E & J Gallo Winery v Lion Nathan Australia Pty Limited

REASONS FOR JUDGMENT 1 We published reasons for judgment in this matter on 24 March 2009: [2009] FCAFC 27. We did not then make orders finally disposing of the appeal and cross-appeal. The parties have subsequently provided draft orders and brief written submissions in support of them. There is a large measure of agreement but two areas of disagreement. E & J Gallo Winery seeks a declaration that Lion Nathan Australia Pty Limited infringed its registered trade mark. Lion Nathan opposes the making of the declaration. Gallo wants the matter remitted to the primary judge to assess damages or, at its election, the taking of any account of profits. Again this is resisted by Lion Nathan. 2 Generally, we prefer the approach advocated by Lion Nathan. We accept, as Gallo submitted, that it sought declaratory relief in the appeal and, accordingly, it is appropriate for us to determine whether such an order should be made. However, for the reasons advanced by Lion Nathan, we have concluded it is inappropriate, as a matter of discretion, to make such a declaration. In our reasons (at [79]), we concluded that Lion Nathan has infringed Gallo's trade mark. No utility would be served, as we see it, in making a declaration of infringement in light of this finding. Indeed, any declaration which was made would have to be expressed with some precision as to when the infringement commenced. In our reasons we noted (at [2]) that Lion Nathan commenced selling its Radler beer in January 2008. No finding of greater precision was made by the trial judge in his judgment (at [17]). More precision would almost certainly be necessary. At the very least, it is impracticable for us to engage in further fact-finding. We refuse to make the declaration sought. 3 We accept, as Lion Nathan submitted, that the order remitting the matter should not be expressed in terms which pre-suppose damages will be ordered (or an account of profits taken). Whether damages should be ordered in exercise of the power conferred by s 126 of the Trade Marks Act 1995 (Cth) is said by Lion Nathan to be a discretionary matter. Whether this is so was not an issue raised in the appeal. We have not sought to investigate the question ourselves, although cases such as Commissioner of State Revenue (Vic) v Royal Insurance Australia Ltd (1994) 182 CLR 51 at 84-85 may be relevant. In our view, the preferable course is to remit the matter on the terms proposed by Lion Nathan and the question of whether there is a discretion and, if so, how it should be exercised can be determined by the primary judge. I certify that the preceding three (3) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Moore, Edmonds and Gilmour.