Australia – Use Of Own Name Defence To Trade Mark Infringement Has Its Limitations.

Background

The applicants operate a successful and well known wine production and sale business, which includes a cellar door and fine dining restaurant, in McLaren Vale, South Australia.  The applicants own trade mark registrations for the mark MITOLO and operate their business using that mark.  The name MITOLO was originally chosen because it is the surname of the individual who first set up the Mitolo Wines business.  The business commenced in 1999.  

In around 2013 the respondents commenced operating a retail and wholesale services business relating to the sale, distribution and marketing of wine including cellar door sales of wine.  This included sale of wine through a cellar door located with a restaurant in McLaren Vale from 2016.  The respondents use the name V. MITOLO AND SON on their wine.  The surname of the individual respondents is also Mitolo.  The individuals involved in the dispute are related.

The applicants alleged that by using the name V. MITOLO AND SON the respondents infringed their registered trade marks and engaged in misleading and deceptive conduct and passing off.  The respondents argued that the marks were not substantially identical or deceptively similar and if they were, that the use of its own name defence applied (s 122(1)(a)(i) of the Trade Marks Act provides that a person does not infringe a registered mark if the person uses in good faith the person's name).  The respondents also brought a cross claim for misleading and deceptive conduct and estoppel.  The applicants submitted evidence of numerous instances of confusion where consumers believed the wine sold at the respondents' restaurant and cellar door was the wine of the applicants due to the common use of the word MITOLO. 

The Court's findings

The Court found in favour of the applicants on all grounds.  On the trade mark infringement arguments, the Court concluded that the V MITOLO AND SON mark was deceptively similar to the MITOLO mark and therefore its use in relation to wine infringed the MITOLO trade mark registrations.  The Court also dismissed the respondents' use of own name arguments.  The Court found that while "Vito Mitolo and Son" reflects the first respondent's name, "V. Mitolo and Son does" does not.  The Court stated that the issue raised by the statutory exception is a narrow one of whether the person's name has been used and whether the names are effectively the same.  Contraction of a name would only be captured where the person is well known by the contracted name which is not the case with the first respondent.  The Court also found that the use by the first respondent was not in good faith because he was aware of the conflict with the applicants' marks when the use commenced.  

In light of the extensive evidence of confusion and the applicants' reputation as an established producer of high quality wine, the Court also found that the respondents' conduct amounted to misleading and deceptive conduct and passing off.  The respondents' estoppel and misleading and deceptive conduct arguments were dismissed.

*A version of this article first appeared on WTR Daily, part of World Trademark Review, in September 2019.  For further information, please go to www.worldtrademarkreview.com.