A French giant of the wine world has taken a small Tasmania winery to the Federal Court over the use of similar bottle labels.
Bordeaux wine producer Societe Civile Et Agricole Du Vieux Chateau Certan (VCC) alleged Tamar Valley winery Pipers Brook Vineyard (PBV), via its majority owner Kreglinger and CEO Paul De Moor, contravened Sections 18 and 29(1)(g) and (h) of the Australian Consumer Law for the tort of passing off. VCC also sought cancellation of Kreglinger’s New Certan trade mark.
In a decision delivered on Friday, Justice Beach concluded VCC’s reputation had not been tarnished, and he was not convinced the company had suffered any damage, and therefore it had not established the tort of passing off. He also ruled there were not sufficient grounds for cancellation of the trade mark, which had been registered unopposed in 1999.
The rulings were not made easily, however, with Justice Beach’s 118-page judgment showing he considered an array of factors including the reputation of French wine in Australia; classes of consumers; Australians’ knowledge of Bordeaux and its wines; the buying habits of wine connoisseurs; the readership of wine reviews; and French words used on wine labels.
Not in contention was the use of a VCC label as inspiration for PBV’s first vintage of New Certan wine. VCC argued, however, that this had led to a “high degree of visual similarity” between the VCC label and the PBV label, which was used on six vintages of pinot noir between 2013 and 2021.
“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,” Justice Beach said.
The Pomerol-based company claimed the respondents had “availed themselves of the fame and reputation of VCC and its wines for their own commercial benefit”, with consumers and traders of fine wine led to believe the New Certan wine was connected with, or approved by, VCC.
Mr De Moor argued he intended to pay homage to his family heritage at VCC – his great grandfather Georges Thienpont bought the 1700s estate in 1924 – rather than copy an existing brand.
Justice Beach said the evidence showed very limited sales of VCC wine in Australia, with only a few thousand over the past 25 years, at $600 to $800 a bottle.
“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,” he said.
He also said Tasmanian pinot noir differed greatly from Bordeaux pinot noir, in structure and flavour – and price, at $75 to $95 a bottle.
“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,” he said.
Justice Beach also pointed out that unlike mainstream PBV, VCC sold its “rare fine wines” 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. The wines are primarily sold en primeur, meaning that they are purchased prior to being bottled and delivered some months later,” he said.
Justice Beach said VCC’s expert witnesses included professional wine writers and critics, importers and distributors “with a high degree of knowledge of and an interest in Bordeaux wines”, but none was a ”marketing or branding expert”, nor an “ordinary and reasonable” wine consumer or trader.
He also quipped that the Bar table had provided “an inordinately high level of evidence” during the trial.
“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,” he said.
“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.”
Justice Beach concluded that VCC had “just barely” established its requisite reputation, and that members of the fine wine trade were likely to have been misled or deceived into thinking that the New Certan wine had some association with VCC.
“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,” he said.
“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.
“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.”
He said a proposal by Kreglinger and PBV to adjust the presentation of the New Certan wine for future vintages and not to sell current stock solved any problems created by the respondents’ conduct and would avoid any future infringing conduct.
He ordered that each party bear its own costs of the proceeding.
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