Mercogliano, S. v Tampas Nominees Pty Ltd

[1993] FCA 4

JUDGMENT No. ,........ .. 4 ...... 1 ....... 73.3

IN THE FEDERAL COURT OF AUSTRALIA	) )
VICTORIA DISTRICT REGISTRY	) No VG 524 of 1992
)
GENERAL DIVISION	)

BETWEEN:  SALVATORE MERCOGLIANO

(First Applicant)

DA SALVATORE PTY LTD

(Second Applicant)

PIZZA AL METRO PTY LTD

(Third Applicant)

PIZZA BY THE METRE !AUSTRALIA1

PTY LTD

(Fourth Applicant)

TAMPAS NOMINEES PTY LTD

(First Respondent)

FRANK MAZZACCA

(Second Respondent)

MAFtGARET WiZ ZACCA

(Third Respondent)

Coram:  Ryan J

Place: Melbourne

from: 

Date:	7 January 1993
-	<

EX TEMPORE REASONS -FOR JUDGMENT

Rvan J:  By their amended notice of motion, the applicants

seek, amongst other things:

"1. An interlocutory ~njunction restraining the Respondents by
themselves, their employees or agents or otherwise howsoever

(a) conducting or promotrng the F~rst Respondent's business

rn trade or commerce under or by reference to a name or style which rncludes the expressron "Pizza A Metro", Pizza A1 Metro" or "Przza by the Metre";

(b)	otherwise representing the FLrst Respondent's busrness as that of or having the sponsorship or approval of or being
affil~ated or connected w ~ t h the bus~ness."

There were previous proceedings in this Court between certain of the applicants and the three respondents and at an early stage of those proceedings, Sweeney J granted an interlocutory injunction restraining the respondents from:

"(i)	advertrsing under the name "Da Ciccillo's Pizza A1 Metro
& Bistro";

(ii)       engaging m trade or commerce under the name "Da Ciccillo's Przza A1 Metro & Brstro"."

Those earlier proceedings were compromised and final orders made by consent:

"(a) that the Respondents be restra~ned by themselves, their

employees or agents or otherw~se howsoever from:

(i)   advertrsing under the name "Da C~ccillo's Pizza A1 Metro

& Brstro";

(ii) engagrng in trade or commerce under the name "Da

Ciccillo's P~zza A1 Metro & Bistro."

The second respondent has sworn an affidavit giv~ng his	version of the agreement pursuant to which the final orders to
which I have just referred were made. That affidavit includes the assertion:

"On 24th November, 1992, the Frrst Applicant and I met in the presence of two others for the purpose of seeking an honourable and amicable resolution of our differences. The meeting was private, and I was surprised that he referred to rt all in hrs said Affidavit. Any matters agreed to between him and I were to be brndrng in honour only. That is the basis upon which we met, discussed our drfferences and agreed as to what was to be done. It was agreed between us that he would cause the antr-competitive ob3ections to be wrthdrawn, and he signed withdrawals of objection immediately. He knew what he did, and d ~ d not need his Solicitors to make later enquirres. I agreed to remove the neon srgn from the upper floor of our premrses and to not have any srgns outsrde the premrses referrrng to "pizza a1 metro". It was also agreed between us that our drspute was at an end, that

each would bear h ~ s own costs."

The "anti-competitive objections" referred to in that paragraph were, it seems, objections which had been lodged on behalf of the applicants or some of them to an application by the respondents for Town Planning permits and to the Liquor Control Commission in respect of the premises at which they proposed to conduct a restaurant at 152 Lygon Street, Carlton.

Apparently, by way of giving effect to whatever agreement was concluded between the applicants and the respondents, the respondents removed a sign from the exterlor of their

>	premises, which included the words "Pizza A1 Metro", and
Metraggio". On or about 16 December 1992, the latter sign was erected a sign which included the expression "Pizza A1

. .

removed and a neon sign was erected in a recessed window, visible from the exterior of the respondents' premises, which contamed the words in red neon tubing, "Da Ciccillo" under which in smaller green tubing, were the words, "We specialise in". Then, again in red tubing similar in style to, and slightly smaller in size than the words, "Da Ciccillo", appeared the words, "Pizza A1 Metro".

The applicants have, since 1984, had control of a registered business name, "Pizza A Metro". Since their premises were opened for business in 1986, the applicants have had a large neon sign erected at first floor level at their premises, bearing the words "Pizza A Metro" under which appear, in a different neon tubing script, the words, "Da Salvatore Restaurant". Then painted on each of three windows which form the shopfront at ground floor level, are the expressions "Pizza by the metre", "Pizza a1 metro" and "Steak House Downstairs". There is evidence to suggest that the expression, "Pizza A Metro" and the related expressions, "Pizza A1 Metro" and "Pizza by the Metre", are descriptive of a type of pizza and are apt for inclusion on a menu or other descriptive catalogue of foods offered by restaurants of the type to which the applicants' and the respondents' respective establishments, both belong.

However, I am satisfied on the evidence that there is a serious question to be tried as to whether the respondents

visible from the exterior of their premises, sought to have not, by the erection of a sign, of the kind described,

appropriate to themselves part of the name or style under which the applicants have successfully carried on a business since at least 1986. There is evidence to suggest that considerable sums of money have been expended in promoting the applicants' business, conducted under a name or style which includes the expression, "Pizza A1 Metro" or "Pizza A Metro", and that a lucrative business has thus been built up by the

applicants.

I also consider that there is a serious question to be tried as to whether the erection by the respondents of the sign to which I have referred, is not a breach of the agreement which was concededly concluded between the applicants and the respondents, in about November 1992. It is undesirable that I attempt to identify, at this stage of the proceedings, the terms of that agreement. I am content to indrcate that I do not regard the respondents as being likely, on the present state of the evidence, to establish, as Mr Mazzacca contended, that it was an agreement intended to be blnding in honour only and not intended to have any legal effect.

I consider that the balance of convenience favours the

applicants. The evidence is that the respondents' business has only recently been commenced and the limited form of interlocutory injunction which I propose to grant will not curtail the respondents' conduct of their business or be

Accordingly, I propose to grant an interlocutory injunction destructive of any goodwill which it may have attracted in the short time which it has been operating. restraining the respondents by themselves, their employees or agents or otherwise howsoever, from conducting or promoting the first respondent's business in trade or commerce by using any sign visible from the exterior of premises at 152 Lygon Street, Carlton, which includes the expressions "Pizza A

Metro", "Pizza A1 Metro", or "Pizza by the Metre", or from otherwise using any of those expressions in a way which suggests that it is part of the name or style of the first respondent's business.

I shall also grant an interlocutory injunction, in terms of paragraph (b) of the motion on notice, restraining the respondents by themselves, their employees or agents or otherwise howsoever from otherwise representing the first respondent's business as that of the applicants or any of them, or having the sponsorship or approval of, or being affiliated or connected with the business of the applicants or any of them.

The costs of all parties of the motion on notice should be costs in the cause. I shall adjourn the directions hearing in this matter to a date to be agreed between Counsel.

preceding five (5) pages I certify that this and the

are a true copy of the

reasons for judgment of his
Honour Mr Justice Ryan

Associate:

Counsel for the Applicants:	Mr R Macaw QC and Mr J Styring
Solicitor for the Applicants:	Barker Gosling
Counsel for the Respondents:	Mr I Bowditch
Solicitor for the Respondents:	Prlvitelli Solicitors