3 Florinians Pty Ltd v PYT Enterprise Pty Ltd
[2016] FCA 1077
•5 September 2016
FEDERAL COURT OF AUSTRALIA
3 Florinians Pty Ltd v PYT Enterprise Pty Ltd [2016] FCA 1077
File number(s): QUD 597 of 2016 Judge(s): GREENWOOD J Date of judgment: 5 September 2016 Catchwords: INTELLECTUAL PROPERTY – consideration of an application for an interlocutory injunction to restrain the respondents from using a mark in the course of trade in connection with services for which the applicant’s trade mark is registered, said to be deceptively similar to the registered trade mark of the applicant Legislation: Trade Marks Act 1995 (Cth), ss 10, 120, 122, 126 Cases cited: Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199
Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57
Samsung Electronics Company Ltd v Apple Inc. (2011) 286 ALR 257
GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd (2013) 305 ALR 363
Date of hearing: 1 September 2016 Date of last submissions: 1 September 2016 Registry: Queensland Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 84 Counsel for the Applicant: Mr D Eliades Solicitor for the Applicant: Irish Bentley Lawyers Counsel for the Respondents: Mr B McEniery Solicitor for the Respondents: IP Gateway Lawyers ORDERS
QUD 597 of 2016 BETWEEN: 3 FLORINIANS PTY LTD ACN 139 456 385
Applicant
AND: PYT ENTERPRISE PTY LTD ACN 605 852 159
First Respondent
ADAMARIS PTY LTD ACN 611 193 867
Second Respondent
JUDGE:
GREENWOOD J
DATE OF ORDER:
5 SEPTEMBER 2016
UPON the applicant giving the usual undertaking as to damages,
THE COURT ORDERS THAT:
1.Pursuant to s 126(1)(a) of the Trade Marks Act 1995 (Cth), the first respondent and the second respondent, by themselves, their servants or agents, or otherwise howsoever, take all necessary steps and do all such things as may be necessary and within their power, within 30 days from the date of this order, to remove from trade marks used by:
(a)the first respondent at and in connection with the business operated by it at 1 Park Terrace, Graceville, Brisbane in the State of Queensland;
(b)the second respondent at and in connection with the business operated by it at Shop 1, 190 Oxford Street, Bulimba, Brisbane in the State of Queensland,
the word “little” or “Little” whether in a stylised form or otherwise from the trade mark or trade marks “little Greek cuzina” (words only) or “little Greek cuzina” (in stylised form), pending the trial of the proceeding or earlier order.
2.Leave is granted to the applicant to file an amended originating application and an amended Fast Track statement.
3.Leave is granted to the applicant to file the affidavit of Angus Murray affirmed 1 September 2016.
4.The parties are directed to confer with a view to settling agreed directions for the completion of remaining procedural interlocutory steps and submitting, if agreed, proposed directions orders to the Court within three days.
5.In the event that the parties are unable to agree directions for the future conduct of the matter, the proceeding will be listed for directions on 12 September 2016 at 9.30am.
6.Costs of the interlocutory application are reserved for later determination.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
GREENWOOD J:
These proceedings are concerned with an application for an interlocutory injunction pending trial or earlier order in aid of final relief pursuant to s 126(1)(a) of the Trade Marks Act 1995 (Cth) (the “Act”): Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 at [89] per Gummow and Hayne JJ.
The principal proceeding was commenced by a Fast Track originating application supported by a Fast Track statement of claim. On the hearing of the interlocutory injunction application on Thursday, 1 September 2016, the applicant sought leave to file an amended originating application and an amended Fast Track statement.
I give leave to file both those documents.
The applicant, 3 Florinians Pty Ltd (“Florinians”), is the registered owner of a composite trade mark, No. 1327799. It consists of an image of a red pepper sitting above the words, in stylised form, “Little Greek” with the word “Taverna” underneath those words. A black and white image of the composite trade mark is set out below:
The mark is registered with a priority date of 23 October 2009 in respect of a range of advertising services falling within Class 35 and a range of services falling within Class 43. Class 43 is concerned with “services for providing food and drink; temporary accommodation”. Approximately 16 separate services within Class 43 are identified.
The applicant conducts what is described as a “family business” based on the cooking skills, techniques and experience of the father of the three directors of Florinians, Ms Elli Parmaklis, Ms Domna Papavasiliou and Mr Yianni Parmaklis. In simple terms, the business is a restaurant business known and described as the Little Greek Taverna. Florinians has been conducting that business since September 2009 at 1 Browning Street, West End, Brisbane in Queensland.
The first respondent, PYT Enterprise Pty Ltd (“PYT”), conducts a food business undertaking (a restaurant) by reference to two signs as depicted below:
The first sign or unregistered trade mark is described by Mr Naveen Sharma, the director and owner of PYT, as the “Square Parthenon Mark”. The second sign or unregistered trade mark is described by him as the “Parthenon Mark”. Mr Sharma says that since 9 June 2015, PYT has carried on the business of operating a Greek restaurant at 1 Park Terrace, Graceville, Brisbane in Queensland and has used both the Square Parthenon Mark and the Parthenon Mark in connection with that business.
The second respondent, Adamaris Pty Ltd (“Adamaris”) has, since about 29 June 2016, been carrying on the business of operating a Greek restaurant at Shop 1, 190 Oxford Street, Bulimba, Brisbane in Queensland. Mr Jonathan Morgan is the director and owner of Adamaris. He says that in conducting his restaurant undertaking he has also used the Square Parthenon Mark and the Parthenon Mark. He says that in early June 2016, he acquired a licence to use those marks from PYT.
In the principal proceeding, the applicant seeks a declaration that PYT and Adamaris have infringed the registered trade mark of Florinians. The applicant seeks damages or an account of profits in respect of that infringement and additional damages pursuant to s 126(2) of the Act. The applicant also seeks a permanent injunction pursuant to s 126(1)(a) of the Act restraining PYT and Adamaris whether by themselves, their servants or agents, from:
… using the word “Little” or the word “Little” (stylised) in the trade marks “Little Greek cuzina” (words only) or “Little Greek cuzina” (stylised) in connection with the businesses operated at the locations identified [in the amended Fast Track statement] or at any other location in Australia.
In the principal application, relief is also sought in reliance upon contended contraventions of the Competition and Consumer Act 2010 (Cth) (ss 18, 29(g) and/or 29(h) of that Act). The applicant also claims damages in respect of the tort of passing off including exemplary damages, interests and costs.
An interlocutory injunction, of course, goes in aid of final relief according to settled principle. The applicant seeks interlocutory relief framed in the following terms:
1.Interim injunctive relief pursuant to s 126(1)(a) of the Trade Marks Act 1995 requiring the First Respondent and the Second Respondent, by themselves, their servants or agents, to take all necessary steps to do all such things as may be necessary and within their power within thirty (30) days from the date of this Order, to remove from the trade marks used by:
a.the First Respondent at the business operated by it at 1 Park Terrace, Brisbane, particularly identified in paragraph 2 of the Amended Fast Track Statement;
b.the Second Respondent at the businesses operated by it at Shop 1, 190 Oxford Street, Bulimba, more particularly identified in paragraph 3 of the Amended Fast Track Statement;
the word “Little” or the word “Little” (stylised) from the trade marks “Little Greek cuzina” (words only) or “Little Greek cuzina” (stylised) at the aforesaid locations until further order.
The statutory provisions are well known. Nevertheless, s 120(1) of the Act provides that a person infringes a registered trade mark if the person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to the goods or services in respect of which the trade mark is registered. In this case, the applicant says that each respondent is engaging in conduct constituting a use of a sign, as a trade mark, which is deceptively similar to the applicant’s registered trade mark in connection with services in respect of which the mark is registered. The applicant disavows any reliance upon the notion that use by either respondent engages use of a sign that is substantially identical with the applicant’s trade mark. Section 126(1)(a) provides that the relief the Court may grant in an action for infringement of a registered trade mark includes an injunction which may be granted subject to any condition that the Court thinks fit. Section 122(1)(b)(i) provides that in spite of s 120, a person does not infringe a registered trade mark when the person uses a sign, in good faith, to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of goods or services.
As to deceptive similarity, s 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The organising principles which govern the exercise of the discretion to grant or withhold an interlocutory injunction are those principles set out by their Honours in Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 at [19], per Gleeson CJ and Crennan J and at [65] to [72] per Gummow and Hayne JJ. The Full Court of this Court has also comprehensively examined these organising principles in Samsung Electronics Company Ltd v Apple Inc. (2011) 286 ALR 257 at [44] to [48] and [51] to [74] per Dowsett, Foster and Yates JJ. Those principles were reasserted by the Full Court in GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd (2013) 305 ALR 363 at [81] per Bennett, Jagot and Griffiths JJ. I apply those principles. It seems to me unnecessary to repeat them in these reasons. They are well settled and well understood.
The principal affidavit in support of the interlocutory application is an affidavit sworn by Ms Elli Parmaklis. As already mentioned, Ms Parmaklis is one of three directors of Florinians.
Ms Parmaklis says that the applicant has “continuously and strenuously” promoted the registered trade mark and has “acquired a reputation” in the trade mark in Australia. Ms Parmaklis identifies 11 categories of promotional activities, marketing, participation in festivals and other events and media events which are said to have established a reputation in the mark in Florinians.
The registered trade mark, of course, is the composite mark.
Ms Parmaklis annexes to the affidavit various magazine and print media articles and advertisements said to identify the depth of recognition for the mark upon which the reputation is based. The material annexed at “DP3” and “DP4” to the affidavit is entirely concerned with the recognition attributable to “Little Greek Taverna”.
I accept that there is a considerable body of material which demonstrates that “Little Greek Taverna” has become well recognised as the dominant badge of identification of a restaurant business conducted by Florinians. Some of the material annexed to the affidavit is quite difficult to read and much of it is almost impossible to read. However, some examples of the material can be identified as follows. In a review of Brisbane restaurants, “Little Greek Taverna” is reviewed in these terms (among other observations): “Little Greek Taverna is primarily located on the corner of Boundary and Melbourne Streets and offers fresh and tasty authentic Greek food that won’t hurt the wallet. The restaurant is a family run business that promises to treat each guest with the friendly hospitality that Greek culture is famous for”. In a food catalogue, “Little Greek Taverna” is described as: “Greek food fit for the gods”. In an article called “Brisbane’s Best Greek” restaurants, these observations are made about “Little Greek Taverna”:
This post wouldn’t be right without a Little Greek Taverna mention. It’s a staple of West End and loved by all who enjoy Greek food and BYO restaurants … a match made in heaven … Little Greek Taverna is the perfect venue to sink a few drinks and hoe down on some quality Greek with mates. And to top it off, this family business puts an emphasis on quality without charging exorbitant prices. Little Greek Taverna knows how to give the people of Brisbane what they want.
In an article called “Brisbane’s best BYO restaurants”, “Little Greek Taverna” receives another favourable review. That also occurs in the “Best Greek Food in Brisbane” article. In the Courier Mail Lifestyle Guide, there is a review of 10 restaurants focused upon a culturally diverse cuisine. The Greek restaurant selected by the guide is the “Little Greek Taverna”. In a publication called “thecreativeissue”, the Little Greek Taverna is described as “a Brisbane staple”. The review says this:
Little Greek Taverna at West End … has thus assured its status as one of Brisbane’s favourite Greek restaurants. With every Greek dish you can think of present on their menu, you will be hard pressed to know what to order. Everything comes recommended …
Again, in an article called “Ten Best BYO Spots in Brisbane” dated 7 September 2015, this observation occurs:
LITTLE GREEK TAVERNA
Such a list of BYO joints in Brisbane would be nothing without Little Greek. For years it’s been one of the busiest BYO spots in West End …
In an article called “Where to dine in Brisbane – Brisbane Restaurant Guide”, dated 19 August 2016, these observations occur:
Little Greek Taverna
Little Greek Taverna is positioned at Brisbane’s West End, a cheerful, breezy restaurant [serving] Mediterranean cuisine. This authentic Greek Taverna is classified as one of the best Brisbane … [the remainder of the article is cut off]
Under the heading “10 Things About Brisbane” dated 19 August 2016, this observation occurs:
West End is arguably the most cultural suburb in Brisbane, packed with pubs, bars and restaurants. “Little Greek Taverna” is a major crowd pleaser.
In an article entitled “The 10 Best Restaurants in Brisbane’s West End” dated 19 August 2016, this observation occurs:
Little Greek Taverna
Northern Greek specialties
This family‑owned restaurant has been serving West End with delicious and authentic Greek food for seven years, and is a favourite among locals. Located on one of the busiest streets of West End, The Little Greek Taverna is constantly alive and bustling with diners. Take in the unique Macedonian décor as well as an array of dishes that come from this region – you won’t find this kind of food anywhere else in Brisbane …
The material also shows that Little Greek Taverna is to be featured on a television program called the “Great South East”. The Little Greek Taverna is featured in a Qantas magazine. There are further examples of the extent to which Florinians has established a reputation for its business undertaking known, in all of this material, as the Little Greek Taverna.
Ms Parmaklis says that in or about June 2015, she became aware of the existence of PYT and its restaurant business operating at 1 Park Terrace, Graceville. Ms Parmaklis says that a Greek property developer (whose name she cannot recall) asked her (at a wedding) whether Florinians had sold the business. Ms Parmaklis was confused by the comment. Ms Parmaklis says that in about June 2015, a close friend contacted her regarding “a store that had opened in Graceville”. That remark can only sensibly be understood as a reference to the business being operated by PYT at 1 Park Terrace, Graceville. Ms Parmaklis says that she spoke with Mr Sam Poullos, the bank manager at the West End branch of Westpac Banking Corporation who looks after the banking affairs of Florinians. Ms Parmaklis adds this: “… and he [Mr Poullos] stated that he had encountered another of ‘our’ stores in Graceville”. Ms Parmaklis also says this: “He [Mr Poullos] expressed confusion as he expected that he would have been informed about us opening new stores”. Ms Parmaklis says that she explained to Mr Poullos that the store was owned by a third party which had no affiliation or association with Florinians.
Ms Parmaklis says that she recalls that shortly after speaking with Mr Poullos in June 2015, she was contacted by a customer who asked her whether “we had listened to her suggestions and [had] opened a restaurant in Graceville”. Ms Parmaklis explained to the customer that this business was owned by a third party and had no affiliation or association with Florinians.
Ms Parmaklis says that on or about 20 June 2016, she became aware that Adamaris was operating a business at Shop 1, 190 Oxford Street, Bulimba and was using the “little Greek cuzina” mark (the “LGC Mark”) otherwise described as the “Square Parthenon Mark”. Ms Parmaklis became aware of this because her nephew (and staff member), Michael Papavasiliou, together with Rhys Theso, who were in Bulimba, were approached by one of the regular customers of Florinians. The customer questioned Michael Papavasiliou “about a Bulimba store”. Ms Parmaklis says that she is informed by Michael Papavasiliou that he and Rhys Theso continued along Oxford Street, Bulimba and saw the LGC Mark. Ms Parmaklis was promptly contacted by Michael Papavasiliou about having seen that use.
Ms Parmaklis says that on or about 27 June 2016, she engaged lawyers on behalf of Florinians to correspond with PYT and Adamaris about their respective use of the LGC Mark.
Ms Parmaklis says that on 29 June 2016, she was contacted by the marketing consultant used by Florinians, Ms Penny Panorea of ADS Design. Ms Parmaklis says that Ms Panorea expressed her surprise that Florinians had opened new restaurants without her marketing assistance. Ms Parmaklis recalls that Ms Panorea “was upset that the work we had paid her to do was being used by another entity”.
Ms Parmaklis says that on 2 July 2016, she attended a “wedding of my friends, Kon and Karla Pappas where I was questioned about ‘our’ Bulimba site”. No content of any engagement about that matter is set out in the affidavit. However, Ms Parmaklis says that after the wedding, her nephew, Michael Papavasiliou, told her (and Ms Parmaklis verily believes it to be so) that Michael Papavasiliou had been approached by a man who introduced himself as the owner of Little Greek cuzina. Ms Parmaklis says that Michael Papavasiliou “walked away on the basis that we are legally represented”. Ms Parmaklis says that she has been “contacted countless times with complaints that ‘our’ Graceville or Bulimba restaurants weren’t at the same standard as the original Little Greek Taverna in West End”. Ms Parmaklis says that the constant need to address customer confusion has been, and continues to be, “emotionally distressing” with the result that she has sought medical advice due to emotional stress.
Ms Parmaklis says that her mother, Ms Tsambika Parmaklis, is responsible for collecting produce orders for Florinians from the company’s supplier “Superior Food Services”. Ms Parmaklis says that “there have been occasions where she has been informed that our order had already been collected”. Ms Parmaklis says that on 12 August 2016, Florinians received an email from Superior Food Services in these terms: “When placing orders can you please use your relay your account code [the code number is then quoted] to our sales team. The reason for this is there has been confusion between your company and another company with a similar name”. The email in question is “DP6” to Ms Parmaklis’s affidavit. That email is an email from Ms Nicola Norman to the deponent and Ms Domna Papavasiliou (Ms Parmaklis’s co‑director). I am invited to infer that the observation of Ms Norman about confusion is a statement about the confusion that that organisation was experiencing as between a business operating, on the one hand, under the title, “Little Greek Taverna” and, on the other hand, a business operating under a “similar name”, that is, “little Greek cuzina”. There is no express reference to the name or title of that similar business in the email.
Ms Parmaklis does not depose to having taken up the question of that confusion with Ms Norman. Ms Parmaklis seems to have proceeded on the assumption that Ms Norman was telling Florinians that “little Greek cuzina” had become a source of confusion for Superior Food Services due to the similarity of that name to “Little Greek Taverna”, to the point where it had become necessary for Florinians, in the view of Ms Norman and Superior Food Services, to quote the Florinians account code to the supplier so that the “sales team” would know which business was which, presumably so that invoices issued by the supplier would go to the right place in the face of confusingly similar titles.
Ms Parmaklis also says that she has been informed “on numerous occasions that there is a difference in the quality of their food and service” which I assume is intended to be a reference to a comparison between the food and service offered by Florinians in operating the “Little Greek Taverna” and either or both of the respondents in operating their restaurants. However, that is not exactly what Ms Parmaklis says in the affidavit and the contention is not developed properly. There is a significant lack of precision in many of the factual topics the deponent seeks to speak to in the affidavit.
Ms Parmaklis says that the “volume of consumer confusion has resulted in a decline in revenue which directly aligns with the existence of [PYT] and [Adamaris]”. No revenue statistics are provided in support of that assertion of fact. Ms Parmaklis puts on further evidence which suggests some attrition in patronage and thus revenue, due to confusion. For example, on 21 August 2016, Mr Jake Evangelou, an employee of Florinians, sent an email to Ms Parmaklis and one of the directors, Ms Domna Papavasiliou, in these terms:
To Domna and Elli,
Over the past month whilst I’ve been on my managing shifts I have received several phone calls from customers asking to book into the little Greek cuzina in graceville and bulimba, I also had a friend of mine dine at the little Greek cuzina in bulimba asking if we were the same business, it’s really confusing for the customers and myself with the name being so similar.
Sent from my iPhone
Ms Parmaklis also annexes a note (called a “waiter slip”) completed by Mr Jake Evangelou dated 20 August 2016 which is in these terms:
20th Aug.
5:14
2 customers ask if we were related to Little greek cuzina-Jake Evangelou
Manager on Shift @ little greek taverna
Ms Parmaklis also annexes copies of a series of text messages some of which are exchanged with Ms Papavasiliou and others are text messages between Ms Parmaklis and others. One example is a text to Ms Parmaklis in these terms:
Have you guys opened up in Bulimba?
No babe just the one in west end. Are you referring to little Greek cuzina?
I just saw it come up, I thought it said little Greek taverna.Another text has a photograph of the sign “little GREEK cuzina” with patrons sitting under the sign. The text enquiry and response goes like this:
Are you guys the same?
Nah that’s not us Hahahah
We’re little Greek tavernaA text to Ms Papavasiliou draws her attention to the presence of Little Greek cuzina (on this occasion in Bulimba). Ms Papavasiliou says: “Thanks babe. I’ve made a record of you alerting me to this for our lawyers. So annoying”. The text in response adds: “It’s in Bulimba, on Oxford Street. I know right, I was like, ‘that’s crazy!!’”
Another text to Ms Parmaklis says this:
I am writing to you because my friends went to one new restaurant in Balmoral at the 17th of July which call [is called] Little Greek Cuzina and they choosed that restaurant because they thought you opened another one. They texted me at the same … and asked if this restaurant is the same because the menu was really similar …
As to that text, the reference to Balmoral is odd because the Adamaris restaurant is in Bulimba (although Balmoral is nearby) and the evidence suggests that the menus are not “really similar”.
Ms Parmaklis asserts in her affidavit that Florinians “has, and will continue to, suffer financial and reputational damage should [PYT] and [Adamaris] continue to operate”.
PYT relies upon an affidavit of Mr Naveen Sharma sworn 31 August 2016. Mr Sharma says that PYT, since 9 June 2015, has carried on the business of operating a Greek restaurant at 1 Park Terrace, Graceville and does so by reference to the Square Parthenon Mark and the Parthenon Mark. Mr Sharma says that he adopted the Parthenon Mark for PYT honestly and in good faith for the following reasons: the Graceville premises only had capacity to serve dinner to 35 guests and hence it is a “little” restaurant; the word “Little” is a commonly used word in the restaurant industry which is “instantly recognisable” by guests and the general public as being “descriptive” of a small restaurant serving a specific type of food, for example, “little India” and “little Italy” and thus Mr Sharma felt it “perfectly appropriate” that “little” be used to describe “my Greek restaurant”; the word “Greek” was adopted because it is a Greek restaurant and the word immediately conveys to the guest the type of food able to be consumed at the restaurant; the word “cuzina” is an invented word that is the phonetic equivalent to the Greek word for “kitchen”, being “Kouzina” and to Mr Sharma’s knowledge, the word “cuzina” is not being used by any other restaurant in Australia; Mr Sharma’s restaurant is a semi‑opened kitchen restaurant by which he “invites guests” into his “kitchen for dinner”; the use of the three words together conveys imagery of a homely traditional little Greek kitchen in which guests are able to enjoy traditional Greek food and ambiance; and the Parthenon pillar in the Parthenon Mark was adopted to reinforce the traditional Greek “flavour” of the restaurant.
Mr Sharma says that he believes the use of the Parthenon Mark “is distinctive of my business”. Mr Sharma also says that the menu used in his restaurant is very different from the menu used by the applicant.
Mr Sharma puts in issue some aspects of the affidavit of Ms Parmaklis. Thus, the factual questions are in contest and many of these factual matters will be a matter for determination at the trial of the proceedings.
As to the confusion identified by Ms Parmaklis by reason of the email from Ms Norman for Superior Food Services, Mr Sharma says that none of his suppliers have approached him with concerns over the business name adopted by him suggesting similarity with any other business name. He says that Superior Food Services and Megacontinental supply Greek food products and ingredients to at least 90% of the Greek restaurants in Brisbane. He says that he understands the word “Taverna” to be a word forming part of the English language.
Mr Sharma also says that it is “very common” for Greek restaurants to use the phrases “Little Greek”, “Little Greece” or “Greek Taverna” in their restaurant name in Australia. Mr Sharma attaches searches derived from Mr Sharma’s solicitor searching the ASIC database, Australian Business Register database and restaurant websites by reference to the search terms “Little Greek” or “Greek Taverna”, Australia wide. The search engines for these searches were Google and Bing.
The searches show references to “Little Greek Taverna” (Florinians) and “Little Greek Cuzina” (PYT), Graceville.
Other Greek restaurants include “Lefkas Taverna”, “Kafe Meze”, “The Greek Club” and “Ouzeri”.
Other searches reveal these names: “Taverna Greek Psistaria”, “Yiamas Greek Taverna”, “Theo’s Greek Tavern”, “Thaleia Greek Taverna”, “Seagulls Greek Taverna”, “Kefi Greek Tavern”, “That Greek Tavern”, “Pelagos Greek Tavern”, “George’s Greek Tavern”, “White Village Greek Tavern”, “Yanni’s Greek Taverna”, “Flame Greek Tavern”, “Platia Greek Taverna”, “Rhodes Greek Taverna”, “Nobel Greek Tavern”, “Ellenika Traditional Greek Taverna”, “The Greek Islands Taverna”, “Opa Taverna Greek Restaurant”, “Chrysafi Greek Taverna”, “Little Mykonos Taverna”, “Pelagos Greek Taverna”, “Meltemi Greek Tavern”, “Thanasis Greek Tavern”, “Eos Greek Tavern”, “Jim’s Greek Tavern”, “The Little Greek”, “Acropolis Greek Seafood”, “Adelfia Greek Tavern”, “Big Fat Greek Bar & Grill”, “Dion Greek Restaurant & Tavern”, “Eat Greek”, “Epano Greek Restaurant”, “Fetta’s Greek Taverna”, “Flame Greek Tavern”, “Florina’s Greek Tavern”, “George’s Greek Tavern”, “Greek Islands Taverna”, “Greek on Halifax”, “Greek Spot”, “Greek Tavern”, “Kafenes Greek Restaurant”, “Kouzina Modern Greek & Meze Bar”, “Mad Greek”, “Manoli’s Greek Taverna”, “Medusa Greek Taverna”, “Mesa Greek Cuisine”, “Mezethes Greek Taverna”, “Mykonos Greek Restaurant”, “Natalia’s Greek Cuisine”, “Ostratos Greek Taverna”, “Othello Greek Restaurant”, “Ouzo Greek Taverna”, “Parea Greek Tavern”, “Philhellene Provincial Greek Cuisine”, “Plaka Greek Restaurant”, “Sansis Greek House Tavern”, “Sofie’s Greek Restaurant”, “The Greek Deli & Taverna”, “The Olive Greek Restaurant & Bar”, “Tsindos Greek Restaurant”, “Village Square Greek Tavern”, “Yots Greek Taverna”, “Zucca Greek Mezze”.
The ASIC searches also show a reference to “Little Greek Pie Company” as a business name which was cancelled. The “Little Greek Grove” name is a registered name for a Victorian business. There is a restaurant called “Good Little Greek Girl” in St Kilda, Victoria and a restaurant business in New South Wales called “Little Mykonos Greek Restaurant”. There is a business name “Little Greece in Parramatta” as the business name of a restaurant business in Parramatta and a business name “The Little Greek – Street Food” for a business conducted in Victoria. There is also a business name for a Parramatta restaurant, “Little Greece on Church Street”.
Apart from the very few references in [52] of these reasons to business names which incorporate the words “Little Greek” with words of addition like “Pie Company” or “Grove” or “Street Food”, it is not, according to these searches, “very common” for the operators of restaurant businesses to adopt the words “Little Greek” as an identifier for a trade name or title either followed by “Tavern” or “Taverna” or other words of addition.
PYT commenced using the business identification “little Greek cuzina” (both as words and in a stylised form) adopting the “pillar graphic” from about 9 June 2015. At that time, the only Greek restaurant, at least in Brisbane, which seemed to be using the business identification “Little Greek” was Florinians although properly understood, the business identification was “Little Greek Taverna”. Many of the business identifiers for the conduct of a Greek restaurant (as indicated at [50] and [51] of these reasons) adopt identifiers such as Yiamas, Theo’s, Thaleia, Seagulls, Kefi, Pelagos, George’s, Yanni’s, Platia, Elenika, Opa and so on, followed by “Greek Taverna” as clear possessive identifiers of the restaurant business.
By the time PYT adopted “little Greek” as the identifier attached to the invented word “cuzina”, the applicant had been operating a business described as “Little Greek Taverna” for seven years in respect of which it had established that identifier as a “badge of identification” in which reputation subsisted for the conduct of the business conducted by Florinians. PYT chose the identifier “little Greek” rather than any differentiating title such as Sharma’s Greek cuzina or Naveen’s Greek cuzina or My Greek cuzina or any other description which identifies the business expressly with its actual operator.
Although PYT’s identifier adds the invented word “cuzina” and, in terms of physical representation adopts a graphic pillar in and around the word “Greek”, the oral and phonetic use of the identifiers is “Little Greek Taverna” on the one hand and “Little Greek cuzina” on the other. The evidence suggests that there is confusion in the booking of the restaurants. That confusion is consistent with the notion that prior to 9 June 2015, the applicant enjoyed reputation in the words “Little Greek Taverna” as a badge of identification for a Taverna restaurant operation.
Mr Sharma says that if an interlocutory injunction were to be granted (of the kind sought in scope prior to the amended application), pending trial, he believes it would be necessary for PYT to cease operating during that period with the result that PYT would suffer a weekly loss of profits in an amount of approximately $1,800; weekly expenses of $9,400 would continue to be incurred; PYT would suffer a loss of reputation and a loss of regular customers; the lessor of the premises might assert a breach of the lease against PYT; and, PYT would suffer the loss of valuable casual staff due to the closure.
Mr Sharma says that should PYT elect to continue trading during the period of any injunction, it would nevertheless suffer significant losses associated with a “forced rebrand” including: expending significant time, money and resources on marketing, advertising and websites; a downturn in business due to the “loss of all of the goodwill and reputation it has built up in its distinctive trade mark”; the cost of undertaking a rebrand; the loss of valuable staff due to the uncertainty of whether the business will continue to trade going forward; and reputational damage associated with the rebranding.
Mr Jonathan Morgan has put on an affidavit on behalf of Adamaris.
Adamaris commenced its restaurant undertaking on or about 29 June 2016 pursuant to a licence it obtained from PYT in early June 2016. Mr Morgan’s affidavit is in very similar terms to the affidavit of Mr Sharma. As to matters of specific difference, he says that he also believes that should an injunction be granted, Adamaris would be forced to cease operating during the period of the interlocutory injunction with the result that it would suffer losses including: weekly profits in an amount of $2,375; weekly expenses would continue to be incurred of approximately $16,125; a loss of reputation would occur; Adamaris would suffer a loss of regular customers; it too would be exposed to possible action by the lessor; it too would suffer a loss of valuable casual staff stemming from an inability to provide employment for those staff. In the alternative, should Adamaris continue trading during the period of the interlocutory injunction, Adamaris would suffer “significant losses associated with a forced rebrand” of the same kind as described by Mr Sharma.
The scope of the interim relief sought by the amended application is an interlocutory order that each respondent, within 30 days, take all necessary steps and do all such things as may be necessary to remove the word “Little”, whether in stylised form or not, from the trade mark “Little Greek cuzina” whether in stylised form or not at the location of the restaurant operated by each respondent respectively.
The applicant seeks the interlocutory relief on the footing that the trade mark used by each respondent is deceptively similar to the applicant’s composite trade mark. That is said to follow because although the applicant’s trade mark is a composite mark which contains a graphic element (the red pepper) and stylisation of the words “Little Greek”, the essential or distinguishing elements of the registered trade mark are the words “Little Greek”. The use of those words in the trade mark used by each respondent is a deceptively similar use of the composite mark in connection with services for which the applicant’s mark is registered. Each respondent says that an essential feature of the composite mark is the red pepper graphic within the registered mark; the words “Little Greek” are not essential elements of the mark; the words “Little Greek” are simply descriptive of a Greek restaurant which is small in character; and, the introduction of the invented word “cuzina”, is very significant as a distinctive differentiating identifier of the undertaking of each respondent.
Each respondent also says that it is not engaging in conduct constituting an infringement of the applicant’s mark because each respondent has used its sign in good faith to indicate the kind, quality, quantity, intended purpose or some other characteristic of the services it provides. Whether this defence is ultimately made good by each respondent, is a question of fact to be determined at trial. Each deponent for each respondent asserts facts about that matter and upon a trial of fact, findings will be made as to those matters. For present purposes, those matters are in contest along with all of the other factual matters.
For present purposes, I am satisfied that the words “Little Greek Taverna” are essential or distinguishing characteristics of the composite mark and, in particular, the words “Little Greek” are distinctive of the Taverna operated by Florinians. I am satisfied on the present evidence that it is correct to say that persons who know of “Little Greek Taverna” conducted by Florinians by reference to those essential and distinguishing characteristics, as part of its composite mark, would be caused to wonder whether it might not be the case that the restaurant undertaking conducted by each respondent under the identifier “Little Greek cuzina”, is a restaurant undertaking conducted by Florinians, that is to say, the owner of the mark. This is particularly so because users of the service engage with the owner using the mark in connection with the services for which the mark is registered by oral communications such as bookings etc. “Little Greek Taverna” is orally and phonetically similar to “Little Greek cuzina” and persons with imperfect recollection of “Little Greek Taverna” might well be caused to wonder when confronted with “Little Greek cuzina”.
I accept that the word “Little” is a descriptive term indicating something which is small. I also accept that “Greek” is a term indicating that which it describes, something associated with Greece and, in this case, cuisine. I also accept that the word “Taverna” is a word recognised in the English language as defined. I also accept that each of these words taken individually do not suggest any characteristic of distinctiveness, per se. I also accept that combining the three words together as a badge of identification of a particular business would not, in the ordinary course, be likely to mislead the public because the aggregation of the words might well suggest that the business conducted by such a person is simply a small Greek restaurant or Taverna.
That, however, on the present evidence, is not this case.
In this case, the searches conducted by the respondents are not consistent with the notion that it is very common to use, as a descriptive term, the phrase “Little Greek” followed by words of addition. Moreover, in fact, it is common to include a differentiating introductory word (generally the possessive kind) which connects the Greek restaurant or Taverna to a particular operator by first name. It seems that “Little Greek” is not typically used as a general descriptive phrase. “Little Greek” on the present evidence is distinctive of Florinians in connection with the provision of services for which the trade mark is registered although, obviously enough, there can be no exclusivity associated with the use of the word “Greek”. The mark used by each respondent is, in a prima facie case sense, deceptively similar to the applicant’s registered trade mark for the reasons indicated.
There is obviously an inter‑relationship between the strength of the prima facie case and the balance of convenience. The applicant says that it has made good its prima facie case and that it is a strong prima facie case engaging a balance of convenience in which the applicant will suffer reputational damage and unidentifiable loss of patronage due to the infringing conduct. The limit of the intervention sought by the applicant so as to address what it contends to be irreparable damage brought about by continuing trading under and by reference to use of an infringing trade mark, is a mandatory order directing each respondent to remove the introductory word “Little” which is the feature connecting “Little Greek cuzina” to “Little Greek Taverna” thus diverting custom, trade, revenue and profit from the business conducted by Florinians for which its mark is registered, so it is said.
The question of the balance of convenience must be assessed in the context of what might be regarded as an objectively proportionate response to the making of such a limited order.
Although each of PYT and Adamaris say that they might well have to close down the business during the period of the interlocutory injunction, it seems to me that that is an entirely disproportionate response in circumstances where PYT, by conducting the business, is generating weekly profits of $1,800 and Adamaris is generating weekly profits of $2,375.
The true measure of the dislocation is the cost which would be associated with changing the graphics on menus, the sign and some possible other aspects of the livery. The costs associated with taking those steps are not insignificant. However, they are precisely quantifiable, unlike reputational damage giving rise to loss of custom, patronage, revenue and profits. In the event that the applicant fails to make good its infringement claims, each respondent has the benefit of an undertaking as to damages pursuant to which the precise calculation of the cost of the changes to livery, would fall.
PYT says that Florinians sat on its hands from about June 2015 to August 2016 before doing anything about the contended infringing conduct. PYT says that the delay is such that the discretion to grant interlocutory relief should be exercised against the applicant. PYT says, in effect, that it has entered the market and conducted its undertaking without complaint for 12 months. PYT entered the market by entering into a lease and incurring establishment costs in order to open its restaurant. It incurred costs in designing its livery and no doubt incurred costs in fitout and other equipment costs. Had the applicant acted immediately upon obtaining notification of the conduct of such a business, responding promptly to the operation of the business would not have altered the incurring of those costs. They were already incurred. The costs certainly need to be serviced by a going concern. I do not accept that a consequence of an interlocutory injunction which would require PYT to remove the word “Little”, within a period of 30 days, would result in PYT closing its restaurant operation. The true dislocation costs would be the costs of making changes to the livery and potentially the costs of changing back to the adopted livery in the event that the applicant fails to make good its claim.
I am satisfied that the applicant has made good a prima facie case of deceptive similarity on the present evidence and that the cost of making an identifiable measurable change to the livery reflects a balance which affords some measure of protection to the applicant in respect of what would otherwise be unquantifiable damage to be chased and quantified, after the event, by seeking to isolate loss of custom, revenue and profits said to be expressly referable to the contended infringing use.
The position in relation to Adamaris on the question of delay by the applicant is quite different.
Adamaris chose to enter the market in June 2016 using the mark used by PYT. The applicant has responded to that conduct virtually immediately. There can be no question of any delay on the part of the applicant concerning its response to the conduct of Adamaris. Adamaris, of course, has obtained a licence from PYT and thus the source of its right to do what it does derives from PYT. In one sense, had the applicant acted immediately upon notice of the conduct of PYT, it may be that Adamaris would not have entered the market using the mark derived from PYT. Nevertheless, it made its own commercial election to enter the market using the mark adopted by PYT. The applicant has acted in response to that separate commercial conduct very promptly.
Although I accept that there are genuine and real considerations informing the exercise of the balance of convenience as between these parties in the context of the prima facie case, I am satisfied that a measureable cost of the dislocation to each respondent is proportionate and contained and reflects the true balance the Court must strike in enquiring into whether, in the context of the material on the prima facie case, the inconvenience or injury which the applicant would be likely to suffer if an injunction were refused outweighs or is outweighed by the injury which the respondents would suffer if an interlocutory injunction were granted.
It should also be noted that PYT is not offering any interim undertaking not to grant any further licences to other operators pending the determination of the questions in issue in this proceeding.
Even though there is a certain lack of precision in aspects of the evidence in support of the prime facie case, the evidence demonstrates that notwithstanding devices used by each side (a red pepper; a column) the essential identifying oral and phonetic feature of the applicant’s mark is the words “little Greek Taverna” and in the case of the respondents, “little Greek cuzina”. That is also true of internet searches which capture a site by searching for the words the subject of the search inquiry.
If “Little” is so descriptive, so ubiquitous, so incapable of secondary identification of a trader by reputation as the respondents contend (which it is not, according to the evidence) it will make no difference to the trading activity of the respondents or their capacity to attract and retain custom if the word “little” is not used (pending the trial or earlier order) and, in its place, any other introductory word is used such as “my Greek cuzina” or “our”, “Naveen’s”, “Sharma’s”, “Jonathan’s” etc.
Put simply, a person familiar with the essential elements of the applicant’s trade mark “Little Greek Taverna” who goes looking for that business by using an internet search and search terms “little” or “little Greek” or “little Greek (together with some other words of addition)”, is likely to see the search response “little Greek cuzina” and think: “that’s it” or “good, they’ve opened up on Graceville” or “good, they’ve opened up in Oxford Street, Bulimba”.
Each respondent says that interlocutory relief should be declined because the applicant comes to the Court seeking equitable relief in circumstances where the applicant does not have clean hands. This is due to the applicant seeking to “warehouse” the trade mark “Little Greek cuzina” by filing a trade mark application for that mark on 28 June 2016 for the purpose of locking PYT out of the use of that mark, in due course. The applicant expressly abandons that trade mark application. It was filed as a response to the conduct of PYT, it is said, and with the benefit now of proper advice, the applicant abandons that application.
An undertaking was given by counsel at the hearing that the applicant would file an affidavit confirming its position in that regard.
The respondents also say that the undertaking as to damages given by the applicant is simply an undertaking given by a company with paid up share capital of $3.00. However, the applicant says that it conducts a very well‑known business which has real value. I am not satisfied that any question going to the adequacy or otherwise of the undertaking (which is not the subject of any evidential challenge by the respondents) is a reason to refuse the grant of interlocutory relief on discretionary grounds.
Accordingly, upon the undertaking of the applicant, an interlocutory injunction will be granted in the terms sought by the applicant.
I certify that the preceding eighty‑four (84) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood. Associate:
Dated: 5 September 2016
0
3
1