Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd  FCA 902 (13 June 2019)
Successful actions by Mitolo for trademark infringement, contraventions of the Australian Consumer Law (ACL) and passing off.
Mr Francesco (Frank) Mitolo is the sole director of Mitolo Wines. Mr Vito Mitolo is the sole director of Vito Mitolo & Son Pty Ltd (Vito)and a cousin of Frank Mitolo. He owns half the issued share capital in Vito. Mr Anthony (Tony) Mitolo is Mr Vito Mitolo’s son and owns the other half of the issued share capital of Vito.
Mitolo Wines owned a trademark registration for MITOLO for wines in class 33 dating from 27 July 1999. It also owned pending trademark applications for MITOLO and MITOLO WINES which were being opposed by Vito. The MITOLO trade mark had been used since 1999 in relation to wine sourced from Mitolo Wines’ vineyard in the McLaren Vale region and from a vineyard owned by another person also in the McLaren Vale region. A cellar door/tasting room and restaurant were opened in October 2017. Besanko J was satisfied that Mitolo Wines had a reputation as an established wine producer.
There was a Facebook exchange between Mr Frank Mitolo and Mr Tony Mitolo in 2014 arising from Tony’s plans to sell wine with a label containing MITOLO. Frank agreed to this on the understanding that the wine would only be sold in New York where Tony was then residing.
Mitolo Wines alleged its MITOLO registration in class 33 was infringed by Vito’s marketing of wine sourced from Vito’s and other vineyards in the McLaren Vale region. Vito initially sold wines from 2014 under different labels showing ‘V.Mitolo and Son’ as producer. These wines were exported to China and the USA as well as being sold in the Australian domestic market. Tony subsequently opened a cellar door and pizza restaurant in 2016 which sold wine including Vito Mitolo & Son’s labelled wine.
Mitolo Wines issued a letter of demand to Vito in August 2016 and settlement negotiation ensued with a mediation conference in November 2016, but that was unsuccessful.
Besanko J considered Frank to be a reliable witness and preferred his evidence to that of Vito and Tony. There was also evidence pointing to instances of actual confusion which his Honour regarded as a ‘powerful body of evidence of actual confusion in the market place caused by the common use of the word “Mitolo” ‘. His Honour also preferred the evidence of Mitolo Wines’ expert over that of Vito’s expert.
Besanko J noted that Vito’s use of “V.Mitolo & Son” and “V.Mitolo and Son” was clearly trade mark use. There is no difference in how consumers respond to either the word “and” or the symbol “&” when seeing these as part of a brand name. The presence of other matter in Vito’s various labels did not detract from this. The reference to V. Mitolo and Son is what will strike the consumer as the overwhelmingly important indication of the source of the wine product. His Honour had no doubt that a customer or consumer would be caused to wonder whether it might not be the case that Mitolo Wines’ and Vito’s products came from the same source.
Vito relied on good faith use of its own name as a defence to infringement, but this failed. His Honour did not consider use of “V. Mitolo and Son” to be use of “Vito Mitolo & Son Pty Ltd. The substitution of the letter “V” for the name “Vito” was a material difference. His Honour observed that if there is room for an approach involving a contraction of the name, that would only be in a case where the person is well known by the contracted name and there is no evidence of that in this case. In case he was wrong on this aspect, his Honour also considered that Vito’s use was not use of its name in good faith. When Vito started supplying or selling wines in Australia, it (through Mr Vito Mitolo) knew of wines supplied by Mitolo Wines and must have realised that there would be, or may well be, confusion, or was wilfully blind to that circumstance.
Vito also pleaded that that by reason of the representations made by Frank Mitolo in the course of the Facebook exchange in 2014, they acted in a certain way and, as a result, Mitolo Wines is estopped from asserting an infringement of the MITOLO mark and from asserting a contravention of the ACL. However, Besanko J rejected this estoppel argument. His Honour considered this exchange went no further than one particular version of Vito’s label and it was difficult to detect conduct by Frank Mitolo which had created or encouraged an assumption that he would not sue if V. Mitolo and Son was used in a contrary way. Further, there was no evidence of detriment beyond that particular version of the label.
Besanko J also upheld Mitolo Wines’ claim that Vito’s conduct was misleading or deceptive under the ACL. Such conduct represented that Vito and Mitolo Wines are the same person or that the wines produced by Vito and being the infringing products were produced by or at the direction of Mitolo Wines. The same conduct also amounted to a representation that the wines have a sponsorship, approval or affiliation with Mitolo Wines or Mitolo Wines’ products. Mr Vito Mitolo and Mr Tony Mitolo were also personally knowingly involved in this conduct.
Besanko J also upheld Mitolo Wines’ passing off claim namely, that by offering for sale red wines bearing the McLaren Vale geographic indication from a location very near to Mitolo Wines’ cellar door and utilising the name V. Mitolo and Son, Vito was representing that the wines are, or are associated with, the wines made by Mitolo Wines.
In a subsequent decision reported at Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 2)  FCA 1140 (25 July 2019), his Honour approved injunctions under the Trade Marks Act restraining Vito from infringing the registered MITOLO mark (i.e. in terms of the statutory monopoly) and from the specific conduct giving rise to infringement. However, under the ACL, the injunction was framed in terms of restraining the specific conduct of Vito.