- Mr Francesco Mitolo (“Francesco“), had produced and sold wine from McLaren Vale, SA, since 1999. This was under the registered trade mark “MITOLO” (“Mitolo Mark“) through his businesses Mitolo Wines Australia Pty Ltd and Mitolo Wines Pty Ltd (“Mitolo Wines“).
- Mitolo Wines had used the Mitolo Mark extensively, including on labels across its range of wines.
- In 2014, Francesco became aware of a Facebook post from his cousin, Mr Anthony Mitolo (“Tony“), that said they were going to sell a wine named “Waveform”. The proposed label displayed the words “V. MITOLO and SON” above the word “Waveform”. Though Facebook, Francesco expressed concern to his cousin that the surname “Mitolo” would confuse his customers. Tony and his father / business partner, Vito Mitolo (“Vito“), stated they could use their surname in relation to their wine products, however, they agreed to reduce the size of the words “V. MITOLO and SON” on the label. Francesco permitted Tony to sell the Waveform wine. Francesco later clarified that he did not consider this to be general permission to use “Mitolo” in relation to selling wine, but limited to a small number of sales of the Waveform series in the USA only.
- At the time of the Facebook conversation, Vito and Tony were equal shareholders in Vito Mitolo & Son Pty Ltd, which had been incorporated in 2013. In 2014, Vito Mitolo & Son purchased a vineyard in McLaren Vale. In 2016, it then opened a restaurant called “Pizzateca” in McLaren Vale. Vito Mitolo & Son began producing and selling wine under the name “V. Mitolo and Son“.
- Mitolo Wines commenced proceedings in the Federal Court alleging Vito Mitolo & Son had infringed the Mitolo Mark and engaged in misleading or deceptive conduct and passing off.
- Had Vito infringed the Trade Marks Act and engaged in misleading or deceptive conduct and committed a tort of passing off?
- Besanko J found that Vito Mitolo & Son had infringed the Mitolo Mark under section 120(1) of the Trade Mark Act. Further, Vito Mitolo & Son had engaged in misleading or deceptive conduct in contravention of sections 18 and 29(1)(h) of the ACL and had engaged in passing off.
- The words “V. MITOLO AND SON” were found to be deceptively similar to the Mitolo Mark and therefore infringed the MITOLO Mark registrations. Their use also amounted to misleading & deceptive conduct and passing off.
- Besanko J held that if one considers the words “Mitolo” and “V. Mitolo and Son” by themselves, there would be no doubt that a consumer may wonder whether the two products came from the same source. The use of a common, well-known surname supported this contention.
The full text is available here: https://jade.io/j/?a=outline&id=648059
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