The owner of a registration for the LITTLE GREEK TAVERNA logo (below left) has obtained an interlocutory injunction enjoining the use of LITTLE GREEK CUZINA (below right) by two Brisbane restaurants*.
The facts
3 Florinians Pty Ltd (Taverna) is a family business run by its directors, Ms Elli Parmaklis, Ms Domna Papavasiliou and Mr Yianni Parmaklis. The recipes used at its restaurant Little Greek Taverna lean on the epicurean talents of the directors’ father. The restaurant is based in Brisbane’s West End, and it seems fair to say that it is wildly popular.
In 2015, Taverna became aware of a restaurant named Little Greek Cuzina (“Cuzina” is the Greek word for kitchen) in Graceville, roughly 10 kilometres from Little Greek Taverna. In 2016, Taverna became aware of a 2nd restaurant operating under the name Little Greek Cuzina, this time in Bulimba, roughly 8 kilometres from Little Greek Taverna.
Various instances of mistaken identity were documented, albeit as Greenwood J noted, with a lack of precision. Orders for food by Taverna were picked up by Cuzina. Various contacts of 3 Florinians asked if Taverna had opened another restaurant, and phone calls were made to Taverna to make a booking for Cuzina. There were queries raised as to the quality of Cuzina’s food.
The decision
Taverna sought an interlocutory injunction, alleging trade mark infringement, and also contraventions of the Australian Consumer Law and the common law of passing off. Greenwood J only dealt with the infringement claim in granting the interlocutory injunction.
Taverna relied on the instances of confusion in its evidence (examples of which are mentioned above). Cuzina argued that the words Little Greek are simply descriptive of a Greek restaurant which is small in character. It argued that it could rely on the defence that it was using a sign in good faith to indicate the kind, quality, quantity, intended purpose or some other characteristic of the services it provides.
The issue for Greenwood J in deciding whether to grant an interlocutory injunction involved a consideration of the strength of the prima facie infringement case and the balance of convenience.
As regards deceptive similarity between the marks, Greenwood J considered that the words Little Greek Taverna were essential or distinguishing characteristics of the registered mark, and that persons that know of the Taverna or with an imperfect recollection of it would be caused to wonder whether the Cuzina restaurants was also owned by the Taverna business. This was particularly so in the context of the relevant services, given the importance of oral communications in bookings etc.
Greenwood J saw the closing down of the Cuzina businesses as being entirely disproportionate as an alleged consequence of the grant of an injunction. Instead, the true measure was the cost taken in changing the graphics on menus, the signs, and other aspects of the livery of the restaurants, to remove LITTLE from the branding. Cuzina argued that Taverna had sat on its hands in respect of the first Cuzina restaurant in Graceville, to no avail. An interlocutory injunction was granted pending trial subject to Taverna giving an undertaking as to damages. Unless the parties reach a settlement, the case should proceed to trial in 2017.
Comment
In a recent academic article relating to the issue of deceptive similarity under Australian law, and 10 key factors considered in this regard, it was noted that there has been “no consistent approach in applying these factors, including their appropriate order and relative weighting”**.
Identifying what is the essential element or what are the essential elements of a registered mark will in some cases determine the outcome. This is a case in point. However, the finding that the words LITTLE GREEK TAVERNA comprised the essential element of the registered mark, by reference to the reputation developed by Taverna, is not without controversy. One could play the devil’s advocate and ask whether the word mark LITTLE GREEK TAVERNA could be registered in the face of an objection that it directly describes the services of a tavern or restaurant that is little and Greek, which then begs the question as to the relative importance of the stylistic elements of Taverna’s registration and the impact they might have on the issue of deceptive similarity. Minds will clearly differ on this point. The marks could be considered deceptively similar on either analysis.
By way of a contrast, on a slightly different set of facts involving competing cuisines from different continents, the owner of a UK registration for a CHEEKY ITALIAN logo (below left) opposed registration of a UK application for a CHEEKY INDIAN logo (below right). Whilst the opposition succeeded at first instance, that decision was overturned on appeal by Appointed Person James Mellor QC (note the different and higher threshold for such appeals in the UK, in our love letter to Appointed Persons here).
In outlining the difficulties he had with the reasoning at first instance, the Appointed Person noted his concern that the Hearing Officer appeared only to be making a comparison between the words CHEEKY ITALIAN and CHEEKY INDIAN. The Appointed Person also disagreed with the first instance reasoning as to the possibility of this being a possible example of brand extension: “the average consumer is not accustomed to seeing a house mark used in conjunction with individual words indicating different national cuisines”.
Food for thought.
* The case 3 Florinians Pty Ltd v PYT Enterprise Pty Ltd [2016] FCA 1077 is reported at http://www.austlii.edu.au/au/cases/cth/FCA/2016/1077.html.
** “Critical examination of the principles for determining whether trade marks are deceptively similar: A quest for more predictable decision making”, Janice Luck, Senior Lecture, Melbourne Law School, The University of Melbourne (2015) 25 AIPJ 111.
