Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd (No 2)

Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd (No 2) [2026] FCA 473 is a Federal Court decision about final orders and costs following an earlier liability judgment. Even though it is not the main reasons on liability, it is still commercially important because the declarations and injunctions show the conduct the Court had already found unlawful.

The orders record findings that ISG infringed CRS’s registered “ROTAINER” trade mark, engaged in misleading or deceptive conduct, made false or misleading representations, and committed passing off. The conduct included use of “Rotainer” in relation to goods, statements that “Rotainer” was interchangeable with “tippler” or was generic, and use of “Rotainer” on websites, domain names and in search-result related conduct. The Court also ordered transfer of several domain names, directed an inquiry into damages or an account of profits, and made a partial indemnity costs order because of the way the respondents ran part of the case.

CRS was the owner of Australian Trade Mark No. 1309643 for “ROTAINER”. ISG was the main respondent, and the proceeding also involved Load and Move Pty Ltd and Garry Pinder. The No 2 judgment says the Court had already delivered substantive reasons on 27 February 2026 and then required the parties to confer on the final form of orders. So the detailed liability analysis is elsewhere, but the final declarations tell a clear commercial story about what the dispute was really about.

The dispute concerned ISG’s use of “Rotainer” in trade and commerce in Australia. The Court declared that, from at least February 2020, ISG used a mark substantially identical or deceptively similar to “ROTAINER” in relation to goods covered by the registration and goods of the same description. The orders specifically say those goods included tipplers and containers. Annexure A also shows the registration covered a broad range of machinery and cargo-handling related goods, including machines and installations for conveying goods, loading and unloading containers, cargo handling apparatus and related parts and accessories.

The case was not only about use of a word on goods. The Court also declared that ISG made two categories of statements that were not true. First, from August 2016 to around 11 October 2022, ISG represented that “Rotainer” and “tippler” were interchangeable or equivalent terms. Second, from 3 March 2021 to at least February 2023, ISG represented that “Rotainer” was a generic word for, or descriptive of, a type of container, namely a rotatable container. Those timeframes matter because they show the Court treated the conduct as sustained over years, not as a one-off slip.

The online side of the dispute was also specific. The Court’s declarations refer to use of “Rotainer” on www.pittoship.com, www.pittoship.com.au, www.rotainers.com and www.rotainers.com.au. The Court also referred to conduct causing those websites to appear in paid and organic internet search results. According to the declarations, that conduct falsely represented that ISG’s goods were of a standard similar to CRS’s “rotainer” brand and that ISG and its goods had sponsorship, affiliation with or approval of CRS. The Court also held that this website conduct constituted passing off.

Mr Garry Pinder was found to be personally involved. The Court declared that he acted in a common design with ISG and was a joint tortfeasor in the trade mark infringement and passing off conduct. It also declared that he was involved in the ACL contraventions. For business owners, that is a practical warning that branding and website decisions are often made by real people inside the business, and personal exposure can arise where an individual is sufficiently involved.

After the February liability judgment, the parties argued about the final form of orders and about costs. The Court said CRS had been substantially successful. It then dealt with a separate complaint by CRS that the respondents had relied on extensive affidavit material from their solicitor, Mr Harris Marcelo Gomez, and on chronologies of third party uses of “Rotainer”, much of which was of limited utility and imposed a significant burden on CRS and the Court.

Because this is the No 2 judgment, the Court did not restate the full liability reasoning in detail. But the declarations and costs reasons make the main legal issues clear. One issue was trade mark infringement under ss 120(1) and 120(2) of the Trade Marks Act 1995 (Cth). The Court had to determine whether ISG used, without authorisation, a mark substantially identical or deceptively similar to “ROTAINER” as a trade mark in relation to goods covered by the registration or goods of the same description.

Another issue was whether ISG’s statements and website conduct contravened the Australian Consumer Law. The declarations show the Court dealt with s 18, which prohibits misleading or deceptive conduct, and ss 29(1)(a), 29(1)(g) and 29(1)(h), which address false or misleading representations about standard, sponsorship, affiliation and approval. The Court also had to determine whether the same conduct amounted to passing off at common law.

The Court also had to address personal liability. The orders show that the Court found Mr Pinder liable through common design and as a joint tortfeasor, and involved in the ACL contraventions. That is significant because it shows the case was not treated as conduct by a company alone.

In the No 2 judgment itself, the immediate issues were procedural and remedial. The parties had to settle the final form of declarations, injunctions, domain transfer orders and the next step on quantum. The Court also had to decide the proper costs order. That costs dispute turned on s 43(2) of the Federal Court of Australia Act 1976 (Cth), the overarching purpose in s 37M, and the power in s 37N(4) to order costs where a party has not acted consistently with that purpose.

The Court made a series of declarations in CRS’s favour. First, it declared that ISG infringed Australian Trade Mark No. 1309643 pursuant to ss 120(1) and 120(2) of the Trade Marks Act by using, from at least February 2020, a mark substantially identical or deceptively similar to “ROTAINER” in relation to registered goods and goods of the same description, including tipplers and containers.

Second, the Court declared that ISG engaged in misleading or deceptive conduct in contravention of s 18 of the Australian Consumer Law by representing that, from August 2016 to around 11 October 2022, “Rotainer” and “tippler” were interchangeable or equivalent terms, and by representing that, from 3 March 2021 to at least February 2023, “Rotainer” was a generic word for, or descriptive of, a type of container. The Court declared those representations were not true.

Third, the Court declared that, from February 2020, ISG’s website conduct was misleading or deceptive under s 18, false or misleading under ss 29(1)(a), 29(1)(g) and 29(1)(h), and passing off. The conduct included use of “Rotainer” on www.pittoship.com, www.pittoship.com.au, www.rotainers.com and www.rotainers.com.au, and use in a manner causing those websites to appear in paid and organic search results. The Court said this conduct represented that ISG’s goods were of a standard similar to CRS’s “rotainer” brand and that ISG and its goods had sponsorship, affiliation with or approval of CRS.

The Court also made personal liability findings against Mr Pinder. It declared that he infringed the trade mark by acting in a common design with ISG and being a joint tortfeasor, that he was involved in the ACL contraventions, and that he acted with ISG in the passing off conduct.

On remedies, the Court permanently restrained ISG and Mr Pinder from using “ROTAINER” or any substantially identical or deceptively similar mark as a trade mark in relation to the relevant goods, including use of “rotainers” in the domain names of the Rotainers websites. It also permanently restrained them from falsely representing that “Rotainer” is generic or descriptive, from falsely representing that “Rotainer” and “tippler” are interchangeable or equivalent, and from publishing the generic statements reproduced in Annexure B or any substantially similar statement. The Court further restrained them from conduct using “rotainer” or “rotainers” that falsely represented ISG’s goods were those of CRS or had CRS sponsorship, affiliation or approval, and from continuing the website conduct or substantially the same conduct.

The Court ordered that ISG and Mr Pinder be restrained from registering any domain name including a sign substantially identical or deceptively similar to “ROTAINER”. It also ordered that, within 45 days, ISG transfer www.rotainers.com, www.rotainers.com.au, www.rotainer.org, www.rotainer.net and www.Ramrotainer.com to CRS, with ISG and Mr Pinder required to take all necessary steps to assist. On quantum, the Court ordered an inquiry into damages, including additional damages if CRS elected damages under the Trade Marks Act, or alternatively an account of profits. The Court also declared that if CRS elected damages under the Trade Marks Act it was entitled to additional damages under s 126(2), in an amount to be determined.

On costs, the Court held that CRS had been substantially successful and should generally receive its costs on a party-party basis. But the Court went further in relation to the Gomez affidavits sworn on 24 May 2023, 25 August 2023 and 29 September 2023, and ISG’s chronology and amended chronology of third party uses of “Rotainer” filed in August and September 2024. The judge accepted that merely tendering evidence that is later rejected does not automatically justify indemnity costs. However, this case involved more than that. The Court said the scale of the material and the manner in which it was deployed were objectionable, that much of it was unlikely to be of meaningful assistance, and that it materially increased the length and complexity of the proceeding.

As a result, the Court ordered that 50% of the costs associated with those affidavits, the chronologies and each document contained in the chronology be paid on an indemnity basis, with the remainder of CRS’s costs on a party-party basis. The Court said the order was compensatory but also reflected disapproval of the respondents’ conduct and signalled that litigation should not be conducted in that manner.

The first practical point is that online brand use can create overlapping liability. A business might think it is simply using a term customers search for, or describing a product category in ordinary language. But if the term is another trader’s registered mark, and especially if you also use it in domain names, website headings or search strategies, the legal risk can spread across trade mark infringement, ACL claims and passing off. This case shows that the Court may look at the whole commercial picture, not just one isolated phrase.

The second point is that statements about a brand being generic are risky. The orders record findings that it was misleading to say “Rotainer” and “tippler” were interchangeable or equivalent, and misleading to say “Rotainer” was generic or descriptive of a type of container. Businesses sometimes make these arguments in sales copy, comparative advertising or disputes over naming rights. But unless that position is legally supportable, those statements can become a separate source of liability.

The third point is that search visibility matters. The Court’s declarations did not stop at website content. They referred to conduct causing the relevant websites to appear in paid and organic search results. That means businesses should review Google Ads, SEO settings, metadata, domain names, landing pages and comparative wording together. A customer can be misled before they even click through to your site.

The fourth point is governance. The findings against Mr Pinder show that individuals can be exposed where they are sufficiently involved in the conduct. Directors and senior decision-makers should not assume the company alone carries the risk. If a rebrand, domain registration or comparative campaign is being planned, legal review should happen before launch, not after a complaint arrives.

The fifth point is about litigation discipline. The Court’s costs reasoning is unusually practical for business readers. The judge did not say that every unsuccessful evidentiary argument deserves indemnity costs. Instead, the problem was the scale of the Gomez material and chronologies, the lack of coherent explanation for how they would be used, and the burden they imposed on the other side and the Court. The judgment describes one annexure as a summary table of 107 entries from internet searches, including screenshots from website pages or documents, some overseas and not all in English, all dated after the priority date. The Court said CRS should not have had to sift through a morass of documents to find the relevant ones.

For businesses involved in disputes, that is a strong reminder that more material is not always better. Evidence should be curated, explained and tied to a live issue. If your legal team proposes filing broad internet-search compilations, ask what issue each document proves and whether the same point can be made more efficiently.

The substantive liability reasons were delivered on 27 February 2026 in Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd [2026] FCA 161. After that, the parties were directed to confer on the appropriate form of final orders. They were initially to provide proposed orders by 13 March 2026, but that date was extended to 18 March 2026. A directions hearing on the competing orders was held on 23 March 2026. The No 2 judgment and final orders were delivered on 20 April 2026.

This means the present decision should be read as the orders-and-costs stage of the case. It is still highly useful for business readers because it sets out the declarations, injunctions, domain transfer orders, damages pathway and costs consequences in concrete terms. But anyone needing the full liability reasoning should also read the earlier February judgment.

Does this case mean you can never use a competitor’s brand online? Not necessarily. But using another trader’s brand in a way that functions as a trade mark, suggests equivalence, or implies affiliation or approval can create serious risk. The orders here show that websites, domains and search-result conduct can all be relevant.

What if you think the term is descriptive? This case shows that saying a term is generic or descriptive can itself be misleading if that claim is not true. Businesses should not assume that a commercially convenient label is legally safe.

Why were domain names so important? The Court not only restrained future use but ordered transfer of several domain names to CRS within 45 days. That shows domain registrations can be treated as part of the infringing or misleading conduct and can be lost as a remedy.

What is the practical lesson on evidence? Keep it focused. The Court criticised extensive internet-search based material and chronologies that lacked clear utility. If evidence creates cost and complexity without real forensic value, it can affect costs orders.

This page is based on the Federal Court’s No 2 judgment in Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd (No 2) [2026] FCA 473. That judgment expressly states that it assumes familiarity with the earlier substantive reasons delivered on 27 February 2026 in Container Rotation Systems Pty Ltd v Intermodal Solutions (Group) Pty Ltd [2026] FCA 161.

The account above therefore focuses on what can be stated confidently from the declarations, injunctions, domain transfer orders, damages directions and costs reasoning recorded in the No 2 judgment. The detailed liability reasoning sits in the earlier decision.