CASE NOTE – Registered Trade Mark Infringement
The Federal Court case of 3 Florinians Pty Ltd v PYT Enterprise Pty Ltdconcerned an application for an interlocutory injunction for registered trade mark infringement pursuant to section 126(1) of the Trade Mark Act 1995 (Cth). In issue was whether the respondents’ unregistered trade mark was deceptively similar to the applicant’s registered composite trade mark.
Background – 3 Florinians Pty Ltd v PYT Enterprise Pty Ltd
The applicant, 3 Florinians Pty Ltd (‘Florinians’), has operated a family restaurant business known as the ‘Little Greek Taverna’ since September 2009. It is the registered owner of a composite trade mark, which combines an image of a red pepper above the styalised words ‘Little Greek’ and ‘Taverna’. The mark was registered in October 2009 in respect of a variety of advertising services falling within Class 35 and Class 43.
The first respondent, PYT Enterprise Pty Ltd (‘PYT’), has operated a Greek restaurant by the name of ‘Little Greek Cuzina’ since June 2015. It has two unregistered trade marks which were identified as the ‘Square Parthenon Mark’ and the ‘Parthenon Mark’. These marks were also licenced by the second respondent, Adamaris Pty Ltd (‘Adamaris’), which has conducted a restaurant business since about June 2016.
The applicant produced considerable material to demonstrate that its registered trade mark had become well recognised as the dominant badge of identification for its restaurant. It also led evidence to show the impact of the unregistered trade mark on its reputation, which included constant enquiries about the Forinians’ ‘new’ stores, confusion by suppliers and customer complaints that were intended to be directed to the respondents’. However the court noted the applicant had not provided revenue statistics to support the assertion that ‘the volume of consumer confusion’ resulted in a decline in revenue which ‘directly aligns with the existence of [PYT] and [Adamaris]’.
PYT asserted that it adopted its trade marks in good faith on grounds including that:
- it only had the capacity to serve dinner to 35 guests and was therefore, a ‘little’ restaurant;
- the word ‘little’ is commonly used in the restaurant industry to describe a small restaurant;
- the word ‘Greek’ was used to convey the type of food served at the restaurant; and
- the word ‘Cusina’ was created as the phonetic equivalent to the Greek work for ‘kitchen’, being ‘Kouzina’.
Based on the deceptive similarity of the trade marks, the court considered that the applicant had made a strong prima facie case for infringement and held that the balance of convenience only required the respondents to cease using the word ‘little’. The words ‘Greek Cuzina’ were considered sufficiently non-infringing to remain until the hearing of the full proceeding, which will also resolve the applicant’s further claims for misleading or deceptive conduct and passing-off.
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