3 Florinians Pty Ltd v Silva de Abreu
[2022] FedCFamC2G 1044
Federal Circuit and Family Court of Australia
(DIVISION 2)
3 Florinians Pty Ltd v Silva de Abreu [2022] FedCFamC2G 1044
File number(s): BRG 470 of 2022 Judgment of: JUDGE MANOUSARIDIS Date of judgment: 25 November 2022 Catchwords: PRACTICE AND PROCEDURE – Intellectual property – application for leave to file amended application and amended concise statement joining an additional party – leave granted. Legislation: Business Names Registration Act 2011 (Cth) Division: General Number of paragraphs: 17 Date of hearing: 16 November 2022 Place: Sydney Counsel for the Applicant: Mr D Eliades, by telephone Solicitor for the Applicant: Broadley Rees Hogan The First and Second Respondents: First respondent in person, and with leave for the second respondent, by telephone Solicitor for the Third Respondent: Mr M Miller of Rose Litigation Lawyers, by telephone ORDERS
BRG 470 of 2022 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: 3 FLORINIANS PTY LTD ACN 139 456 385
Applicant
AND: DIEGO SILVA DE ABREU
First Respondent
LITTLE GREEK FOODS PTY LTD ACN 659 245 904
Second Respondent
YIOTA ROTOS
Third Respondent
order made by:
JUDGE MANOUSARIDIS
DATE OF ORDER:
25 november 2022
THE COURT ORDERS THAT:
1.The applicant have leave to file an amended application, and an amended concise statement, in the form of the drafts the applicant’s lawyers sent on 10 November 2022 to the inbox of the associate to Judge Manousaridis.
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
Introduction
On 25 November 2022 I made orders granting the applicant leave to file an amended application and an amended concise statement which add Ms Yiota Rotos as the third respondent, noting that I would publish my reasons for doing so later. These are my reasons.
Background
The applicant (Florinian PL) commenced a proceeding in this Court on 27 October 2022 in which it alleges that the first and second respondents have infringed two registered trade marks.
In its concise statement Florinian PL alleges as follows:
(a)Florinian PL is the proprietor of a restaurant known as “Little Greek Taverna”, and is the owner of two registered trade marks (Florinian trade marks). One is “little greek”, in classes 30, 35, and 43, which includes “take away food services and take away food and drink services”. The other registered trade mark is the composite word “Little Greek Taverna” and a chili device.
(b)On or about 6 October 2022 Florinian PL became aware of a business that operated under the registered business name “Little Greek Kitchen” (Business). The first respondent, Mr Silva de Abreu operated the Business from at least 20 June 2022 until on or about 13 July 2022, and the second respondent (LGF) operated the Business under the guidance and mind of Mr Silva de Abreu on and from 14 July 2022 to date.
(c)The use by the Business of “Little Greek Kitchen” infringes the Florinian trade marks.
On Florinian PL filing its application and concise statement, the Court appointed a first court date before me at 9:30 am on 16 November 2022.
On 8 November 2022 Florinian PL’s lawyers sent a letter to Ms Rotos in which it was alleged that from at least 21 November 2017 until 9 July 2022 Ms Rotos had conducted the Business under the registered business name “Little Greek Kitchen”, and that this constituted an infringement of the Florinian trade marks. The letter also stated that from about 20 June 2022 until about 13 July 2022 Mr Silva de Abreu was operating the Business, and since 14 July 2022 his company, LGF, has been operating the Business. The letter also noted that Florinian PL had commenced proceedings against Mr Silva de Abreu and LGF, that the proceeding was listed for hearing on 16 November 2022, at which time Florinian PL will be seeking leave to file an amended application. The letter attached a proposed amended application and a proposed amended concise statement.
The proposed amended concise statement adds Ms Rotos as the third respondent. It alleges that at all material times Ms Rotos was the trustee for the Rotos Marketta Trust (Trust); Ms Rotos operated the Business from 24 November 2017 until 9 July 2022; and, during that period, Ms Rotos infringed the Florinian trade marks.
Ms Rotos responded to Florinian PL’s lawyers’ letter by letter dated 15 November 2022 sent by her lawyers. The letter stated there was no legitimate basis for Florinian PL joining Ms Rotos as a respondent. Ms Rotos’ lawyers relied on the following matters:
(a)Ms Rotos had not been at all material times, as alleged in the proposed amended concise statement, the trustee for the Trust. Alpha Food Group Pty Ltd (AFGPL) replaced Ms Rotos as trustee of the Trust on 12 June 2018.
(b)On 15 March 2022 AFGPL, as trustee for the Trust, entered into a business contract to sell the registered business name and Business to Mr Silva de Abreu. That contract settled on 20 June 2022.
(c)On 30 June 2022 the Trust made a final distribution, and it was wound up.
(d)On 9 July 2022 the Australian Securities and Investments Commission (ASIC) removed AFGPL as the holder of the registered business name “Little Greek Kitchen”.
(e)On 12 October 2022 the ABN held by AFGPL was cancelled, and on 21 October 2022 AFGPL lodged with ASIC an application for voluntary deregistration.
(f)The proposed amended concise statement lacks particulars or otherwise makes bald assertions.
(g)Florinian PL delayed in notifying Ms Rotos of its claims.
On 10 November 2022 the lawyers for Florinian PL forwarded to my associate’s inbox a draft of the orders Florinian PL would be seeking at the first court date, together with written submissions in support of the Court making those orders. The proposed orders provided for the Court granting Florinian PL leave to file an amended application and an amended concise statement in terms of the proposed amended application and proposed concise statement Florinian PL’s lawyers provided to Ms Rotos on 8 November 2022.
In its written submissions Florinian PL sets out the background to its application for leave to amend as follows:
(a)Mr Silva de Abreu purchased the Business on or about 20 June 2022 from Ms Rotos as trustee for the Trust, who had registered the name “Little Greek Kitchen” under the Business Names Registration Act 2011 (Cth) from 24 November 2017.
(b)Mr Silva de Abreu was registered as the holder of the Business starting 20 June 2022 and ending on 6 August 2022.
(c)LGF was registered as the holder of the business name from on or about 14 July 2022.
(d)On or about 6 October 2022, after Florinian PL became aware of LGF’s use of the name “Little Greek Kitchen”, its lawyers wrote to Mr Silva de Abreu. On 18 October 2022 Mr Silva de Abreu and LGF’s lawyers responded by denying Florinian PL’s claims.
(e)Negotiations with LGF and Mr Silva de Abreu failed to resolve Florinian PL’s claims.
At the first court date on 16 November 2022 Florinian PL and Ms Rotos appeared by their legal representatives, and Mr Silva de Abreu appeared for himself. I granted Mr Silva de Abreu leave to appear for LGF for the purpose of the first court date, and I granted Mr Miller, the lawyer for Ms Rotos, leave to appear for Ms Rotos for the purpose of opposing Florinian PL’s application to file an amended application, and an amended concise statement adding Ms Rotos as a respondent.
parties’ sUBmissions
Mr Miller repeated the effect of the contentions made in Ms Rotos’ lawyers letter dated 15 November 2022, and in effect submitted that Florinian PL has applied to join Ms Rotos because the company that had operated the Business, AFGPL, is in the process of being deregistered.
Mr Eliades, on the other hand, who appeared for Florinian PL, submitted that even if the Business had been conducted by AFGPL, Ms Rotos was the trustee of the Trust from 24 November 2017 until 12 June 2018 when Ms Rotos submits AFGPL replaced her as trustee of the Trust; and the limitation period within which Florinian PL is entitled to bring an action for infringement of the Florinian trade marks has not expired. Counsel also submitted that, in any event, although the ASIC database records that, from 24 November 2017 to 9 July 2022, “The Trustee for Rotos Marketta Trust” is the holder of the business name “Little Greek Kitchen”, Ms Rotos is recorded as the “Business name representative” as follows:
Historical Organisational representative
Name: ROTOS, Yiota
Start date:21 November 2017
End date:9 July 2022
For these reasons, counsel for Florinian PL submitted it has viable causes of action against Ms Rotos based on infringement of the Florinian trade marks.
determination
I am not satisfied that the proposed amended concise statement does not plead reasonable causes of action against Ms Rotos; and I am not satisfied that Florinian PL would not have reasonable prospects of successfully prosecuting the causes of action it alleges in the proposed amended concise statement. Further, I am satisfied that, if I were to permit Florinian PL to file the proposed amended application and proposed amended concise statement, there would be a substantial overlap between the claims Florinian PL currently makes against Mr Silva de Abreu and LGF, and which Florinian PL proposes to make against Ms Rotos. In those circumstances, it would be more efficient, and less costly, if Florinian PL pursued all its claims in the one proceeding.
It may be the case that Ms Rotos would be entitled to further particulars of the allegations made in the proposed amended concise statement. There is nothing to suggest, however, that Florinian PL will be unable to provide particulars.
Counsel for Florinian PL also submitted there would be utility in Ms Rotos being joined as a party because she is legally represented, and this would increase the prospects of the matter being resolved by mediation, given Mr Silva de Abreu is not legally represented. That is not a matter that is relevant to whether Florinian PL should be granted leave to file an amended application and an amended concise statement adding Ms Rotos as a respondent.
I am therefore satisfied that it would be in the interests of the administration of justice to grant Florinian PL leave to file an amended application and an amended concise statement in the form of the proposed amended application and proposed amended concise statement that was forwarded to my associate’s inbox on 10 November 2022.
I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis. Associate:
Dated: 13 December 2022
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