albeit one that is in Provence. Does the name "Provence" resemble the name "Côtes de Provence" to such a degree that a wine purchaser or consumer in Australia would be likely to mistake the former for the latter, that is to say to think that when he or she saw the word "Provence" (or "La Provence") on the respondents' labels, what he or she saw were the words "Côtes de Provence"? I think not. Indeed the whole AOC system assumes that a purchaser or consumer will look for and value more highly wine identified as coming from an AOC locality than one which is only identified as coming from the region - or from France. In Mme Helin's affidavit, after saying something of the location of Provence and its history as a wine producing area, she deposes:

54. There are eight areas within the Provence region which have their own A.O.C.'s and style. These are "Bandol", "Bellet", "Cassis", "Coteaux d'Aix-en-Provence", "Les Baux-de-Provence", "Côtes de Provence", "Palette" and "Coteaux Varois". The wines from each of these A.O.C.'s is different, although within each A.O.C., wines share the same typicité as explained in paragraphs 89 and 90 below. ["A basic constant essence which is the sum of the unique characteristics or qualities of the particular A.O.C. wine"]

55. ...

56. Each of the above eight areas has long been well known,
both within Provence and within France, as the source of distinctive wines which are themselves known by the same names. As a result, four of the Provence A.O.C's namely "Bandol", "Bellet", "Cassis" and "Palette", were made A.O.C.'s in the 1930's and 1940's (as described in paragraph 50 above).

57. Each of "Côtes de Provence", "Coteaux Varois", "Coteaux d'Aix-en-Provence" and "Les Baux de Provence" was first recognised as a V.D.Q.S. [vin délimité de qualité supérieure] before being elevated to an A.O.C., each having been long recognised as a well-known name of wine emanating from the district of that name, albeit not as of as a high a quality as an A.O.C. wine. When the wines of each became recognised by the I.N.A.O. as of having the necessary reputation and as complying with the relevant typicité considerations and being of sufficient quality, they were promoted to being A.O.C.'s.

(At a later stage Mme Helin deposes that the wine from the eight AOCs within the Provence region are "generally grouped together and are often called `Provence wines' or `wines from Provence' or `wines of Provence'". I do not understand her to be saying that wines grown in Provence otherwise than in the Provence AOC areas would not be "Provence wines" or entitled to protection as such. Indeed the argument of the applicants, which I have upheld, is necessarily to the contrary.)

It is clear therefore that AOC status is something of great value, and something to which a wine growing locality would aspire to be promoted. One might think that a Côtes de Provence AOC vigneron would be the first to protest at any suggestion that the word "Provence" on a label might be taken to mean, or be mistaken as, "Côtes de Provence".

Knowledge Acquired After Proceeding Commenced

My findings in relation to the issue of knowledge means that although the respondents have won this battle, they may lose the
war. I say that because the applicants would be able hereafter to bring to the respondents' knowledge the critical fact that the name "Provence" is on the Register. Therefore any future claim under the Act by the applicants would not fail for lack of the respondents' knowledge and would seem likely to satisfy all the other elements under s 40C. (The claim under s 40E also fails for other reasons.)

Counsel for the applicants argued that the acquisition of knowledge in the course of these proceedings was enough to support an injunction. But even at the date of this judgment there is no evidence on which I could make such a finding. Mr Bryce was not asked as to his knowledge of this matter in cross-examination. Counsel referred to Slazenger v A G Spaulding & Bros (1910) 27 RPC 20 at 24. That was a case of trade mark infringement. Upon demand being made, the defendants offered at once to submit to an injunction and offered £10 nominal damages. The point at issue in the case was whether the plaintiffs had a right to compensation, either in the form of compensatory damages or on account of profits. Neville J, following Edelsten v Edelsten 1 De GS & S 185, held that they did not. The plaintiffs were entitled to an injunction, but that was never in issue. The case is no authority for the proposition that where the defendant's knowledge is an essential element of a cause of action, knowledge not held at the time proceedings commenced but acquired in the course of the proceedings is sufficient to support an injunction.

In any case, I see no reason to depart from the ordinary principle that a claim asserting legal rights and claiming legal remedies must be based on facts proved to have been in existence at the time proceedings were commenced, albeit that those facts may sometimes be of a continuing nature. When this proceeding was commenced on 16 December 1994 that part of the applicants' statement of claim dealing with the claim under the Act pleaded that the respondents have knowingly sold wine

with a false description and presentation and have thereby contravened and threatened and intend to continue to contravene the provisions of s 40C(1)(ii) and 40C(2) of the Act.

Alternatively a claim was made under s 40E. Quite apart from the fact that the applicants have only made out a case of infringement in relation to the name "Provence" as distinct from "Côtes de Provence", what is alleged is a contravention of the Act as at the time proceedings commenced. There was no contravention because, as I find, the respondents did not have the requisite knowledge. Nor was there any continuing contravention in the sense of conduct existing at the time of the commencement of proceedings and continuing thereafter. The applicants' claim for injunction was based therefore on a case which has not been made out. It would not be right to exercise the discretionary power of the Court to grant an injunction with all its serious consequences where the applicants have failed to make out the case on which that relief is sought and have failed on an issue which was plainly in contest from the outset.

Summary of Findings

I find that both the respondents, in trade and commerce, sold wine which had a false description and presentation because the label included the name "Provence", which is a registered geographical indication within the meaning of the Act. However the respondents did not contravene s 40C(1) of the Act because they did not knowingly sell their wine with that false description and presentation.

I find that the respondents did not, in trade or commerce, knowingly sell wine with a misleading description and presentation contrary to s 40E of the Act. The name "Provence" on the respondents' labels did not so resemble the registered geographical indication "Côtes de Provence" as to be likely to be mistaken for it. In any event there was not the requisite knowledge of registration of the name "Côtes de Provence".

Orders

There will be orders that the questions ordered to be heard separately be answered as follows:

1. (a) & (b) (i) No.

(ii) Yes.

(iii) No.

2. (a) & (b) No, although the applicants have standing to bring these proceedings.

3. (iii) No.

There will be an order that the applicants pay the respondents'
costs relating to the trial of questions under O 29 r 2, including reserved costs.

The directions hearing will be adjourned to a date to be fixed by the Tasmanian District Registrar.

I certify that this and the preceding thirty-six (36) pages are a true copy of the reasons for judgment of his Honour Justice Heerey.

Dated:

Associate

Appearances

Counsel for the applicant: Mr D Shavin QC with Ms G Schoff

Solicitor for the applicant: Freehill Hollingdale & Page

Counsel for the respondent: Mr R M Webster

Solicitor for the respondent: R M Webster

Date of hearing: 12 and 13 August 1996

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