Federal Court of Australia

Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd [2024] FCA 248

ORDERS

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 Vieux Château Certan (VCC), is the owner of the Bordeaux wine estate, Vieux Château Certan. For present purposes, VCC 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 New Certan, which is a much cheaper pinot noir as compared with the expensive French wine produced by VCC.

4    The first respondent, Kreglinger (Australia) Pty Ltd (Kreglinger), was registered as a company in Australia on 30 October 1914 and is a sister company of Kreglinger Europe NV.

5    The third respondent, Pipers Brook Vineyard Pty Ltd (PBV), was established in August 1973. It was originally called Tamar Valley Wine Estate Pty Ltd. In 2001, Kreglinger acquired majority ownership of PBV. The vineyards of PBV are located in Tasmania, covering two hundred hectares of low-lying land. PBV owns nine vineyards and manages the Mount Pleasant estate under contract with Mr Paul de Moor, the second respondent, who owns the land. PBV produces and sells wines under or by reference to various names.

6    Mr de Moor was appointed a director of Kreglinger on 1 December 1995 and was appointed the CEO of Kreglinger in 1998. Mr de Moor also became a director of PBV on 21 December 2001 and was appointed its CEO on 1 December 2018.

7    VCC 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 Kreglinger’s registered New Certan trade mark. The essential elements of VCC’s case include the following aspects.

8    First, VCC 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 VCC’s reputation is long-standing, and existed long before the commencement of the respondents’ activities in relation to the New Certan wine. It is said that the reputation covers both the name Vieux Château Certan and the presentation of the wine sold under that name. I should say now that the question of the reputation of VCC and its wines in Australia was the subject of considerable contest before me at trial.

9    Second, it is said that when Mr de Moor set about developing the label for the first vintage of the New Certan wine, which was the 2011 vintage released in 2013, he did so by providing an example of VCC’s wine to the respondents’ designer, Ms Annette Harcus, with instructions to use it as inspiration. Now it is apparent that Mr de Moor was involved in the creation of the overall bottle presentation of the 2011 and 2016 vintages of the New Certan wine. He approved the final presentation and sale of the 2011, 2016 and subsequent vintages of the New Certan wine. There was little contest before me as to the accuracy of such matters.

10    Third, VCC says that as a result of Mr de Moor’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 New Certan wine and the presentation of VCC’s wine. This includes the use of the name Certan, the use of a pink cap and accent colour in the New Certan 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 New Certan wine has been copied from the presentation of VCC’s wine. In large part I have accepted VCC’s case on these aspects. But of course these propositions do not address the proposed new branding of the New Certan wine that in my view substantially removes many of these similarities.

11    Fourth, it is said that the respondents have promoted the New Certan wine by expressly referring to VCC and a family connection to it. In doing so, it is said that the respondents have availed themselves of the fame and reputation of VCC 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 VCC and the respondents in relation to the New Certan wine.

12    Fifth, VCC 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 New Certan wine was in some way connected with or approved by VCC. This has been a substantial area of contest before me and I will discuss this later.

13    Sixth, VCC says that the impression created by the respondents’ conduct to date has been misleading and false in that it has been suggested that the New Certan wine was in a commercial way associated with VCC or its products. It is said that there is no commercial connection between VCC and the respondents, and VCC has not approved or authorised the respondents’ conduct in connection with the New Certan wine. In summary, I would largely agree with VCC in relation to the respondents’ past conduct.

14    Seventh, it is said that Mr de Moor has been the driving force behind the New Certan wine. 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 Kreglinger and PBV and has been knowingly involved in the relevant sense. Generally speaking I have agreed with VCC on this aspect of the case.

15    Now for the reasons that follow, I have largely accepted VCC’s case as to the respondents’ past conduct.

16    But the present proposal by Kreglinger and PBV to adjust the presentation of the New Certan wine 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. Kreglinger is the registered proprietor of Australian trade mark no. 815277 for the words New Certan 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, VCC 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 VCC’s wines ([124] to [156]);

(d)    Evidence of reputation or consumer awareness ([157] to [214]);

(e)    The previous design and packaging of the New Certan wine ([215] to [263]);

(f)    The significant resemblance between the New Certan wine and VCC’s wine ([264] to [318]);

(g)    The new branding for New Certan ([319] to [353]);

(h)    VCC’s claims under the ACL and in passing off ([354] to [543]);

(i)    VCC’s claim against Mr de Moor – accessorial liability ([544] to [551]);

(j)    Cancellation of Kreglinger’s registered trade mark for New Certan ([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 VCC vineyard estate is located in Pomerol in the Bordeaux region of France, and lies to the east of the Dordogne River. It is part of the wine making region of Bordeaux that is referred to as the Right Bank.

22    The VCC estate was originally granted by royal decree to a Scottish family – the de Mays – in the late sixteenth century. The name in its current form, “Vieux Château Certan”, has existed in local records in Pomerol since 1745. It is one of several vineyards established in the original “Sertan” estate, which also include Château Certan de May and, until about 20 years ago, Château Certan-Giraud. “Certan” is recorded as the name of a place in the French equivalent of the Titles Office.

23    The modern history of VCC began in 1924 when Georges and Josephine Thienpont purchased the VCC wine estate. Georges Thienpont was working in the Thienpont family wine merchant business in Belgium at that time and travelled to Bordeaux to source wines. Georges Thienpont produced his first vintage of wine from the estate in 1924, and the wine was given the same name as the wine estate, Vieux Château Certan. In order to be precise I will from hereon refer to this particular product as the VCC Wine. The VCC Wine has been produced since that time, and is made from a mix of Merlot, Cabernet Franc and Cabernet Sauvignon grapes.

24    Further, in 1946, Georges Thienpont purchased an adjacent parcel of land known as Clos de la Gravette, which was amalgamated into the VCC wine estate.

25    The management of the VCC estate was passed from Georges Thienpont to his sons, Léon and George Thienpont, and in 1985 to Léon’s son and the current manager, Mr Alexandre Thienpont, who gave evidence before me. Mr Thienpont and his immediate family have lived on the VCC estate since 1965.

26    Now VCC itself was incorporated in 1957. It is operated by way of a management committee, the membership of which is determined by the shareholders of VCC. It is convenient to note here that Mr de Moor is not and has never been a member of the management committee of VCC or an employee of VCC.

27    In 1985, Mr Thienpont introduced a second wine for VCC, which was the La Gravette de Certan. In order to be precise I will describe this as the Gravette Wine. The Gravette Wine is also made from Merlot, Cabernet Franc and Cabernet Sauvignon grapes.

28    The VCC Wine and the Gravette Wine are each the subject of limited annual production. Each year VCC produces between 30,000 to 50,000 bottles of VCC Wine and approximately 10,000 to 20,000 bottles of Gravette Wine.

29    But sales of VCC’s wines in Australia have been very limited. The only evidence before me of sales of the VCC Wine shows that a few thousand bottles of the VCC Wine were sold over the past 25 years. Further, the only evidence of sales of the Gravette Wine shows that around eleven bottles were sold in the period 2012 to 2020.

30    The VCC Wine retails for between approximately $600 and $800 per bottle. To the extent the Gravette Wine 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 Mr de Moor. Mr de Moor is the great-grandson of Mr Georges Thienpont, the Belgian wine merchant who was responsible for acquiring the VCC estate in 1924. Mr de Moor is the grandson of Mr Georges Thienpont’s only daughter, Mrs Marie-Louise Thienpont. Mrs Thienpont was the eldest child of Mr Georges Thienpont, and she chaired VCC’s annual general meetings following his death in 1962 until she died in 1995. Mr de Moor’s mother, Mrs Marie-Louise Heymans, is the eldest child of Mrs Thienpont. She chaired VCC’s annual general meetings from her mother’s death in 1995 until about 2016. Mr de Moor is a shareholder of VCC, which shares he received from his mother in 2010.

32    Now Mr de Moor claims a strong and authentic familial connection with VCC and members of the Thienpont family. And of course it cannot be disputed that Mr de Moor is a member of the Thienpont family.

33    So, to the extent that it is or has been represented by Mr de Moor or others that he has a familial connection with VCC, 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 Kreglinger and PBV on the one hand and VCC 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 IRI MarketEdge, the International Wine and Spirit Record (IWSR) and Statista, 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 IWSR 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 IWSR. 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 Bordeaux 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)

50    Table 2 relates to data collected by IRI MarketEdge, 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: IRI MarketEdge)

51    Table 2 shows that wines from the Bordeaux 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 Bordeaux 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 Wine Business Solutions 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: Wine Business Solutions)

53    Table 3 shows that wines from the Bordeaux 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, Bordeaux wines have a higher proportion of listings on wine lists and menus compared to Bordeaux'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 New Certan wine 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, Henschke, 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    Now Mr Jeremy Oliver, 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    Mr Oliver 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. Mr Oliver 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 Haut-Brion.

74    I will return to the question of consumer classes later.

What do Australians know about Bordeaux and Bordeaux 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 Bordeaux, 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 Bordeaux, such as Lafite and Latour, and maybe Haut-Brion from Graves. 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    Mr Oliver commented on the knowledge that Australian consumers typically buying wine for around $70 to $100 per bottle would have of Pomerol in Bordeaux, and further VCC.

77    Only a tiny percentage of Australian wine consumers would have heard of the Bordeaux sub-regions, less would be aware that there is a Right Bank area and a Left Bank area, less again would be aware of Pomerol, and less again would be aware of VCC. Serious wine collectors and people who buy Bordeaux wine every year will be aware of Pomerol.

78    Mr Oliver commented on the type of consumer who would purchase a bottle of wine from Pomerol 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 Bordeaux and Burgundy are often quite different people. If you are spending $500 buying a wine from Pomerol, you are a rare customer. People who collect wines from Pomerol and Right Bank châteaux are typically deeply engaged with Pomerol and its wine, which is what drives up the prices of Right Bank wines. People who are buying such Bordeaux 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 Pomerol 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 Bordeaux 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, Mr Oliver 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 Pomerol 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 Pomerol 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 Bordeaux wine.

84    Further, Mr Oliver 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 Bordeaux 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.

VCC’s witnesses

88    As I have said, Mr Thienpont is the manager of VCC. He gave evidence about the history of the VCC wine estate, the history of VCC, the way in which VCC’s wines have been labelled over time, the sale and promotion of the VCC wines, VCC’s discovery and reaction to the New Certan wine and the absence of any commercial connection between VCC and the respondents. Mr Thienpont was cross-examined very briefly, but the substance of his evidence was not challenged.

89    Mr Huon Hooke 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 Bordeaux region and the Pomerol sub-region and the extent of their reputation in Australia, the involvement of French wine producers in Australian wine businesses, the reputation of the VCC wine estate and its wines in Australia, the presentation of VCC’s wines and his experience of the New Certan wine. Mr Hooke was cross-examined briefly.

90    Ms Jane Faulkner 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 VCC wine estate and its wines in Australia, the presentation of VCC’s wines and her experience of the New Certan wine. Ms Faulkner was cross-examined briefly. Ms Faulkner was a straight-forward witness. She gave short and sharp answers to the questions asked.

91    Mr Daniel Airoldi is a wine importer and distributor with more than a decade’s experience in the Australian wine industry and a particular interest in Bordeaux wines. He gave evidence about how Bordeaux wines are typically sold, the reputation of the VCC wine estate and its wines in Australia, and his experience of the New Certan wine. Mr Airoldi was cross-examined.

92    Mr Andrew Caillard MW is a Master of Wine, which is a prestigious international wine qualification. His particular areas of expertise are the wines of Bordeaux and the Australian wine auction market. He gave expert evidence about how Bordeaux wines are typically sold, the reputation of the VCC wine estate and its wines in Australia, the presentation of VCC’s wines and his reaction to the New Certan wine. Mr Caillard was cross-examined.

93    Mr Timothy Evans is the National Business Manager of Imported Wines at Negociants Australia, an Australian wine distributor; the business is operated by Samuel Smith & Son Pty Ltd. He gave evidence about the promotion and sale of Bordeaux wines in Australia, including the VCC Wine, but was not cross-examined.

94    Mr Philip Rich 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 VCC wine estate and its wines in Australia, but was not cross-examined.

95    Mr John Myers is a director of Dunkeld Pastoral Co. Pty Ltd, which operates the Royal Mail Hotel at Dunkeld. He gave evidence about the availability and promotion of the VCC Wine at the Royal Mail Hotel, but was not cross-examined.

96    Ms Caroline Ryan is the solicitor for VCC who gave evidence in relation to publications available in Australia which refer to the VCC wine estate and its wines and publications referring to the New Certan wine. She was not cross-examined.

97    Let me at this point say something more about VCC’s witnesses.

98    To support its claimed reputation in, or consumer recognition of, the VCC features and the word “Certan”, VCC 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 Bordeaux region. In fact, each of them has spent time in the Pomerol area, and many of them have visited and dealt directly with VCC in their professional capacity. Contrastingly, none of them are marketing or branding experts.

99    VCC 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    VCC’s only attempt to identify the trade was to lead evidence from experts with a high degree of knowledge of and an interest in Bordeaux wines, many of whom have esoteric and idiosyncratic personal experiences.

101    In particular and as I have indicated, Ms Faulkner is a wine writer who has travelled to leading wine regions, including in the sub-region of Pomerol, since the late 1990s for her professional development which Ms Faulkner said are an important part of learning about these regions, the vineyards, the producers and their wines. She has read extensively on the Bordeaux region and its wines, including the VCC wines. She has written on wines and wine producers from the Bordeaux region, including the VCC wine. She attended the 2011 dinner at Jacques Reymond that I will discuss later.

102    Mr Hooke studied the Bordeaux wine region of France as part of an Associate Diploma in Wine Marketing and Production in 1980 and 1981. He now teaches about the Bordeaux 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 Bordeaux. He has written about French wines, including wines from Bordeaux, since 1983. He has published a number of reviews on the VCC wine.

103    As I have said, Mr Caillard is a Master of Wine. He has over 42 years of experience, which commenced with four months working in the Bordeaux region. He has read extensively about wine regions and wine producers. In 1989, he established and managed the Sydney office of Langton’s Fine Wines, a specialist fine wine auction house. From 2003 onwards, Mr Caillard regularly travelled to Bordeaux to source wines for Langton’s, including from VCC. He has visited the VCC estate on many occasions.

104    Mr Rich is a wine professional who has been involved in sourcing and selling a range of French wines, including from Bordeaux, from at least 1996 when he founded Prince Wine Store. He taught an introductory French wine course, which focused on Bordeaux, Burgundy, Champagne and Rhône. He attended Bordeaux en primeur week in 2011, which included tasting the VCC wine.

105    As I have said, Mr Airoldi is a wine professional who has a particular interest in Bordeaux wines. He is originally from Pessac, an outer suburb of Bordeaux, and would cycle around Pomerol from time to time and pass the VCC wine estate when he was growing up. He has experience in the French wine industry, in which context he was involved in the 2010 Bordeaux en primeur campaign. He has completed wine qualifications, which included studying Bordeaux wines. He is completing his Master of Wine studies. From 2012, he has travelled to Bordeaux each year for en primeur week and to visit négociants and Châteaux contacts. He has taught subjects on Bordeaux wines.

106    Mr Evans has worked in the wine industry since 1993. He has been the National Business Manager of Imported Wines at Negociants Australia since 2007. He travelled to Bordeaux including Pomerol in 1996 whilst in France working a vintage in another wine region, and in the last 22 years, has attended or hosted dozens of Bordeaux wine-tasting events.

107    And as I have said, Mr Myers is a director of the company which owns and operates The Royal Mail Hotel 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 Mr Myers, his father began purchasing and importing VCC wine in the mid-1980s. Mr Myers has travelled to Pomerol as recently as 2017, at which time he was given a tour of the VCC by Mr Thienpont.

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 Pomerol region generally, let alone knowledge of VCC or its wines specifically, and more particularly of the VCC features or the name Certan and any particular association between those features and VCC, caution must be exercised.

109    Let me say something about the respondents’ witnesses.

The respondents’ witnesses

110    Mr Craig Devlin is a director of both Kreglinger and PBV. He gave evidence about the management of Kreglinger and PBV and the sale of the New Certan wine. Mr Devlin was cross-examined.

111    Mr Oliver is a wine author and critic. As I have indicated, he gave evidence about the Australian wine market and consumers, the Bordeaux and Burgundy wine regions, naming and labelling practices for Bordeaux wines, the VCC wine estate and its reputation in Australia and the New Certan wine and his reaction to it. Mr Oliver was cross-examined, and occasionally was a little testy. To the extent that there is a conflict between the evidence of VCC’s experts, namely Mr Hooke, Ms Faulkner and Mr Caillard, and the evidence of Mr Oliver, on some topics I have preferred the evidence of Mr Oliver.

112    Mr de Moor is a director and the CEO of both Kreglinger and PBV. He gave evidence about the operations of Kreglinger and PBV, his family history, his shareholding in VCC, his understanding of the name Certan, his knowledge of VCC and its wines, and the development, promotion, labelling and sale of the New Certan wine. Mr de Moor was cross-examined. Some aspects of Mr de Moor’s evidence were not reliable.

113    Ms Annette Harcus is the creative director of Harcus Design who gave evidence about the process of designing the packaging of the 2011 and 2016 vintages of the New Certan wine. She was not cross-examined.

114    Ms Sandra Hathaway 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    Mr Jonathan Kelp is the solicitor for the respondents who gave evidence in relation inter-alia to the third party use in Australia of the name Certan, 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 Certan or pink or similarly coloured capsules, but he was not cross-examined.

116    Ms Rebecca Pereira is also one of the solicitors for the respondents who gave evidence about a visit to a Dan Murphy’s 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    Ms Julia Kingwill 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 VCC introduced a new foundation for its alleged misrepresentations, namely, the promotion of the New Certan wine on the basis of Mr de Moor being related to the Thienpont family of VCC and having a connection with the VCC wine estate. But that allegation relied upon various articles, all of which were published from July 2018 onwards and being after the relevant date.

120    Second, VCC also tendered copies of communications between employees of Kreglinger and representatives of Dan Murphy’s, Coles and Winestate Magazine from November 2020 onwards in relation to the New Certan wine, but those communications also occurred after the relevant date.

121    Third, although VCC has relied on various documents as evidence of how the respondents promoted the New Certan wine 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 VCC’s wines

124    Although there have been some changes over time, the presentation of both the VCC Wine and the Gravette Wine have been largely consistent for decades. The presentation of VCC’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 Certan, as a prominent part of the names Vieux Château Certan and La Gravette De Certan. Further, the label uses a pink font for the first letters of the name of the wine (Vieux Château Certan and La Gravette de Certan). Further, as to the label, in the case of the VCC Wine, the name Vieux Château Certan means “Old Chateau Certan” or “Old Certan Estate”, the words Grand Vin mean “great wine”, and Mis En Bouteille Au Château mean “bottled at the estate”, in pink font. Further, there is a centrally located image of a stately house known as the Vieux Château Certan, which is located on the wine estate owned by VCC. Further, there is a fluted edge profile.

127    These VCC features are in many respects distinctive and unusual.

128    The pink capsule appears as follows:

129    Earlier vintages of the VCC Wine and Gravette Wine were sold with the front labels depicted below:

130    Earlier vintages of the VCC Wine and Gravette Wine were sold with the rear labels depicted below:

131    Recent vintages of the VCC Wine and Gravette Wine 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    Mr Hooke gave evidence, which I accept, that the visual presentation of VCC's wines was distinctive and unusual. He said that the pink capsule used on the VCC Wine and Gravette Wine were distinctive and unusual. He also said that the labels of both the VCC Wine and Gravette Wine 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    Mr Caillard gave evidence that with respect to VCC, the name Vieux Château Certan appears prominently on the label, together with an image of the Château 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 VCC wine labels convey a sense of history, place and prestige. He said that VCC is also distinguished by the use of the pink capsule. He regarded this capsule colour as unusual for Bordeaux wines, and when he saw VCC wines amongst other Bordeaux wines, they stood out to him for this reason. The pink capsule has become part of the narrative of the VCC wines as it has a widely reported historical story attached to it. I accept his evidence on these aspects.

135    Mr Caillard also agreed that the name of the wine, Vieux Château Certan or La Gravette de Certan, 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 VCC Wine and the Gravette Wine is unique for Bordeaux, and successfully conveys the product narrative and sense of history, place and prestige of VCC. The name of the wine is prominent, with pink font used as the first capitalised letter of each word in the name ‘Vieux Château Certan’ and 'La Gravette de Certan'. This same pink colour is used for the words Grand Vin and Mis En Bouteille Au Château. Further, the wine labels feature a reference to the Thienpont family. Further, he said that the pink capsule of the VCC wines 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    Mr Rich also said that to his mind, VCC bottles are memorable, particularly when compared to other Bordeaux 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 Bordeaux 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    Now Mr Oliver maintained that in respect of the VCC Wine, the most important aspect of its presentation was its name, rather than the distinctive aspects of its appearance. But Mr Oliver’s approach did not give proper weight to the importance of the overall presentation of the VCC Wine for both consumers and the trade. Further, the body of evidence before me amply supports the conclusion that the overall presentation of VCC’s wines is distinctive, notwithstanding that it shares some individual features in common with other wines.

138    Further, the name Certan has some association with VCC and its wines, but also other producers who use the name Certan. But VCC 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 VCC sells its wines.

140    VCC sells its wines through a structured market known as La Place de Bordeaux, which is widely used by the premium wine estates of Bordeaux. 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 Bordeaux. The en primeur campaign is conducted annually. Over the course of several weeks from March to May, VCC 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    VCC 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 VCC’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 La Place de Bordeaux, VCC’s wines are also sold through two separate wine negociant businesses that are operated by other members of the Thienpont family, namely Thienpont Wine in Etikhove, Belgium, and the Bordeaux based Wings.

143    VCC 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 VCC wine estate.

144    Further, the VCC wine estate and its wines have been referred to extensively in wine books and wine magazines including Wine Spectator, World of Fine Wine, The Wine Advocate and Gourmet Traveller Wine. These have been published internationally and in Australia. VCC 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 VCC has been described to international and Australian audiences over recent decades:

145    In Bordeaux by David Peppercorn (1982) it was said:

Vieux Château Certan

One of the few growths of Pomerol to boast a fine château. 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 Thienpont brothers, Belgian wine merchants whose father bought the property in 1924. Originally, it had belonged to the Demay family, who sold it in 1850 to Charles Bousquit.

This has always been regarded as one of the top growths of Pomerol, 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 Finest Château of Bordeaux and Their Wines by Clive Coates (1995) it was said:

Vieux Château Certan, 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, Vieux Château Certan can compete, if it so wishes, with L'Evangile, La Conseillante, Lafleur and Trotanoy for the title of number two in the commune of Pomerol.

…

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 Georges Thienpont'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 Certan.

…

Vieux Château Certan 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. Since Alexandre Thienpont has been in charge the intensity of the wine has, if anything, increased even more ...

147    In Pomerol by Neal Martin (2012) it was said:

In recent years, a succession of fêted vintages has firmly installed Vieux Château Certan in the top echelon of Pomerol 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 Vieux Château Certan as the epicentre of Pomerol, 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 Georges Thienpont 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 VCC Wine has been to a limited extent sold in Australia since at least the 1980s, including through a major Australian wine distributor, Negociants Australia, and through auction houses such as Langton's.

150    In relation to the VCC Wine, the records of Negociants Australia date back to the sale of the 1995 vintage, which wines were delivered to customers in Australia in 1998. Those records show that the VCC Wine has been sold by Negociants Australia since that time.

151    Moreover, it has also been promoted and sold through prominent retailers such as The Prince Wine Store in Melbourne, through tasting events and restaurants.

152    PBV itself has promoted and offered for sale the VCC Wine, along with the wine of Château Le Pin in Australia. Kreglinger has been promoting the VCC Wine since at least 2011. It appears that Kreglinger obtained these wines from its Belgian parent company.

153    On 21 February 2011, Kreglinger invited guests to attend an Armadale Cellars dinner at Jacques Reymond in Melbourne which featured vintages of the VCC Wine with vintages of the Château Le Pin wine. The Kreglinger invitation included images of both the VCC Wine and Le Pin wine labels, and stated “[b]oth estates are recognised as two of Bordeaux’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 VCC Wine and the Château Le Pin wine were also featured in trade brochures issued by PBV in 2016, 2017 and 2019. Those trade brochures contain images of the full bottle presentation of the VCC Wine and the following description of VCC and the VCC Wine: “[t]he Vieux Château Certan estate is located in the heart of the Pomerol plateau. Fermented in oak vats and aged in new French oak barrels, Vieux Château Certan is regularly ranked by the world’s press and international tasting panels among the very top wines. With its brilliant dark garnet colour, outstandingly rich 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 VCC Wine and New Certan wine in the same document. But I do not accept VCC’s assertion that this in and of itself suggests a commercial link between the New Certan wine and VCC and/or the VCC Wine.

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 VCC gave evidence as to the nature and extent of the reputation of VCC and its wines in Australia.

158    Mr Hooke gave evidence that in his experience both VCC and the VCC Wine 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 VCC and its wines in Australia has increased over time and he also said that VCC 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 Bordeaux, such as the consumers and professionals who have attended his Bordeaux 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    Ms Faulkner gave evidence that in her experience in the wine industry, VCC is an internationally renowned wine estate in Pomerol. It has produced a famous red wine of the same name, the VCC Wine, for nearly a century, and since the mid-1980s has produced the Gravette Wine.

160    Further, Mr Caillard stated that based on his 42 years of experience in the wine industry, and in particular, his many years of experience selling Bordeaux wines at auction, he believed that VCC is regarded as one of the great producers of the Pomerol 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 Bordeaux wine, both in Australia and internationally. In his experience, the VCC Wine is a highly regarded, ultra-fine Bordeaux 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 VCC Wine or the Gravette Wine. 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    Mr Caillard also said that serious wine collectors and people who buy Bordeaux wine every year will be aware of the Pomerol sub-region of Bordeaux. However, he did not agree that, even amongst this cohort, recognition of VCC or its wines will be limited. He believed that those with an interest in Bordeaux wines who purchase vintages year on year would be aware of both the Pomerol sub-region and its most famous producers, which in his view included VCC. In his experience of working at Rushton and with Langton's, these consumers who purchase Bordeaux wines annually are likely to know of VCC, and are, in many cases, likely to have had the opportunity to purchase and taste its two wines.

162    Mr Oliver appeared to suggest that the reputation of VCC and its wines was less significant in Australia than the views of Mr Hooke, Ms Faulkner and Mr Caillard would indicate. However, he agreed that VCC is a well-known, respected château. 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 Bordeaux wines.

163    Now VCC 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 VCC Wine and the Gravette Wine, the name Certan only, and the combination of the VCC features. But VCC has abandoned its claim concerning the name Certan only. It opened its case on the basis that it did not claim that its reputation accrues in relation to the name Certan simpliciter. It accepted that it kept company with the rest of the words and markings on the label and more generally the VCC 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 VCC 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 VCC wines is reflected in the evidence of sales. When taken at its highest, the evidence shows that VCC has sold only a few thousand bottles of the VCC Wine in Australia since 1989, and the evidence shows that only around 190 bottles of the Gravette Wine 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 VCC Wine are likely to represent around 0.01% of Bordeaux red wine, and less than 0.002% of French red wine, sold in Australia since 1989.

167    Sales of Bordeaux 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 VCC 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 VCC per year, this represents less than 0.002%.

Promotional or marketing activities

169    The evidence establishes that VCC does not engage in promotional or marketing activities in Australia or directed to Australian consumers.

170    VCC appears to accept this, but it relies upon the promotion of its products by Australian resellers or distributors, such as Negociants Australia and Airoldi Fine Wines, at auction houses such as Langton’s, and at prominent retailers such as Prince Wine Store.

171    Negociants Australia has offered the VCC Wine for sale as part of its portfolio of Bordeaux wines since at least 1996. But there is no evidence of promotion of the VCC Wine by Negociants Australia in any relevant sense. The VCC Wine 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 Negociants Australia lists.

172    Airoldi Fine Wines has offered the VCC Wine for sale as part of its portfolio of Bordeaux wines since 2012. Again, the VCC Wine is one product in a list of many other wines. The product itself is not depicted. Whilst Mr Airoldi 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 VCC Wine. In the first of those tastings in March 2016, the VCC Wine was featured as one of 30 wines on that evening. In the second in September 2018, the VCC Wine was one of 50 wines. And whilst Mr Airoldi gave evidence of conducting annual tours to Bordeaux, the only evidence of visiting the VCC estate relates to a small group of between 8 to 10 Australian customers in October 2017. On a similar tour in 2019, Mr Airoldi did not visit the Pomerol region, let alone the VCC estate, apparently for no specific reasons. VCC similarly did not feature on the brochure for the 2021 tour.

173    Now Langton’s commenced its own Bordeaux en primeur campaign in 2004, and in that context sourced and imported wines from Bordeaux including the VCC Wine. It sold the VCC Wine at auction prior to that time from about 1989. The evidence includes a copy of the Langton’s Vintage Price Guide published in 1991, which exemplifies how the VCC Wine was promoted at that time. In short, a few vintages of the VCC Wine are located amongst hundreds of listings in the “Red Bordeaux” section of a 200+ page book. Château Certan de May and Château Certan-Giraud also appear in the guide. The VCC Wine is now available via the Langton’s website. I must say that the evidence of sales via Langton’s was underwhelming.

174    Further, Prince Wine Store secured VCC’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 Prince Wine Store for its customers. In those campaigns, the VCC Wine appeared amongst a long list of Bordeaux wines, with no particular prominence and no images of the product. Mr Rich gave evidence that the VCC Wine was featured with other exclusive Pomerol wines such as Petrus and Château Lafleur 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 Bordeaux wines. There is no evidence indicating the volume of sales of the VCC Wine via Prince Wine Store.

175    The other example of promotional activity is a VCC and Le Pin dinner at Jacques Reymond in February 2011. This event was hosted by Kreglinger, as it coincided with a visit to Australia by Jacques Thienpont and his wife to attend an event for Mr de Moor’s 50th birthday. It was a one-off event which took place several years before the 2011 vintage of the New Certan wine was released onto the market.

176    Moreover, save for generalised assertions by Mr Rich, there is no evidence of any specific promotional events involving the VCC Wine in Australia prior to 1999.

The relevance of the wine press?

177    VCC 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    Mr Hooke’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. Mr Hooke 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, Mr Hooke 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 Bordeaux. Despite this, putting aside tasting notes, there is only one article in evidence written by Mr Hooke which refers to VCC.

180    Ms Faulkner’s evidence is that she similarly tastes and reviews about eight thousand wines a year, being both international and local. Despite that evidence, Ms Faulkner did not encounter the New Certan wine until she was asked to review the 2018 vintage in January 2020.

181    Between 2009 and 2014, Ms Faulkner wrote around 250 weekly columns and 60 feature articles for The Age and The Sydney Morning Herald, only two of which (on 27 November 2007 and 8 March 2011) mentioned VCC at all. Neither of those two articles depicted VCC product labels. She also wrote feature articles for numerous other publications including Gourmet Traveller Wine magazine for around 10 years, Wine-Searcher, Halliday Magazine from 2016, Wine Companion from 2016, Meiningers Wine Business International, Le Pan and Falstaff, but did not suggest in her evidence that any article in any of those publications made any mention of VCC.

182    Mr Oliver’s website has reviewed or referred to many thousands of wines since its inception. The VCC Wine is not mentioned on the website. At the time he reviewed the New Certan wine, Mr Oliver was receiving upwards of 10,000 bottles in a year and tasting about 4,000 a year or 150 wines in a day.

183    Mr Oliver has written articles about wine in Australian newspapers and magazines since the mid-1980s, including The Age and The Sunday Age, Winestate, Wine and Spirit Buying Guide, The Australian Way (Qantas’ travel magazine), Gourmet Traveller Wine Magazine, Business Review Weekly, The Bulletin, Marie-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. Mr Oliver has not written any articles or reviews in relation to the VCC wines.

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 VCC wines. The presence of reviews of the VCC wines amongst the many thousands of reviews published every year does not establish consumer recognition of the VCC wines, let alone a reputation in the VCC features or the word “Certan” such that they distinctively indicate VCC 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 VCC 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 New Certan wine.

187    Further, as at 1999, there is only one potential article in evidence. The article contains only a brief reference to Mr Thienpont and the VCC estate and does not include any images of the VCC Wine. The article, written by Julia Mann and titled ‘Earliest Bordeaux Harvest since 1893’, was apparently published in The Wine Spectator magazine in 1997 according to Mr Thienpont, but he does not give evidence of this publication. Mr Thienpont’s evidence refers only to the article as published on The Wine Spectator 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 VCC, from anywhere worldwide. And of those articles, the following points may be made.

189    First, only one includes an image of the VCC Wine, 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, The Wine Spectator.

191    Third, the remaining articles were published in print or online at jancisrobinson.com, which is an online wine publication that has a limited audience, The Age (in Ms Faulkner’s Cellar Door column), The Sydney Morning Herald, The World of Fine Wine (an English magazine dedicated to wine), and Australian Gourmet Traveller.

192    Fourth, with the exception of The Sydney Morning Herald 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 New Certan wine.

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 Mr Hooke’s and Ms Faulkner’s articles to stumble upon one that mentions VCC 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 VCC, none of which include an image of the packaging. Of these articles, seven were published in The Wine Spectator. With the exception of one article in The Tasmanian Times, the remaining publications are directed to consumers with an interest in fine wine: Gourmet Traveller Wine, the UK based website jancisrobinson.com, The Wine Advocate, The World of Fine Wine, Langton’s, and Winetitles Media.

The extent of social media?

196    Now VCC 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 VCC 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 VCC in the eight-year period between 2014 and May 2021. Of these posts, only three depict the VCC Wine 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 VCC is an image taken by Mr Airoldi and posted to his Instagram account on 20 August 2021, which depicts cases of Bordeaux wines imported into Australia. Mr Airoldi states that these cases include the VCC wines, however the image is unclear.

199    Now there is a post of the VCC Wine alongside two other French wines on the Instagram and Facebook accounts of the Royal Mail Hotel in Dunkeld, Victoria on 18 January 2017 and 27 March 2018, respectively. This image was intended to promote the hotel’s extensive Bordeaux, Burgundy and French wine collection. The posts do not reference VCC 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 the Royal Mail Hotel account.

200    Finally, let me say something about Mr Caillard’s evidence. He could not remember posting an image of the New Certan wine 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 New Certan wine. Plainly, Mr Caillard did not see social media as an important tool for communicating with consumers about wine.

A little about books

201    Now the VCC wines 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 VCC Wine 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 VCC Wine, which does not include the fluting edging or a pink cap. And of the limited publications between 1999 and 2013, only one depicts the VCC 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 VCC Wine, which is limited to the label alone.

Wine lists at restaurants

204    Now VCC relies upon the presence of the VCC wines on wine lists at Australian restaurants.

205    Mr Myers gave evidence that the Royal Mail Hotel has promoted, offered for sale and sold the VCC Wine in Australia for many years. But otherwise there is no evidence of wine lists including the VCC Wine prior to 1999.

206    Further, as at 2013, the evidence of the VCC Wine appearing on restaurant wine lists in Australia rises no higher than Mr Airoldi’s recollection of its inclusion on the Jacques Reymond wine list. Mr Airoldi gives examples of restaurants that purchased the VCC Wine 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 VCC wines. In Ms Faulkner’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 VCC Wine appearing on wine lists in Australia and no evidence regarding the Gravette Wine. In any event, the mere presence of the VCC Wine on wine lists in Australia is insufficient to establish a reputation in the VCC features. To the extent the VCC Wine 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 VCC Wine on a wine list, they are also likely to be exposed to other wines that use the name “Certan”.

210    Mr Hooke was taken in cross-examination to the current wine list for Catalina Rose Bay, 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. Mr Hooke noted the 1982 vintage Château Certan de May de Certan on that list for $2,200, which was one of the wines that he was selling at Halvorsen in the early 1980s.

211    That 1982 Château Certan de May also appears on the May 2022 wine list of the Royal Mail Hotel in Dunkeld, at the top of the section devoted to Pomerol wines. The Royal Mail Hotel won the World of Fine Wine magazine’s 2021 award for Best Long Wine List in the world.

212    The 2010 vintage of Château Certan de May appears on the current wine lists of two upper middle-class Melbourne restaurants, Attica in Ripponlea and Donovans in St Kilda.

213    The 2015 vintage of Croix de Certan appears on the current wine lists of various restaurants around Australia including Aria Restaurant, an upmarket restaurant in Sydney, Bathers’ Pavilion at Balmoral Beach, another apparently upmarket restaurant in Sydney, and Bouzy Rouge in Richmond, Melbourne.

214    Let me now say something concerning the New Certan wine.

The previous design and packaging of the New Certan wine

215    The presentation of the New Certan wine has had the following features. I am not in this section dealing with the proposed re-branding for the New Certan wine 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 Certan, as a prominent part of the name New Certan, and the use of a pink font for the first letters of the name of the wine (New Certan). Further, there appears the words Société Anonyme Kreglinger. Société Anonyme is a designation used for private companies in France. Further, there appears Mr and Mme Paul de Moor, Propriétaire Mount Pleasant Launceston. 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 Certan, as a prominent part of the name New Certan, the use of a pink font for the first letters of the name of the wine (New Certan), 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 New Certan wine was the 2011 vintage, which was released in 2013. The following subsequent vintages of the New Certan wine have also been released: 2016, 2017, 2018, 2019 and, very recently, 2021.

220    The first vintage of the New Certan wine being the 2011 vintage was sold with the label depicted below, which featured the prominent depiction of Mr de Moor’s family home on the Mt Pleasant Estate vineyard in Tasmania:

221    The next vintage of the New Certan wine being the 2016 vintage was sold in the packaging depicted below, which still featured the prominent depiction of Mr de Moor’s home:

222    Later vintages of the New Certan wine were sold in the packaging depicted below:

223    Let me go back into the history a little more.

224    Mr de Moor gave instructions to Ms Harcus of Harcus Design in relation to the design and packaging of the New Certan wine 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 New Certan wine and VCC or its wines.

225    According to Mr de Moor, the development of the New Certan wine 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    Mr de Moor explained that his motivation for creating the New Certan wine, and the use of the word “Certan” as part of that name, was to create a wine of exceptional quality to pay homage to his great-grandfather, Georges Thienpont, and to the generations of the Thienpont family including his grandmother which inspire and motivate him in his commercial endeavours to this day.

227    The New Certan wine 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 New Certan wine retails for around $75 to $95 per bottle. As of 30 June 2022, 10,510 bottles of New Certan wine had been produced from the 2011, 2016, 2017, 2018, 2019 and 2021 vintages, and 5,371 bottles of New Certan wine had been sold. By that time, sales of the New Certan wine generated a total of $193,934 in revenue.

229    VCC first became aware of the New Certan wine in about April 2014, when Mr Thienpont 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 New Certan wine was presented.

230    On 3 April 2014, Mr Thienpont sent an email to Mr de Moor in the following terms:

Just a question to ask you: New Certan Pinot 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 Mr de Moor and Mr Thienpont over the course of the next eight days.

233    On 5 April 2014 there was an email from Mr de Moor to Mr Thienpont saying:

New Certan Pinot Noir is not an April Fool's joke, Alexandre, but my tribute to the living soul of my great-grandfather Georges Thienpont; 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 Etikhove to invest in Pomerol.

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 Mr Thienpont to Mr de Moor saying:

I received your email of 5 April and thank you very much.

You tell me: "The New Certan Pinot Noir 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 Vieux Château Certan, 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 Vieux Château Certan 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 Vieux Château Certan 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 Paul, is what your bottle, the branding of which is too close to that of the Vieux Château Certan, inspires in me.

I look forward to hearing from you.

235    On 11 April 2014 there was an email from Mr de Moor to Mr Thienpont 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 New Certan 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 New Certan, 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 New Certan iconography from the network and you should note that the commercial production of 12 dozen 2011 New Certan Pinot Noir 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    Mr de Moor in his evidence said that the assurance he provided related to the then current trade dress of the New Certan wine, but was not any form of assurance about the use of the name New Certan in the future.

237    Mr de Moor passed on the substance of his communications with Mr Thienpont to Mr Devlin at some point between April 2014 and January 2016. Mr Devlin could not recall exactly when this occurred, but he thought it was likely to be shortly after the exchange.

238    Now from VCC’s perspective, having received Mr de Moor’s assurance about the cessation of the conduct, the matter rested there until 2018, when Mr Thienpont became aware of the 2016 vintage of the New Certan wine.

239    However, almost immediately after this exchange of correspondence in April 2014, the respondents took various steps.

240    Mr de Moor set about making some very minor modifications to the label of the New Certan wine, namely, replacing the words “Mount Pleasant” with the word “Tasmania”, removing the text “Appellation Tasmania Controlee”, and replacing “Product of Australia” with “Fine Wine of Australia”.

241    Once those changes were made, the front label of the New Certan wine remained the same for the 2016, 2017, 2018, 2019 and 2021 vintages. The respondents did not at any time consult Mr Thienpont or VCC about these changes to the label or the use of the modified label.

242    Further, on 17 April 2014 Kreglinger 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 Mr Thienpont or VCC.

244    Further, in May 2015, Mr de Moor instructed Mr Devlin to register the domain name newcertan.com. Again, no notice of this was given to Mr Thienpont or VCC.

245    Further, on 26 January 2016 Mr Devlin prepared a note of his advice about the New Certan wine for Mr de Moor. This advice concerned the overall branding of the New Certan wine, 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 New Certan wine. The advice noted that the VCC Wine was available for sale through some Australian retailers (including United Cellars and Nick’s). It also offered the following suggestions as to how the New Certan wine 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 New Certan to any consumers that you do not have a relationship with (so only via Cellar Door, your email lists or Gold Club).

2.    Not sell through standard retail outlets (Dan Murphy’s, Liquorland etc).

3.    Fly under the radar as much as possible.

4.    Not compare your wine to VCC or mention VCC in any literature.

5.    Make sure that it is crystal clear that this is a Tasmanian/Australian wine.

246    Further, on 26 July 2018, Mr Devlin prepared a further note of his advice about the New Certan wine for Mr de Moor. It stated:

As we have always acknowledged, the look of the artwork echos the VCC 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    Mr de Moor replied the same day, noting that “… travel advise [sic] would certainly be of use…”.

248    On 22 March 2021, VCC’s Australian lawyers issued a letter of demand. VCC’s demands were not met.

249    Let me at this point say something more concerning the respondents’ promotional activities concerning New Certan.

250    In an article dated 6 July 2018 reporting on the Pipers Brook Vine Improvement Program, the following statements appear in relation to the New Certan wine:

Somewhat prosaically referred to as the Pipers Brook Vineyard Vine Improvement Program when first mooted in 2005, de Moor’s privately-owned and funded initiative has since become the production base for a 200-case single vineyard Pinot Noir called New Certan.

The wine had its first vintage in 2011.

Its labelling and packaging—not to mention its Certan moniker and pastel pink neck capsule—have proved somewhat contentious in evoking de Moor’s European ancestry and wine heritage.

Great grandfather Georges Thienpont was a successful wine merchant in Belgium and purchased Pomerol’s prestigious Vieux Château Certan in 1924.

Almost a century later, the esteemed 16ha Bordeaux property remains in family hands, with cousin Alexandre making its wines, as well as managing a fabled vineyard down the road at Château Le Pin owned by garagiste winemaker and cousin, Jacques Thienpont.

251    A report on The Tasmanian Times website dated 6 February 2019 stated:

The wine’s labelling and packaging – not to mention its Certan moniker – reflect de Moor’s family heritage. Great grandfather Georges Thienpont was a successful wine merchant who purchased Bordeaux’s prestigious Vieux Château Certan in 1924. Nearly a century later, the 16ha Pomerol property remains in Belgian hands, with de Moor’s cousin Alexandre Thienpont in charge. Celebrated Château Le Pin, located nearby, is owned by another cousin, Jacques Thienpont.

Links to such esteemed properties help drive de Moor’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, de Moor 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 Winestate Magazine and dated November/December 2021 stated:

The de Moor family are related to the owners of the respected Chateau Vieux Certan in Bordeaux, owners of the respected Chateau Vieux Certan in Bordeaux, hence paying homage with the name New Certan for a premium single vineyard pinot noir.

Pipers Brook has undergone several changes, and regular changes of winemaker, over its close to half a century of existence but Luke Whittle is the current chief winemaker with the business overseen by Paul de Moor

…

The de Moor family has wine links back through generations. Paul de Moor’s great grandfather, Georges Thienpont, was a successful wine merchant who purchased Vieux Chateau Certan in 1924.

Nearly a century later, the Pomerol property remains in the family’s hands, with de Moor’s cousin Alexandre Thienpont in charge.

Highly regarded Chateau Le Pin, located nearby, is owned by another cousin, Jacques Thienpont, underlining the family’s love of the wine industry.

Pipers Brook is carrying on that tradition and is one of the largest Tasmanian-owned wine estates.

Pipers Brook Vineyard is today home to five labels: Pipers Brook Estate, Ninth Island, Kreglinger Sparkling, New Certan Pinot Noir and the newest addition being the Pipers Tasmania range, which is a modern expression of the more traditional estate wines.

253    The PBV Cellar Door training manual and various Kreglinger documents in evidence also provide an indication of how Kreglinger and PBV intended to and have gone about promoting the New Certan wine.

254    In February 2019, PBV prepared a Cellar Door training manual. Mr de Moor agreed that one of the purposes of this document was to provide staff at the cellar door with information about the New Certan wine which would be of interest to consumers. On the page dedicated to the New Certan wine, the Cellar Door training manual contained the following text:

The label features the Mount Pleasant family homestead which was built in 1865 on the vineyard’s estate property, in Launceston. The name and the colour are inspired by old Chateau Certan, founded by family in Europe and the wine is produced in small quantities from the single Mount Pleasant vineyard around the house, that is 3.3 hectares in size, producing on average 200 cases per vintage.

255    Mr de Moor accepted that it was likely that Ms Rachel Boyd was involved in the preparation of the Cellar Door training manual. Mr de Moor also gave evidence that the National Sales Manager, Mr Callum Czyz must have been aware of it. Mr de Moor claimed that he had not seen this document before, and that he would have disapproved of the reference to “old Chateau Certan”.

256    When Mr de Moor was asked to explain his objection to the old Chateau Certan text, his evidence was as follows:

MR CAINE:        It says the name is inspired by old Chateau Certan?

MR DE MOOR:     Yes.

Q:    Now, old Chateau Certan 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 VCC?

A:    Yes. It should say then it is inspired by Vieux Chateau Certan 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 Vieux Chateau Certan 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, Ms Boyd, the Marketing and Wine Club manager for Kreglinger, sent a draft “New Certan brand story” document to Mr de Moor for his review as the summary of their discussion. The draft “New Certan brand story” reproduced the old Chateau Certan text that I have set out earlier.

258    Mr de Moor claimed under cross-examination that he was reading the document for the first time. He claimed that he would have removed the reference to “old Chateau Certan” in this document because it was “rubbish”. However, he accepted that the document was compiled based on a discussion between him and Ms Boyd.

259    Between 29 October 2020 and 11 November 2020, Ms Boyd and Mr Czyz, the national sales manager for Kreglinger, exchanged emails with Mr Alex Scutt, assistant category manager of fine wine for the retailer Dan Murphy’s. The emails related to the possibility of featuring the New Certan wine in a direct marketing promotion for Dan Murphy’s customers. In the course of this exchange, Ms Boyd provided a tasting note, New Certan bottle shot and some marketing information to Mr Schutt. Her covering email to Mr Schutt reproduced the Old Chateau Certan text that I have set out earlier.

260    On 19 July 2021, Mr Czyz exchanged emails with Mr Nick McArdle of Coles. The emails related to the possibility of featuring the New Certan wine as a part of the “cellar section” of some of Coles’ Victorian stores. In the course of this exchange, Mr Czyz provided a tasting note and some marketing information to Mr McArdle. His covering email to Mr McArdle reproduced the old Chateau Certan text that I have set out earlier.

261    Mr de Moor denied knowledge of either of the communications with Dan Murphy’s or Coles. And he sought to distance himself from the development and use of the old Chateau Certan 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?

MR DE MOOR:    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 Vieux Chateau Certan - - -?

A:        Vieux Chateau Certan?

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 – New Certan 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 Mr de Moor’s evidence is problematic. The old Chateau Certan text appeared in the Cellar Door training manual, the draft “New Certan Brand Story”, and each of the emails sent to Dan Murphy’s and Coles. 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 old Chateau Certan text, it is improbable that Mr de Moor was not aware of the statement contained in the old Chateau Certan text.

The significant resemblance between the New Certan wine and VCC’s wine

264    Let me begin with Mr Oliver’s evidence.

265    Mr Oliver had previously tasted and written a review of a later vintage of the New Certan wine and he recognised the label from doing so. At the time that he wrote his review, it never occurred to him that the New Certan wine had any association with VCC. Indeed, he did not think of VCC at all. In fact, he had initially spelled the name of the New Certan wine incorrectly in his review and on his website, spelling it “New Certain”.

266    Mr Oliver commented on the main features of the New Certan front label (2016).

267    He noted that whilst there are some similar aspects to the VCC label, New Certan 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 VCC Wine, the main common features appear to be the capitalisation and colour of the starting letter of each word of the name ‘New Certan’, the picture of the property, the colour wash through the label and the edges of the label. However, the property on the New Certan label did not remind him of a French château, but evoked a grand house. Upon close scrutiny, he observed that both capsules were coloured pink. There are some words on the New Certan label that are French, specifically ‘Société Anonyme Kreglinger’. These words do not appear on the front label of the VCC Wine. Furthermore, Kreglinger 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 New Certan label. On a side by side comparison, he perceived that the New Certan label has likely taken inspiration from the VCC Wine label. However, in his view it is plainly different in that the New Certan label does not state that it is from Pomerol. Indeed, the New Certan label states that it is a ‘Fine Wine of Australia’, 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 Kreglinger.

270    He was asked to comment on whether he considered there was a risk that Australian consumers, encountering the New Certan wine, might believe the New Certan wine to be associated with VCC.

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 Bordeaux from Pomerol, 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 New Certan and think they that had picked up a bottle of VCC Wine.

272    In his opinion, there are five primary reasons why New Certan would not be confused with the VCC Wine.

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 VCC Wine. An ordinary Australian wine consumer will not have VCC Wine in mind when confronted with New Certan.

274    When he reviewed the New Certan wine, he never thought of VCC Wine, 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 New Certan wine did it remind him of the branding feature of any other wines, nor did he think of VCC. If he had thought of VCC, 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 New Certan 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 Bordeaux. There would be very few consumers who are both informed drinkers of $500 Bordeaux 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 New Certan is a pinot noir, which is a very different style to wines produced in Bordeaux.

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 Bordeaux. 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 Bordeaux.

278    Fourth, he also attached significance to the bottle shape. New Certan is sold in a Burgundy shaped bottle, which is the bottle shape used for pinot noir. Contrastingly, the VCC Wine is sold in a classic Bordeaux (cabernet sauvignon) shaped bottle. He said that it would be odd for a cabernet sauvignon or merlot such as VCC’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 Bordeaux varieties sold in a Burgundian bottle shape.

279    Fifth, when he looked at the front label of New Certan, there is no text on the label to suggest that the New Certan producer has a connection with VCC, and he could not recall reading about any such connection in the wine media. The VCC Wine is approximately five to six times higher in price than New Certan, 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 Bordeaux blend from Pomerol 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 New Certan wine thinking it was VCC Wine or associated with VCC. No reference is made anywhere on the label to VCC or Bordeaux.

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 Kreglinger 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 New Certan 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 ‘Mount Pleasant’.

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 Mount Pleasant. He could see that the producer is PBV. Because he was associated with the wine industry, he was aware that Kreglinger owns PBV. The back label told him that this wine is a new and different wine and not to be confused with other PBV wines. It is a single site and an addition of the already existing range produced by PBV.

287    Twelfth, Mr Oliver also commented on whether he considered New Certan could possibly be a brand extension of VCC. In his opinion, the label of New Certan does not suggest that it is a brand extension of VCC. This is reinforced with the inclusion of the name Kreglinger 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 Bordeaux château 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 Bordeaux to engage in overseas brand extensions, and therefore those that exist are relatively well-known. For example, he was aware that Lafite has a development in Yantai in China, and Mouton-Rothschild has a brand extension in the Yunnan province in the South of China, as well as its high profile Opus One 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 Bordeaux château or brand owners to do so. The nearest similar examples he was aware of are Dominique Portet (who was born in Bordeaux) establishing Taltarni in Victoria, and Jacques Lurton (whose family is a very significant owner of châteaux in Bordeaux) creating his own wines in various South Australian regions. However, in the first instance Taltarni is fully owned by an American citizen, and in the second, Lurton’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 VCC 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, VCC would have ventured into a region more suited to merlot or cabernet varieties. VCC 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 Mr Oliver’s evidence, the evidence reveals how a number of experienced wine industry professionals have reacted to the presentation of New Certan wine by thinking that there is a connection between the New Certan wine and/or Kreglinger/PBV and the VCC wine estate.

293    Mr Hooke first encountered the New Certan wine being the 2017 vintage when he received a sample for tasting from PBV in late 2018. He recounted his reaction as follows.

294    He recalled that he received a number of wines from PBV for review together with a bottle of the 2017 vintage of New Certan. The bottle of New Certan 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 VCC 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 New Certan, entitled “Pinot pleasures from 2017” for The Real Review.

296    In his article he discussed the 2017 New Certan, including stating the following:

Also impressing from Tasmania is a new AUD$95 wine from Pipers Brook Vineyard: the 2017 New Certan. The name and label are peculiar, in that they evoke the owner's family connection with Bordeaux's Vieux Château Certan. The label is almost a carbon copy, and the name Certan has no resonance with Australia or Australian wine, and anyway, it's not from Bordeaux 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 Pipers Brook Vineyard 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 Jim Chatto 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 New Certan to review, it did not cross his mind that the wine had not been approved and authorised by VCC. He regarded it as a whimsical brand extension by PBV, but one which connected the wine with VCC. He also knew at the time that Mr de Moor was involved in operating PBV and that he was related to Mr Alexandre Thienpont of VCC. His reaction to New Certan was to assume, incorrectly, that it had been approved by VCC. His assumption was only corrected as a result of his involvement with this proceeding.

298    Now Mr Oliver disagreed with Mr Hooke’s views, but I am inclined to accept Mr Hooke’s evidence.

299    Ms Faulkner first encountered the New Certan wine being the 2018 vintage which she received as a tasting sample. She recounted her reaction as follows.

300    When she first unpacked the New Certan 2018 bottle, at first glance she thought it was a bottle of the VCC wine with a screw top cap. In the wine industry, some brands have strong colour associations. For example, Veuve Clicquot’s La Grande Dame Champagne 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 VCC’s wines and its pink capsule. In her experience, the pink capsule is very unusual for a Bordeaux wine and for French wine more generally. Bordeaux wines are traditionally presented in a conservative way and the pink capsule used on VCC’s wines is distinctive and, in her view, quite daring by comparison. At first glance, the pink and gold screw top cap of the New Certan 2018 wine that was submitted to her for tasting caused her to think that this was a bottle of the VCC Wine 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 VCC Wine, but rather a Tasmanian Pinot Noir called New Certan. When she considered the front wine label which features the name New Certan and a sketch of a château, 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 VCC. The name New Certan seemed to her to be a play on words of the name Vieux Château Certan, which translates in English as “Old Château Certan”.

302    She then examined the back label, and saw that this Pinot Noir was produced by PBV, with Jim Chatto as the chief wine maker. This did not clarify for her how a PBV wine was connected to or associated with VCC or the VCC Wine.

303    Ms Faulkner then did some further on-line investigation in relation to the New Certan wine. She then gave evidence that whilst she was still confused as to what the nature of the relationship could be between PBV and VCC, as James Halliday'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    Mr Airoldi first encountered the New Certan wine being the 2018 vintage in the liquor section of an IGA supermarket in New South Wales on 29 November 2021. Mr Airoldi recounted his reaction as follows.

306    From a distance, he saw a bottle with what he thought was the VCC pink capsule and a label that made him think that IGA First Liquor was selling a VCC Wine. This seemed surprising to him, given the rarity of the VCC Wine and Gravette Wine. When he was close enough to read the label and note that the bottle had a screw top cap and was not the traditional Bordeaux shape, he realised it was not the VCC Wine or the Gravette Wine, but rather a wine known as New Certan, a pinot noir from Tasmania. He took the following photo on his phone and asked one of the IGA First Liquor 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 Bordeaux negociants, Ballande & Méneret, to ascertain if New Certan was connected or associated in any way with VCC of Pomerol. Mr Tugdual Iquel of Ballande & Méneret told him that he was not aware of the New Certan wine from Tasmania.

308    Again, I have no reason to doubt this evidence.

309    Further, Mr Caillard stated that he was immediately struck by the name New Certan and the product presentation. But his knowledge of Bordeaux is exceptional compared to other Australian wine trade and media. As a world expert on Bordeaux, his reaction is unlikely to be that of the typical Bordeaux consumer, both in relation to these specific products, but Bordeaux wines more generally. Mr Caillard above most others in Australia would know if any Bordeaux producer had an association or relationship with an Australian producer.

310    Now the respondents rely on the evidence of Mr Oliver to the effect that he did not personally have a similar reaction to the New Certan wine and that he did not consider that any relevant consumers would have such a reaction to it. But Mr Oliver’s evidence on this matter is not to be preferred.

311    First, the evidence of Mr Hooke, Ms Faulkner and Mr Airoldi in relation to this issue was largely unchallenged. And their reactions were spontaneous and genuine.

312    Second, Mr Oliver encountered the New Certan wine during a very busy tasting period. His evidence suggested that he gave only cursory attention to the presentation of the New Certan wine.

313    Third, when Mr Oliver encountered the New Certan wine, the name Certan simply did not mean anything to him:

HIS HONOUR:        But what did you mean – what did you think “Certan” meant?

MR OLIVER:     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 MinterEllison team that I had actually realised that I had made that mistake. I didn’t make any – the word “Certan” meant absolutely zero to me.

Q:    Well, does that mean that the word “Certan” in VCC meant nothing to you suggesting that you didn’t really know much about VCC?

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 VCC to mind for him. However, he accepted that the use of the word “New” before the word “certan” infers that there is an “old” Certan.

315    Fourth, Mr Oliver’s opinion in relation to the presentation of the New Certan wine was predicated on the assumed fact that there was no story behind the New Certan wine regarding an association with VCC. Mr Oliver did not do any searches, or request any materials from the respondents, to verify that. I agree with VCC that the evidence demonstrates that assumed fact to be problematic.

316    Fifth, a number of online retailers have also promoted the New Certan wine on the basis that there is connection between it and the Vieux Château Certan wine estate. For example, United Cellars described that connection as follows:

The New Certan Pinot Noir, with it's recognisable pale pink cap, is a play on Vieux Chateau Certan, on [sic] of the most expensive wines of Bordeaux in France. Owners of that estate also own this Tasmanian estate. It is careful selection of only the best parcels across our Mount Pleasant Vineyard in Launceston. Mount Pleasant 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 New Certan wine vintages promoted, offered for sale and sold to date bear a significant resemblance to the presentation of VCC’s wines and, in particular, the VCC Wine. And it is unsurprising that this is so, given the evidence of Mr de Moor’s involvement in the design of the packaging of the New Certan wine. The foundation of the design process was to provide Ms Harcus with a photo or a bottle of the VCC Wine including the pink capsule. The label clearly took inspiration from the label of the VCC Wine.

The new branding for New Certan

319    With effect from the 2022 vintage, PBV intends to rebrand the New Certan wine.

320    Now in my view the proposed New Certan product looks very different from the previous design of the New Certan product. Other than the name “New Certan”, the proposed New Certan product removes all of the New Certan features, including the pink capsule and the image of Mr de Moor’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 PBV pinot noir wine) with the name ‘Pipers Brook’ 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 Joseph Lycett, with solid gold bordering. Further, the branding has the words “New Certan”, “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 “Pipers Brook Vineyard”, and its style is consistent with other wines produced by PBV. There are no references to “European heritage”. It is a world away from the packaging of the VCC wines.

324    Mr Oliver commented on whether he would consider a bottle of New Certan presented differently, that is, without an image of a château and having different colours, but retaining the name ‘New Certan’, to be connected to VCC.

325    Having been directed to consider the New Certan label against the VCC Wine label, 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 New Certan was connected to VCC.

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 PBV range.

328    He observed that the font used for the words ‘New Certan’ 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 New Certan 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 PBV.

330    He did not consider this bottle to be connected to VCC. It is clearly a PBV label.

331    Now VCC says that the proposed new branding of the New Certan wine would also be misleading. It says that the proposed branding prominently features the name New Certan. It says that it does so in a context where, over the course of several years, Kreglinger and PBV have promoted the New Certan wine and by reference to a connection with VCC, VCC’s wines and/or the VCC wine estate. It says that the proposed re-branding will leverage and build upon the existing knowledge and reputation in the Australian marketplace of the New Certan wine. VCC 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    Mr Thienpont 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 VCC’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 VCC and its wines. He said that the foundations of the market for the New Certan wine have been built upon this.

335    He said that the name New Certan is a very prominent part of the proposed re-branding. To him, this name continues to reference VCC. This is because the word Certan is the important part of the name Vieux Château Certan and the name New Certan, 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 New Certan as a particularly important part of the respondents' conduct because it is the name by which the New Certan wine 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 VCC and its wines. This is particularly so against the background of how the New Certan wine has been presented and marketed to date.

337    Ms Faulkner said that her initial reaction to the new branding was that it still uses the name New Certan. The name New Certan creates an association for her with VCC. New Certan 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 Joseph Lycett image. With the exception of the name, which creates an association for her with VCC, the new branding is in a style that she recognises as being consistent with wines produced by PBV.

339    She said that as the new branding retains the name New Certan, she associates it with her experience of reviewing New Certan 2018. She said that if she had not been involved in this proceeding and had encountered the new branding as a bottle of New Certan 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, New Certan, and her previous experience with it.

340    Mr Hooke stated that the proposed branding is visually very different to the current New Certan wine presentation. This proposed branding does not draw his attention in the same way as the current presentation of the New Certan wine does – the bronze screw top cap includes the name Pipers Brook, the label featuring the Joseph Lycett 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 VCC that he experienced when he first saw the bottle of the 2017 vintage of New Certan on 2 September 2018, and later saw the 2019 vintage on 18 February 2022.

341    However, he said that the name of the wine, New Certan, 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 New Certan wine that he is familiar with under the current branding.

342    He said that his assumption about a connection between the New Certan wine and VCC 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 New Certan wine was connected with VCC.

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 New Certan wine that he is familiar with and recalls his previous experiences with the 2017 and 2019 vintages of New Certan. It is the on-going use of the name New Certan which would cause this to be the case.

344    Mr Caillard stated that the proposed branding still includes the name New Certan prominently on both the front and back labels.

345    He said that with the exception of the name, New Certan, the elements of the product presentation that he described in his affidavit as being strongly evocative of VCC are not included in the proposed branding. However, to his mind, the use of the name New Certan means that the wine will continue to be associated with VCC.

346    From his review of the proposed branding, he expects that the New Certan wine will continue to be referred to, both verbally and in writing, by the name New Certan. This means that the name New Certan 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 Mr Oliver, who have already seen, reviewed and written about New Certan wines may be asked to review a future vintage with the proposed branding.

348    Further, he said that as can be seen by Mr Oliver's review of the 2017 vintage of New Certan, 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 New Certan with the current wine presentation are likely to be accessible and included on website pages when wine writers review new vintages of New Certan with the proposed branding.

349    Further, in his view the name ‘New Certan’ is strongly evocative of VCC. In his opinion, the proposed branding will continue to communicate albeit more subtly, the New Certan product narrative, namely that there is some form of connection or association between New Certan and VCC’s wines and their respective producers. Further, the use of the name Pipers Brook on the cap together with the name New Certan on the label of the proposed branding reiterates that there is a connection between the producer of the 'New' Certan, being PBV, and the producer of the 'old' Certan, being VCC.

350    Now Mr Oliver also gave evidence in cross-examination which VCC says highlights the difficulty with the proposed re-branding.

351    VCC says that the name New Certan, 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 PBV wine.

352    It says that the effect of this is that the respondents will continue to capitalise on the goodwill of VCC which they have called upon in their branding of the New Certan wine.

353    But I do not accept VCC’s case and criticisms concerning the proposed new branding of New Certan. I will return to this later.

VCC’s claims under the ACL and in passing off

354    Let me deal with some general matters before getting into the detail.

355    VCC alleges that Kreglinger’s and PBV’s promotion and sale of the New Certan wine, both in bottles with the previous New Certan 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 New Certan wine and VCC or its wines.

356    VCC also alleges that Kreglinger’s and PBV’s promotion and sale of the New Certan wine, both in bottles with the previous New Certan features and in bottles with the new branding, falsely represents to consumers that the New Certan wine has the approval of VCC or that Kreglinger and/or PBV has an affiliation with VCC.

357    But VCC does not allege that consumers would be misled or deceived into thinking that the New Certan wine is either of the VCC wines. Clearly, the parties’ respective products are distinguishable. They are different products (Bordeaux from Pomerol 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 Bordeaux shape vs. Burgundy/pinot noir shape).

358    Further, VCC does not allege that consumers would be misled or deceived into thinking that the New Certan wine has been produced by VCC. 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 VCC does not have a monopoly over each or any of the branding features used on its products.

361    Now the VCC wines 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 Certan as a prominent part of the names Vieux Château Certan and La Gravette De Certan, the use of a pink font for the first letters of the name of the wine, in the case of the VCC Wine, the words Grand Vin and Mis En Bouteille Au Château in pink font, a centrally located image of a stately house known as Vieux Château Certan that is located on the VCC wine estate, and a fluted edge profile. But each of these features is not unique to VCC or its wines.

362    First, the use of an image of a stately house or château is common, particularly amongst Bordeaux wines.

363    Second, the words “Grand Vin” (“great wine”) and “Mis En Bouteille Au Château” (“bottled at the estate”) are mere descriptors and are used on wines other than the VCC Wine.

364    Third, as to the use of a pink capsule or other elements of pink on the packaging of the VCC wines, I accept that such a colour choice was unusual for Bordeaux wines. But even the use of a pink capsule in Bordeaux is not unique to VCC or its products. A number of producers of wines including French red wines use variations of pink on their respective capsules, including Château Haut-Brion, La Mission Haut-Brion and Château Lascombes. But I do accept that VCC 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 VCC features and VCC itself, it is relevant to have regard to the manner in which the VCC wines 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 VCC sells its wines is known as La Place de Bordeaux. 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 Bordeaux châteaux. This is not a typical retail setting.

367    Second, to the extent the VCC wines 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 Vieux Château Certan on any such lists appears amongst tens or hundreds of other products, and in some cases also with Château Certan de May.

368    Third, in restaurant settings, to the extent that the VCC wines 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 the Royal Mail Hotel is 99 pages long. Various vintages of the VCC Wine appear on one page of that list. Château Certan de May also appears in that list on the preceding page.

369    The third point to make is that neither of VCC’s wines is referred to solely as “Certan”. And the evidence does not indicate that the wine consuming public or wine professionals refer to the VCC Wine by reference to Certan alone. Let me elaborate on these points and make other points concerning Certan.

370    First, there is no evidence that VCC has ever promoted or sold either of the VCC wines under or by reference to Certan alone. To the contrary, to the extent that VCC has used the term Certan, it has done so as part of the composite phrases Vieux Château Certan and La Gravette de Certan. The ordinary reasonable consumer is to be credited with awareness of this consistent usage (Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 8) (2008) 75 IPR 557 at [65] per Heerey J). So, in circumstances where VCC has never made any use of the term Certan alone in any branding or marketing activity divorced from the composite phrases Vieux Château Certan and La Gravette de Certan, there is not any secondary stand-alone reputation in the word Certan.

371    Second, there are other French wines which include Certan as part of their name, including Château Certan de May. The third-party usage of Certan by such wineries is against the proposition that VCC has acquired any independent reputation in that word.

372    The word Certan, or its alternative, Sertan, originates from the area in Pomerol granted by royal decree to the Demay family. It is not a word used exclusively to refer to VCC or the VCC estate. The word Certan has been for many years used in connection with the sale of wine by other winemakers who are independent of VCC and who are located on or near the original Sertan estate in Pomerol. The original form of Sertan described a large estate that was over time divided into smaller estates.

373    One notable example of this is Château Certan de May, previously called Petit Certan and Château Certan, and Croix de Certan, which is a second wine produced by Château Certan de May.

374    Château Certan de May is sold in bottles which prominently display the words Pomerol and Château Certan in large font above the text De May de Certan in smaller font. Château Certan de May has been sold in Australia since at least the early 1980s. It retails at prices between $200 to $300. Château Certan de May is sold through similar trade channels and in similar quantities to the VCC Wine but in excess of the Gravette Wine.

375    Further, the VCC Wine and Château Certan de May are listed for sale in close proximity to each other in both of the Negociants Australia “Imported Wine Portfolio” lists in evidence, are both listed for sale on the wine list for the Royal Mail Hotel under the Pomerol sub-heading, and both appear in close proximity in the “Red Bordeaux” section of the 1991 Langton’s Vintage Price Guide. Both wines also appear in search results for “certan” on the Langton’s Price Guide website and on the Dan Murphy’s website.

376    Further, historically there were other wines which included the word Certan in their names, including Château Certan Giraud and Château Certan Marzelle, previously called Certan and Château Certan. The evidence relating to other “Certan” wines in Australia is more limited, but it does indicate that those products have been available for purchase in Australia. The Croix de Certan 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 Bordeaux would likely be aware of.

378    There are several châteaux with the name "Lafite" or with a near-identical word in them, including: Château Lafitte, Château Laffitte-Mengin, Château Laffitte Carcasset, Château Laffitte Laujac, Château Lafite Monteil, Château Lafite Rothschild, Château Lafitte Marceliln, and Château Smith Haut Lafitte.

379    Other examples of producers using a common word or words in their name include the following.

380    La Fleur: Château Lafleur, Chateau La Fleur-Petrus, Château Lafleur Brouard, Château Lafleur de Viaud, Château La Fleur des Houx, Château La Fleur du Mayne, Château Lafleur du Roy, Château Lafleur Gazin, Château Lafleur Grands- Landes, Château Lafleur Grangeneuve, Lafleur Laroze, Lafleur Mallet, Château Lafleur Naujan, Château Lafleur Saint-Jean, La Fleur Saint Julien, Château La Fleur-Vachon, Château Lafleur Vauzelle and Château Lafleur Vincent.

381    Mouton: Château Mouton Rothschild and Château Mouton Cadet.

382    Léoville: Château Léoville Barton, Léoville-Las Cases and Château Léoville- Poyferré.

383    Haut-Brion: Château Haut-Brion, Château La Mission Haut-Brion, Chapelle de la Mission-Haut-Brion, Château La Tour-Haut-Brion, Château Laville-Haut-Brion and Château Larrivet-Haut-Brion.

384    Pichon-Longueville: Château Pichon-Longueville-Baron (Grands Vins de Gironde) and Château Pichon-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: Château Lacroix, Château La Croix de Gay, Château la Croix-de-Gay, Château La Croix, Château de la Croix, La Croix-Barton, Château la Croix Bellevue, Château la Croix Saint-Pierre, La Croix de Beaucaillou, Château La Croix Canon, Château La Croix de Belair, Château la Croix de Bonneau, Château la Croix de Nauze, Château la Croix de Pez, Château la Croix du Chevalier, Château La Croix du Moulin, Château La Croix du Bos, Château la Croix du Breuil, Château la Croix du Casse, Château La Croix Figeac (Lamarzelle), Château la Croix Fourche Mallard, Château La Croix Morand, Château La Croix Moulinet.

386    Gay: Château La Croix de Gay, Château le Gay, Château Vray Croix de Gay, La Fleur de Gay, Château du Gay de Leyrat and Château Gay Moulins.

387    Cantenac: Château Clos de Cantenac, Château Boyd-Cantenac and Château Cantenac Brown.

388    Fourcas: Château Fourcas-Dumont, Château Fourcas Dupré, Château Fourcas Hosten and Château Fourcas Loubaney.

389    La Tour meaning “the Tower”: Château Latour, Château Latour Camblanes, Château Latour Laguens, Château La Tour Blanche, Château La Tour Canon, Château La Tour Carnet, Château La Tour Cordouan, Château la Tour de Bessan, Château la Tour de Mons, Château la Tour de Perrigal, Château la Tour de Ségur, Château la Tour Figeac, Château La Tour Gayet, Château la Tour-Guillotin, Château la Tour Haut Brion, Château la Tour Léognan and Château la Tour-Marcillanet.

390    Cadet meaning “younger”, which is usually used for a second or junior wine in a portfolio: Château Cadet-Bon, Château Cadet Bragard, Close Cadet D'Arthus, Le Cadet de Gombaude, Le Cadet de Larmadne, Le Cadet de Martinens, Le Cadet de Raymond-Lafon, Cadet du Château Claymore, Cadet du Grand Bos, Cadet Grange Bruleée, Château Cadet-la-Motte, Château Cadet La Vieille FranceChâteau Cadet-Peychez, Château Cadet-Piola, Château Cadet-Pontet, Château Cadet Soutard and Mouton Cadet.

391    Corbin: Château Corbin, Château Corbin-Michotte, Château Grand Corbin, Château Grand Corbin-Despagne and Château Haut-Corbin.

392    Pavie: Château Pavie, Château Pavie Decesse and Château Pavie-Macquin.

393    Doisy: Château Doisy Daene, Château Doisy-Védrines and Château Doisy- Dubroca.

394    Fourth, I note that there are French trade marks using the word Certan. The WIPO Global Brand database as at 27 May 2021 showed French trade marks containing the word Certan 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 Certan that are not related to VCC: trade mark registration 99821043 for Château Certan, trade mark registration 99827242 for Château Certan-Lafleur and trade mark registration 94506525 for Château Certan-Marzelle, which are registered in the name of Ets Jean Pierre Moueix, Société par Actions Simplifiée; trade mark registration 3089496 for Château Certan de May de Certan and trade mark registration 4290368 for Château Croix de Certan, which are registered in the name of Château Certan de May, Earl, M et Mme Pradel de Lavaux Michel et Isabelle, M. François Pradel de Lavaux, Mme Inès Boissarie et Mr Jean Axel de Lavaux, propriétaires en indivision; trade mark registration 4226864 for Vieux Plateau Certan, which is registered in the name of M et Mme Pradel de Lavaux Michel et Isabelle, M. François Pradel de Lavaux, Mme Inès Boissarie et Mr Jean Axel de Lavaux, propriétaires en indivision; trade mark registration 3473433 for Clos du Vieux Plateau Certan, which is registered in the name of Scea de Lavaux; and trade mark registration 3739942 for Clos du Vieux Plateau Certan Pomerol, which is registered in the name of M. François de Lavaux.

395    Fifth, the name Certan has no meaning in respect of Australian wine regions or wines. The name Certan evokes wines from Pomerol. But to the extent that any person has specific knowledge of wines from the Pomerol sub-region of Bordeaux, that person would likely be aware of the existence of other wines that use Certan, and in particular Château Certan de May. 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 Certan would automatically draw an association between that word and VCC alone.

396    In summary, in my view the use of Certan alone does not in and of itself indicate any connection or affiliation with VCC.

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 New Certan wine by Kreglinger and PBV 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 (Campomar Sociedad, 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 Campomar 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 NIKE name on a product other than that endorsed by the [Nike 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 Campomar 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 Campomar 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 Campomar formulation satisfy the “not insignificant number” requirement? I am inclined to the view that if, applying the Campomar 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 Peter Bodum A/S v DKSH Australia Pty Ltd (ACN 005 059 307) (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    Now Wigney, O’Bryan and Jackson 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 Puxu, Campomar and Google Inc”. 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 Puxu, Campomar and Google Inc 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 Full Court authorities prior to TPG, and importantly after Campomar, that perhaps justify applying such a test? Such Full Court authority prior to TPG did not accept the suggestion that Campomar 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]):

Mr Karkar 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 (10th Cantanae) at 302. Mr Karkar also pointed to a possible inconsistency between the remarks of Deane and Fitzgerald JJ in Taco Co 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 [Campomar]. 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 [Campomar] 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 [Campomar]. 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, 10th Cantanae was a decision of a Full Court. Pincus J observed (at 309) that it was not sufficient that “some readers” were affected. Gummow J (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. Gummow J also referred (at 315) to “the usual manner in which ordinary people behave”. Accordingly, it is apparent that the test stated in 10th Cantanae is not inconsistent with [Campomar]. 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 Taco Bell and 10th Cantanae. In my view, the relevant passages in both cases merely express, in different forms, the test propound by the High Court in [Campomar]. 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 10th Cantanae is simply an alternative way of expressing the test now clearly prescribed in [Campomar].

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 Puxu and Campomar. And interestingly, but admittedly fleetingly, Campomar refers to 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1988) 79 ALR 299 in footnote 145, which references Gummow J in 10th Cantanae at 324 to 325 (324 incorporates by reference aspects of 314 and 315), without any comment let alone criticism of 10th Cantanae.

414    Further, in Peter Bodum A/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 Campomar 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 Campomar, 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 Campomar 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 Full Court 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 Full Court in National Exchange 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 Siopis J (at [66] to [72]) applied the “not insignificant number” or “significant number” test.

417    As far as I am aware, until the dicta in TPG there has been no Full Court authority or High Court authority which casts doubt upon the authority of what was said by Jacobson and Bennett JJ in National Exchange, Greenwood J (supported by Tracey J) in Peter Bodum and Tamberlin and Siopis JJ in Hansen Beverage. Now in TPG 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 Campomar and Puxu 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 Full Court authority prior to TPG 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 Campomar 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 Campomar 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 TPG, that Campomar 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 TPG. 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 ConAgra’s product reputation necessary to show misleading or deceptive conduct on the part of McCain. Provided ConAgra could show on the balance of probabilities that “a not insignificant number” of persons knew of the ConAgra 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 ConAgra 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 McCain’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. 10th Cantanae and ConAgra so proceed and were not seen as inconsistent with Puxu. Peter Bodum and Hansen Beverage also so proceed and were not seen as inconsistent with either Puxu or Campomar.

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 Campomar 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 Campomar 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 Victorian society. 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. Now TPG would suggest that you only need apply the Campomar 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 TPG, it is nevertheless a useful proxy according to prior and binding Full Court 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 Gummow J 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 Middleton J.

429    Well then if this is all good, why was this not discussed in Campomar? 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, Nike, as a given in that case; of course, it is not a given in the case before me.

430    The Campomar 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, Nike was suing Campomar and the case proceeded on the basis that Nike (the applicant) had a world wide reputation including in Australia and that Campomar (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 Mr Ruiz had for a number of years perceived the advantage his organisation could expect to gain by the worldwide marketing of its products under the Nike name in conjunction with, or with the approval of, Nike International or one or more of its associated companies. Campomar had no reputation in Australia when its marketing activities were commenced in 1993. Nike International Ltd had a worldwide reputation. By 1993 its products had become very well known in Australia.

433    So in the High Court, Nike’s reputation was a given. The level of public awareness of Nike and its products was notorious. Clearly a “not insignificant number” of members of the public were well aware of Nike 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 NIKE name on a product other than that endorsed by the [Nike 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 Campomar that was a given. And there was no need to consider cases such as ConAgra and 10th Cantanae 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. ConAgra, 10th Cantanae, Peter Bodum and Hansen Beverage make this plain. Contrastingly, neither TPG 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 TPG was to be matched against National Exchange (albeit not a passing off case), Peter Bodum and Hansen Beverage, which post-date Campomar, I would not have the option not to apply the earlier Full Court authority. But post TPG, Trivago would now seem to have enshrined the dicta from TPG in a manner that now binds me, although I am a little unclear as to what debate took place in Trivago (see at [192], [193] and [206] per Middleton, McKerracher and Jackson JJ). But now given Trivago, I do not think that I am entitled to draw any comfort from the even more recent Hashtag Burgers Pty Ltd v In-N-Out Burgers, 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 Trivago as binding and superseding earlier Full Court authority. So, in terms of the claims concerning ss 18 and 29 of the ACL, I will apply Campomar 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, VCC succeeds on the ACL claims save and except for the proposed re-branded New Certan wine.

438    Let me make one other point. The Full Court 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 Flexopack 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 Gummow J said in ConAgra 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” (ConAgra 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 Lord Scarman; Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 at 302 per Gummow J; Flexopack at [275]).

450    In the present case, for the pre-existing and previously offered New Certan wine the respondents say that the relevant date is about 2013, being the time at which the first vintage of the New Certan wine was sold in Australia. For the proposed New Certan product, the respondents say that the relevant date is the current date, or alternatively the date on which the proposed New Certan 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 Mr Oliver’s evidence concerning this. Contrastingly, VCC 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 VCC’s position. Let me take the consumer class first.

453    It is said that the consumer class is an appropriate class because the VCC Wine, the Gravette Wine and the New Certan wine are all premium wines sold a high price points and, in the case of the VCC Wine, 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 VCC Wine and the Gravette Wine are scarce and expensive, yet acclaimed in the case of the VCC Wine. And many Australian consumers who are interested in premium wines may have heard of the VCC wine estate 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 New Certan wine 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 VCC Wine is available for sale through the same retail channels as the New Certan wine.

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 Bordeaux 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, Mr Oliver 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 Bordeaux wines. And the effect of Mr Oliver’s evidence appears to be that he regards the prospect of any cross-over between those groups of consumers as minimal.

458    Now Mr Hooke disagreed with Mr Oliver’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 Mr Hooke’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 Mr Oliver. An Australian consumer who would buy a $500 bottle of Bordeaux 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    Now Mr Caillard agreed that although Australian consumers with an interest in fine wines may have some of the characteristics listed by Mr Oliver, 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 Mr Caillard 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 Mr Oliver. 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 Bordeaux 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 VCC’s approach in identifying the consumer class, which is a broad church.

463    I also accept VCC’s position that the trade class is an appropriate class. As the evidence in this case shows, Kreglinger and PBV 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 VCC’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 VCC 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 New Certan wine who must surely be part of the focus for analysis.

466    The New Certan wine 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 VCC 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 Bordeaux region, including $500 plus bottles of Bordeaux wine, including wines from the Pomerol sub-region. Third, they would also have to have an interest in or knowledge of the VCC wines, and specifically recall the VCC wines and draw a connection between the name Certan or the VCC features and the VCC wines.

468    Now VCC asserts that Australian consumers’ engagement with and therefore knowledge of the VCC Wine 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 VCC Wine, who might aspire to purchase it.

469    Now clearly only a fortunate few can afford to purchase the VCC Wine in Australia.

470    Further, as to those who can taste the VCC Wine, 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 VCC or its wines.

472    First, the VCC Wine 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 Bordeaux and Burgundy 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 VCC’s wines are likely to be committed to Bordeaux 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 Bordeaux is a wine-producing region of France, the consumer would also need to have knowledge of wines from Pomerol, a smaller and lesser-known sub-region within Bordeaux, including in particular the VCC wines, 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 Bordeaux and, moreover, from the Pomerol sub-region of Bordeaux, 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 (Campomar Sociedad, 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    Now VCC’s claimed reputation must be assessed as at 2013, when the respondents’ impugned conduct commenced. But when the evidence of sales and promotion of VCC 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 VCC product’s overall presentation.

478    Now as the respondents have pointed out, no witness has perceived a connection between any of the earlier New Certan products and VCC without reference to the pink cap and other visual features of the VCC product. And VCC’s case is that it did not claim that its reputation accrues in relation to the name Certan alone. Its case has been that the name Certan keeps company with the rest of the words and the rest of the markings on the label. VCC’s case is that there was some form of copying of the overall presentation.

479    Now the evidence of promotion of VCC by Negociants Australia prior to 2013 is limited to the Negociants Australia December 2009 price list, which included 7 pages listing 284 red Bordeaux wines, spanning 112 different brands, including five vintages of Certan de May and only two vintages of VCC, located on one page which alone lists 52 different wines under the single heading Pomerol, without any visual depictions of any products.

480    Further, there is no evidence indicating any volume of sales of the VCC Wine prior to 2013 by the Prince Wine Store. The most that Mr Rich can say is that the store did secure VCC wines from time to time. Mr Rich could only adduce one list for the Prince Wine Store 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 VCC appeared at the very end of a four page list including 75 different brands of Bordeaux wines, again without any visual product depictions.

481    Further, Airoldi Fine Wines did not commence offering the VCC Wine for sale in Australia until 2012, which it did by way of a 10 page list in which VCC appeared obscurely on one page as the 42nd out of 52 Bordeaux red wines, again with no visual depictions of any products. Chateau Certan de May appeared earlier in that list. There is no evidence as to how many people or to whom that list was distributed. Mr Airoldi’s sales reports record sales of only two bottles of the VCC Wine before 2013.

482    Further, there is no evidence to establish the quantum of VCC Wine sold by the Royal Mail Hotel before 2013.

483    Further, Mr Caillard only gave vague evidence that the VCC Wine was sold at auction by Rushton’s in 1986, and by Langtons in 1989, with no detail at all as to any volume of sale or how the VCC product was promoted.

484    Further, the main evidence of any tasting events in Australia prior to 2013 are two dinners being at Jacques Reymond 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 Jacques Reymond noted that VCC wines were rarely available in Australia. VCC relies on Ms Faulkner’s evidence of attending a tasting course from 3 to 7 November 2008, in which VCC was one of over 200 of wines tasted. VCC also relies on Mr Airoldi’s vague evidence about tasting events held by Bordeaux Shippers 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 VCC. Of those articles, only one, the English magazine The World of Fine Wine, included an image of the VCC Wine, 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 The Wine Spectator on which VCC 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 New Certan wine. Nor is there evidence that any such readers would have noticed, let alone remembered, a reference to VCC or its wines out of the hundreds of other articles appearing in these publications over that period.

486    Further, between 2009 and 2014, Ms Faulkner wrote around 250 weekly columns and 60 feature articles for The Age and The Sydney Morning Herald, only two of which mentioned VCC at all. Neither of those two articles depicted VCC’s product label or pink cap. Similarly, in that period Mr Hooke wrote hundreds of columns and articles in Australian media about wine, none of which mentioned VCC at all other than a single report in The Sydney Morning Herald in September 2011 regarding the event at Golden Century, with reference to “Vieux Chateau Certan” but no depiction of the product.

487    Further, the only other reference to VCC in Australian media is one article in Australian Gourmet Traveller in 2009 which included references to the 2008 Chateau Certan de May de Certan and the 2008 VCC Wine 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 jancisrobinson.com, 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 James Suckling, on 20 October 2010 by the UK writer Neal Martin, and on 2 August 2011 by the Bordeaux based writer Jane Anson, all of which refer only to VCC, 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 Mr Hooke, Ms Faulkner and Mr Caillard.

491    Now when one analyses the relevant class of consumers postulated by VCC, 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 VCC’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 Golden Century and Jacques Reymond in 2011, plus immediate friends and family with whom the people within the first circle might share any VCC wines actually purchased.

494    As to the third concentric circle being those who have an interest in fine wines and read the literature and know VCC, this is necessarily limited by the small amount of literature referring to VCC or its wines prior to the relevant date.

495    So, a problem for VCC 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 VCC product which played a significant role in leading Mr Hooke, Ms Faulkner, Mr Airoldi and Mr Caillard to perceive a connection with VCC.

496    Now VCC’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. Henschke 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. Henschke 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 VCC 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 Verrocchi at [103], the Full Court 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 Mr de Moor adopted a course intent on capitalising on the reputation and goodwill associated with VCC, let alone intended to mislead.

503    Mr de Moor explained to Ms Harcus that whilst he wanted the New Certan wine label to be inspired by VCC, he wanted it to remain within the legal boundaries and he did not want anyone to be confused. I accept this.

504    Mr de Moor’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 New Certan wine and VCC or its wines. To Mr de Moor, the name New Certan 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 New Certan. And he was not interested in potential clients thinking that New Certan had an association or an agreement with or an approval of VCC. I accept his evidence as to this.

505    Mr de Moor accepted that he was the person in control of the ultimate label produced by the design process that he and Ms Harcus engaged in. He also accepted that he wanted the label of New Certan to be inspired by the VCC Wine. He explained that it was important to him that the New Certan wine 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 New Certan wine was inspired by VCC, Mr de Moor 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 “New Certan” refer to the sense of a site in Tasmania, inspired by Certan in Pomerol. 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. Mr de Moor did not create the label for the New Certan wine as an implement for the purpose of misleading potential customers. His motivations for creating the New Certan wine were quite personal. I accept his evidence as to this.

Interim conclusion

507    Clearly, on the evidence VCC has not established any relevant reputation as at 1999 concerning the two classes identified by VCC. The 1999 date will become relevant when I deal with the cancellation question concerning the relevant Kreglinger trade mark registration which I will discuss later.

508    But as to the reputation question as at 2013, on the evidence but just barely, VCC has established the requisite reputation in the two classes identified but only because of the composite of the VCC 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 New Certan wine 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 New Certan wine had some association with VCC.

510    I have discussed the evidence of VCC’s witnesses including their approach and perceptions when first presented with New Certan. 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 VCC Wine including the peculiar and distinctive pink colour that in important respects were mirrored in the pre-existing and past New Certan wine as I have discussed.

511    But I should say now that such findings only assist VCC concerning its case as to the sale and marketing of the pre-existing and past New Certan wine. Such findings do not assist it concerning the proposed re-branded New Certan wine that is yet to be released. The proposed new labelling is sufficiently distinctive. I will return to this shortly.

Is there damage?

512    Now VCC 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 VCC is the diminution in the value of VCC’s goodwill or rights in the name “Certan”, the name “Vieux Château Certan” and the VCC features.

513    But I agree with the respondents that there is no evidence that VCC 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    VCC also asserts a diminution of goodwill arising from the sale of the New Certan wine. But in my view there is no basis to suggest that anyone would think less of VCC or its products as a result of the promotion and sale of the New Certan wine.

515    Now as at the time of trial, 1,755 bottles of New Certan wine 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:

Halliday Wine Companion Website means the website owned and operated by HGX Pty Ltd ACN 612 186 946 and as at the date of this undertaking published online at www.winecompanion.com.au

Prior Branded New Certan Wine 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 New Certan Features 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 New Certan.

New Branded New Certan Wine 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 "NEW CERTAN" but without the other New Certan Features, 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 Prior Branded New Certan Wine;

(b)    they will forthwith take all reasonable steps to procure the publisher of the Halliday Wine Companion Website to remove all images of the Prior Branded New Certan Wine from the Halliday Wine Companion Website, including those published at the following URLs:

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 New Branded New Certan Wine.

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 New Certan wine, the New Certan wine has not made any profits, there is no evidence of any damage to VCC, 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. VCC 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 New Certan product

518    Now VCC says that the proposed re-brand will leverage and build upon the existing knowledge and reputation in the Australian marketplace of the New Certan wine. But as the respondents correctly point out, whilst PBV and Kreglinger have their own reputations as established and well-known producers of wine in the Australian wine industry, the New Certan wine 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 New Certan wine has been promoted through the PBV Cru Club newsletter with 910 subscribers as at 6 September 2022, the PBV New Certan Club with 11 members as at September 2022, the PBV cellar door, and the PBV social media accounts (Facebook and Instagram) which do not have significant followings.

520    The New Certan wine has been promoted and sold in limited quantities primarily directly to consumers through the Kreglinger website and the PBV cellar door, to various outlets for retail sales, via the Qantas Frequent Flyer loyalty program, to the Kalis Hospitality Group and to certain restaurants in Tasmania through Kreglinger’s distribution company.

521    Now although Mr Hooke, Ms Faulkner and Mr Oliver had reviewed the New Certan wine, this is not surprising given the volume of wines they are required to taste and review each year.

522    Mr Caillard 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 Mr Rich, Mr Evans or Mr Myers had seen or heard of the New Certan wine prior to this proceeding. Further, whilst Mr Airoldi 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 New Certan wine, 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 New Certan wine bearing the previous packaging at the same time as the New Certan wine bearing the new packaging. Moreover, by the time the New Certan wine 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 New Certan wine. 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 VCC or its wines.

526    Moreover, the period in which there is no New Certan 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 VCC’s case against the proposed New Certan 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 New Certan product, at some point in the future having the following characteristics.

528    First, they have actually encountered an earlier vintage of the New Certan wine, 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 New Certan wine, having had sufficient actual prior knowledge of not just the name “Vieux Château Certan” but also the pink cap and other product presentation of the VCC Wine so as to be likely to have perceived a connection between the earlier New Certan product and VCC 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 New Certan wine and the VCC Wine, so as then to be likely to perceive two matters.

531    The first matter is a connection between the proposed New Certan product and that earlier New Certan product, despite the stark differences between the proposed label and the earlier New Certan label, and the prominence given to “Tasmania”, “Pinot Noir” and the Joseph Lycett colonial era landscape.

532    The second matter is a further connection between that earlier New Certan product and VCC, despite the absence of any reference to VCC and despite the clear identification of the product’s source as PBV, 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 VCC, most of them had never seen or heard of the New Certan product after it went on sale in 2013 and before providing their evidence in this proceeding. This was the case with Mr Rich, Mr Evans and Mr Myers. Further, Ms Faulkner had not seen or heard of the New Certan product for seven years until it was sent to her to review in January 2020. Further, as to Mr Hooke, despite his considerable knowledge of and involvement in Tasmanian pinot noir, he did not encounter the New Certan pinot noir product for over five and a half years until it was sent to him to review in September 2018. Further, Mr Oliver did not encounter the New Certan product until he reviewed it in late August 2018, shortly before Mr Hooke’s review was published. And he gave the New Certan product sufficiently little attention when he reviewed it that he mis-spelt its name as “New Certain”. It never occurred to him that the New Certan wine had any association with VCC, indeed he did not think of VCC at all. The word “Certan” meant “absolutely zero” to him.