Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd (No 2) - Trade Mark Infringement and Misleading Conduct

Original Word Document (493.9 KB) Federal Court of Australia

Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd (No 2) [2026] FCA 473

| File number: | VID 367 of 2022 |

| Judgment of: | ROFE J |

| Date of judgment: | 20 April 2026 |

| Catchwords: | PRACTICE AND PROCEDURE – form of orders giving effect to substantive reasons delivered in this proceeding

COSTS – application for indemnity costs – relevance of conduct of parties – preparation and reliance on extensive material of limited utility – conduct inconsistent with the overarching obligations encompassed in ss 37M and 37N of the Federal Court of Australia Act 1976 (Cth) |

| Legislation: | Federal Court of Australia Act 1976 (Cth) |

| Cases cited: | Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 5) (2006) 69 IPR 273

Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd [2026] FCA 161

Copeland (liquidator) v Odeesh, in the matter of FBF Transport Pty Ltd (in liq) (No 3) [2025] FCA 352

Graham Barclay Oysters Pty Ltd v Ryan (No 2) [2000] FCA 1220

Idenix Pharmaceuticals LLC v Gilead Sciences Pty Ltd (No 2) [2018] FCAFC 7

Rafidi v Commonwealth Bank of Australia (No 3) [2019] FCA 1182 |

| Division: | General Division |

| Registry: | Victoria |

| National Practice Area: | Intellectual Property |

| Sub-area: | Trade Marks |

| Number of paragraphs: | 23 |

| Date of last submissions: | 18 March 2026 |

| Date of hearing: | 23 March 2026 |

| Counsel for the Applicant/Cross Respondent: | I Horak KC with M Fleming and S Kearney |

| Solicitor for the Applicant/Cross Respondent: | Richard & Evans Commercial Lawyers |

| Counsel for the Respondents/Cross Claimants: | C Dimitriadis SC with D Larish |

| Solicitor for the Respondents/Cross Claimants: | Harris Gomez Group Lawyers |
ORDERS

| VID 367 of 2022 |

| BETWEEN: | CONTAINER ROTATION SYSTEMS PTY LTD (ACN 154 759 574)

Applicant | |
| AND: | INTERMODAL SOLUTIONS (GROUP) PTY LTD (ACN 115 243 171)

First Respondent

LOAD AND MOVE PTY LTD (ACN 116 435 360)

Second Respondent

GARRY PINDER

Third Respondent | |

| AND BETWEEN: | INTERMODAL SOLUTIONS (GROUP) PTY LTD (ACN 115 243 171) (and others named in the Schedule)

First Cross-Claimant | |
| AND: | CONTAINER ROTATION SYSTEMS PTY LTD (ACN 154 759 574)

Cross-Respondent | |

| order made by: | ROFE J |
| DATE OF ORDER: | 20 APRIL 2026 |
THE COURT DECLARES THAT:

Trade Mark Infringement

1. The First Respondent (ISG) has infringed Australian Trade Mark No. 1309643 (the Rotainer Trade Mark Registration) pursuant to ss 120(1) and 120(2) of the Trade Marks Act 1995 (Cth) (the Trade Marks Act) by using a trade mark in Australia, without authorisation of the Applicant (CRS), from at least February 2020, which is:

(a) substantially identical or deceptively similar to the word “ROTAINER”; and

(b) was used in relation to goods for which the Rotainer Trade Mark Registration is registered as set out in Annexure A and in relation to goods of the same description as those goods (such goods including tipplers and containers).

Statement based misleading and deceptive conduct

1. ISG has engaged in conduct which is misleading or deceptive or likely to mislead or deceive, in contravention of s 18 of the Australian Consumer Law (as contained in Schedule 2 of the Competition and Consumer Act 2010 (Cth) (the Australian Consumer Law) by representing in trade and commerce in Australia that:

(a) since August 2016 to around 11 October 2022, the words “Rotainer” and “tippler” are interchangeable or equivalent terms which was not true; and

(b) from 3 March 2021 to at least February 2023, the word “Rotainer” is a generic word for, or is descriptive of, a type of container (i.e. rotatable container) which was not true.

Website Conduct – Misleading and deceptive conduct and passing off

1. ISG, from February 2020, has engaged in conduct which:

(a) is misleading or deceptive or likely to mislead or deceive, in contravention of s 18 of the Australian Consumer Law;

(b) is false or misleading in that they represent that ISG’s goods are of a standard similar to that of CRS’s “rotainer” brand, and that ISG and its goods have a sponsorship and affiliation with or approval of CRS in contravention of ss 29(1)(a), 29(1)(g) and 29(1)(h) of the Australian Consumer Law; and

(c) constitutes passing off,

by using the word “Rotainer” including on www.pittoship.com, www.pittoship.com.au, www.rotainers.com, www.rotainers.com.au (together, the Rotainers Websites) (collectively the ISG Websites) and in a manner which causes the ISG Websites to appear in internet search results (paid and organic) (the Website Conduct).

Liability of the Third Respondent

1. The Third Respondent (Mr Ga r ry Pinder) has infringed the Rotainer Trade Mark Registration under ss 120(1) and 120(2) of the Trade Marks Act by acting in a common design with ISG and being a joint tortfeasor together with ISG in the infringing conduct identified in paragraph 1 above.

2. Mr Garry Pinder was engaged in the common design and was a joint tortfeasor in the contraventions of ISG set out in paragraphs 2, 3(a) and 3(b) above within the meaning of s 2 and thereby was a person involved in ISG’s contraventions of ss 18, 29(1)(a), 29(g) and 29(h) of the Australian Consumer Law.

3. Mr Garry Pinder engaged in the conduct with ISG identified in paragraph 3(c) above in acting in common design with ISG and being a joint tortfeasor together with ISG in those contravening acts.

Damages

1. In the event that CRS elects damages under the Trade Marks Act it is entitled to additional damages pursuant to s 126(2) of that Act as against ISG and Mr Garry Pinder, in an amount to be determined.

THE COURT ORDERS THAT:

Injunctions

1. Each of Mr Garry Pinder and ISG (whether by itself, its directors, officers, employees or agents or howsoever otherwise) be permanently restrained from using, authorising, procuring or acting in concert or directing with others to use:

(a) the word “ROTAINER”; or

(b) any other mark which is substantially identical or deceptively similar thereto;

as a trade mark (including, without limitation, using the “rotainers” in the domain name of the Rotainers Websites) in relation to any supply, sale, offer to sell, advertisement or promotion of goods listed in Annexure A or goods of the same description as those goods, such goods including container rotators (tipplers) and containers.

1. Pursuant to s 232(1) of the Australian Consumer Law, each of Mr Garry Pinder and ISG (whether by itself, its directors, officers, employees or agents or howsoever otherwise) be permanently restrained from:

(a) falsely representing in trade and commerce in Australia that the word “Rotainer” is a generic word for, or is descriptive of, a type of container (i.e. rotatable container);

(b) falsely representing that the words “Rotainer” and “tippler” are interchangeable or equivalent terms; and

(c) publishing the Generic Tippler Statement or Generic Container Statement in the forms reproduced in Annexure B or any substantially similar statement.

1. Pursuant to s 232(1) of the Australian Consumer Law, each of Mr Garry Pinder and ISG (whether by itself, its directors, officers, employees or agents or howsoever otherwise) be permanently restrained from:

(a) engaging in conduct which, by use of the word “rotainer” or “rotainers”, falsely represents that goods sold or supplied by ISG are those of, or the same as, goods sold or supplied by CRS;

(b) engaging in conduct which, by use of the word “rotainer” or “rotainers”, falsely represents that goods sold or supplied by ISG have a sponsorship, affiliation or approval of CRS; and

(c) continuing in the Website Conduct or any engaging in any conduct substantially the same as that conduct.

1. Each of ISG and Mr Garry Pinder:

(a) be restrained from registering any domain name which includes a sign which is substantially identical or deceptively similar to the word “ROTAINER”;

(b) and within 45 days from the date of these orders, ISG transfer the registration of the domain names:

(i) www.rotainers.com;

(ii) www.rotainers.com.au;

(iii) www.rotainer.org; and

(iv) www.rotainer.net; and

(v) www.Ramrotainer.com,

to CRS, and ISG and Mr Garry Pinder are required to take all necessary steps to assist with such transfer.

Quantum

1. There be an inquiry into damages (to include additional damages) or, at the election of CRS, an account of profits and there be a directions hearing on a date not less than 28 days after the date of these orders.

Other

1. The Amended Originating Application dated 9 March 2023 otherwise be dismissed.

2. The Amended Notice of Cross-claim dated 16 March 2023 be dismissed.

3. To the extent necessary, the Respondents have leave to appeal these orders.

Costs

1. ISG and Mr Garry Pinder, jointly and severally, pay to CRS:

(a) excluding the costs of (b) below, the costs of the proceeding to date on a party-party basis; and

(b) save that all costs of and associated with (including the costs of reviewing, considering and responding to) each of the following affidavits, 50% of the costs of the Chronologies and each document contained in the chronology be paid on an indemnity basis:

(i) the affidavit of Harris Marcelo Gomez sworn 24 May 2023;

(ii) the affidavit of Harris Marcelo Gomez sworn 25 August 2023;

(iii) the affidavit of Harris Marcelo Gomez sworn 29 September 2023;

(iv) ISG’s “Chronology of Third Party Uses of Rotainer” filed on 26 August 2024; and

(v) ISG’s “Amended Chronology of Third Party Uses of Rotainer” filed on 13 September 2024,

1. Costs be payable by ISG and Mr Garry Pinder jointly and severally and forthwith.

2. CRS be at liberty to apply to the Court for costs to be taxed on a lump sum basis with such an application to be made to a Registrar of this Court.

3. ISG and Mr Garry Pinder, jointly and severally, pay CRS’ costs of and incidental to the directions hearing on 23 March 2026.

4. There be liberty to apply.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

ANNEXURE A

Machines; industrial and mining implements and machinery (other than hand-operated); apparatus and equipment for lifting and transportation; machines, apparatus and installations for conveying goods; machines, apparatus and installations for loading or unloading containers, for loading goods into containers or for unloading goods from containers; apparatus and equipment for use in mining; haulage equipment and apparatus (mining); cranes; apparatus for loading or unloading cargo; cargo handling apparatus and machines; and parts, fittings and accessories in this class for any of the aforementioned goods,

ANNEXURE B

Generic Tippler Statement

Generic Container Statement

REASONS FOR JUDGMENT

ROFE J:

1. Introduction

1 On 27 February 2026, I delivered reasons in this matter: Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd [2026] FCA 161 (F J or February Judgment). These reasons assume familiarity with the matters set out in the February Judgment and the terms adopted there will be used herein.

2 At the time the February Judgment was published, the parties were directed to confer as to the appropriate form of orders giving effect to the reasons therein and, to the extent that agreement could not be reached, to file competing proposed orders together with brief submissions in support of their respective positions. The parties were to provide their proposed orders by 13 March 2026. That date was subsequently extended to 18 March 2026 in light of the parties having advised the Court that they were in the process of conferring and required additional time to finalise their proposed orders.

3 The parties thereafter provided their respective proposed forms of order, and a directions hearing was held on 23 March 2026 to address the competing orders. The parties were able to reach substantial agreement, with the remaining areas of contention largely resolved at that hearing.

4 The purpose of these reasons is to provide context for the costs orders made today.

1. Appropriate costs order

5 The parties advanced competing positions as to costs. The Respondents contend that there should be no departure from the usual order that costs be assessed on a party-party basis. By contrast, CRS submits that a special costs order is warranted in light of the Respondents’ conduct, in particular in relation to certain affidavit material and the Amended Chronology addressed at FJ [559]–[572], as well as an earlier iteration of that chronology.

6 The starting point is s 43(2) of the Federal Court Act which confers upon the Court a broad and generally unfettered discretion to order costs in proceedings, save for the caveat that this power be exercised judicially: Idenix Pharmaceuticals LLC v Gilead Sciences Pty Ltd (No 2) [2018] FCAFC 7 at 3.

7 The next statutory provision I will have regard to in assessing costs is s 37M of the Federal Court Act, which provides that the overarching purpose of the civil practice and procedure provisions is to facilitate the just resolution of disputes according to law and as quickly, inexpensively and efficiently as possible. More specifically, sub-s 37N(4) empowers the Court to order costs against a party that has failed to act in a manner consistent with the overarching purpose.

8 Ordinarily, costs follow the event and are generally assessed on a party-party basis. A departure from that position will not lightly be made and generally requires the identification of some special or unusual feature, or circumstances such that the justice of the case requires a different order: Copeland (liquidator) v Odeesh, in the matter of FBF Transport Pty Ltd (in liq) (No 3) [2025] FCA 352 at 27. An award of indemnity costs is one such departure. Indemnity costs may be justified where a party has acted in a manner so unreasonable or which otherwise invites criticism: Graham Barclay Oysters Pty Ltd v Ryan (No 2) [2000] FCA 1220 at 13. Such an order is compensatory in nature, in the sense that it is directed to ensuring that a party is not left out of pocket for costs unreasonably incurred, but it also serves to mark the Court’s disapproval of conduct which has occasioned those costs. The unreasonable incurrence of costs may arise from conduct resulting in unnecessary cost or delay or is otherwise inconsistent with the overarching purpose.

9 In the present case, CRS has been substantially successful. Subject to the discrete issue addressed below, there is no reason to depart from the usual position that the Respondents should pay CRS’s costs of the proceeding on a party-party basis.

10 CRS seeks an order that the costs associated with the affidavits of Mr Harris Marcelo Gomez sworn on 24 May 2023, 25 August 2023 and 29 September 2023 (the Gomez Material), together with ISG’s “Chronology of Third Party Uses of Rotainer” filed on 26 August 2024 and its amended version filed on 13 September 2024 (the Chronologies), be paid on an indemnity basis. Mr Gomez is the managing partner of Harris Gomez Group Lawyers, the firm on record for the Respondents in this proceeding.

11 In support of the indemnity costs sought, CRS relies on the extent of the Gomez Material and the Chronologies, the burden imposed in reviewing and responding to them, and the findings made in the February Judgment as to their limited utility. In particular, reliance was placed on the observations at FJ [559]–[572], including the conclusion that the Respondents’ approach to the Chronologies was “antithetical” to the principles underpinning s 37M of the Federal Court Act. CRS contends that those findings should have practical consequences in the form of an indemnity costs order.

12 The Respondents submit that the mere fact that evidence was not admitted, or was ultimately of limited utility, does not of itself warrant an order for indemnity costs, citing the following observations of Heerey J in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 5) (2006) 69 IPR 273 at [24]:

The rejection of tendered evidence, whether expert or otherwise, is an everyday feature of all litigation. Often there is room for argument, as there was in this case, as to the admissibility of evidence. It might even be negligent for counsel to fail to attempt to tender evidence where there is authority against its admission: Re Knowles [1984] VR 751 at 768–70. In itself, the tendering of evidence held to be inadmissible is not indicative of wrongful conduct which might warrant an order for indemnity costs.

13 The Respondents further submit that aspects of the material were admitted, that questions of admissibility were contestable, and that CRS did not foreshadow any application for indemnity costs at the time the evidence was pressed.

14 It may be accepted that the rejection or limited use of evidence is not, without more, a basis for ordering indemnity costs. As the authorities make clear, questions of admissibility and relevance frequently arise in the ordinary course of litigation and do not, in and of themselves, bespeak unreasonable conduct: see Rafidi v Commonwealth Bank of Australia (No 3) [2019] FCA 1182 at 20.

15 However, the present case involves more than the mere tender of evidence which was not ultimately admitted or relied upon. As I noted in the February Judgment, it was the scale of the materials and the manner in which they were sought to be deployed that was objectionable. The Chronologies, in particular, comprised a substantial body of material requiring detailed consideration by CRS and the Court. As I observed at FJ [572], much of that material was “[…] unlikely to be of any meaningful assistance to the Court”. Taking Annexure HG-2 to Mr Gomez’s 24 May 2023 affidavit as an example, this annexure comprised a “Summary Table” of the materials found from Mr Gomez’s internet searches using Google and other online search tools for the term “rotainer”. That table contained 107 entries of screenshots from website pages or documents found, devoid of context from the larger document, ranging from WA Parliamentary Hansard, stills from YouTube videos, and Instagram and LinkedIn posts from Australia and overseas, not all of which were in English. All the entries were dated after the priority date. The Gomez Material sought to introduce a wide-ranging suite of documents into the proceeding without any coherent explanation as to how the Respondents intended to deploy that material in support of their case.

16 The preparation and reliance upon that material materially increased the length and complexity of the proceeding and occasioned costs that would not otherwise have been incurred. CRS was required to devote considerable time and resources to reviewing, analysing and responding to the material, diverting attention from other aspects of the case. In practical terms, CRS was compelled to prepare and file a detailed response to each document or entry in the Amended Chronology to ensure it was in a position to address the material should it be admitted.

17 In those circumstances, and consistent with the findings in the February Judgment, I am satisfied that the Respondents’ conduct involved a departure from the standard expected of parties conducting litigation. The difficulty did not lie merely in adducing extensive evidence, but in advancing an insufficiently particularised body of material (much of which lacked any relevance) which effectively required both the Court and CRS to sift through it to discern its relevance and utility. It is therefore appropriate that CRS is not left out of pocket for the costs incurred in dealing with that material. An order for indemnity costs is warranted to compensate CRS and to give effect to the considerations in ss 37M and 37N of the Federal Court Act, although the breadth of that order should be appropriately confined.

18 In the exercise of the Court’s discretion, the indemnity costs order is confined to 50% of the costs associated with the Gomez Material and the Chronologies. This apportionment reflects that, while the material was extensive and in significant part of limited utility and relevance, some documents, mostly those tendered during cross-examination, were relevant. CRS ought not to have been required to sift through the morass of documents in the Gomez Material to find the relevant ones. It also recognises that parties are entitled to advance their case and adduce evidence in support of their position, but must do so consistently with their overarching obligations and without generating unnecessary cost.

19 In my view, this order strikes an appropriate balance between compensating CRS for costs unnecessarily incurred, while recognising that a full indemnity costs order in respect of the entirety of that material is not warranted.

1. Need for deterrence

20 Before reaching my disposition on the appropriate form of orders arising from the February Judgment, I wish to make some final observations regarding the Respondents’ conduct concerning the Gomez Material and the Chronologies in a more general sense.

21 This type of approach to the conduct of litigation should not be encouraged and ought not to become commonplace, particularly in trade mark proceedings, where the efficient and focussed resolution of the real issues in dispute is of particular importance. The inclusion of extensive material that is of limited probative value, or material that does not meaningfully advance the issues for determination, serves only to increase cost and complexity without corresponding forensic benefit. That is inconsistent with the overarching purposes of the Federal Court Act.

22 For these reasons, the costs order made in this case serves not only a compensatory function but also reflects the Court’s disapproval of the Respondents’ conduct and signals that litigation should not be conducted in this manner. The Court discourages the adoption of similar approaches in future proceedings and seeks to reinforce the expectation that parties exercise restraint and take a sensible approach to the preparation and presentation of their cases. Moreover, while a party may believe that the deployment of such material advances its position, that approach risks undermining the efficient administration of justice and the proper use of the Court’s finite resources. The Court does not look favourably upon such conduct. Future litigants that fail to heed this caution expose themselves to the risk of an order for indemnity costs against them.

1. Disposition

23 For the reasons above, the Respondents should bear 50% of CRS’s costs of the Gomez Material and the Chronologies on an indemnity basis, and the remainder of CRS’s costs on a party-party basis.

| I certify that the preceding twenty-three (23) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rofe. |
Associate:

Dated: 20 April 2026

SCHEDULE OF PARTIES

| | VID 367 of 2022 |
| Cross-Claimants | |
| Second Cross-Claimant: | LOAD AND MOVE PTY LTD (ACN 116 435 360) |
| Third Cross-Claimant: | GARRY PINDER |