SL6 Limited v Fat Duck Pty Ltd
[2012] FCA 71
•7 February 2012
FEDERAL COURT OF AUSTRALIA
SL6 Limited v Fat Duck Pty Ltd [2012] FCA 71
Citation: SL6 Limited v Fat Duck Pty Ltd [2012] FCA 71 Parties: SL6 LIMITED, THE FAT DUCK LIMITED and TFDG LIMITED v FAT DUCK PTY LTD (ACN 150 661 466), FAT DUCK (NSW) PTY LTD (ACN 150 661 635), CHAPTER ONE HOLDINGS PTY LTD (ACN 128 306 098), GEORGE NAHAS and TOUFIC CHIDIAC File number: NSD 1933 of 2011 Judge: FOSTER J Date of judgment: 7 February 2012 Date of hearing: 7 February 2012 Place: Sydney Division: GENERAL DIVISION Category: No Catchwords Number of paragraphs: 27 Counsel for the Applicants: Mr IS Wylie Solicitor for the Applicants: Thomsons Lawyers Counsel for the First, Second and Third Respondents: The First, Second and Third Respondents appeared by the Fifth Respondent (by leave) Counsel for the Fourth and Fifth Respondents: The Fourth and Fifth Respondents appeared in person
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 1933 of 2011
BETWEEN: SL6 LIMITED
First ApplicantTHE FAT DUCK LIMITED
Second ApplicantTFDG LIMITED
Third ApplicantAND: FAT DUCK PTY LTD (ACN 150 661 466)
First RespondentFAT DUCK (NSW) PTY LTD (ACN 150 661 635)
Second RespondentCHAPTER ONE HOLDINGS PTY LTD (ACN 128 306 098)
Third RespondentGEORGE NAHAS
Fourth RespondentTOUFIC CHIDIAC
Fifth Respondent
JUDGE:
FOSTER J
DATE OF ORDER:
7 FEBRUARY 2012
WHERE MADE:
SYDNEY
BY CONSENT, THE COURT NOTES THAT:
1.The respondents acknowledge and accept that the signage with tape affixed to it which is described in paragraphs 5–6 and 12–13 of the affidavit of Jessica Cameron affirmed on 2 February 2012 and in paragraphs 3–5 of the affidavit of Feng Guo affirmed on 3 February 2012 in this proceeding (and in the annexures to those paragraphs) does not comply with Orders 2 and 3 made on 30 November 2011.
2.The respondents acknowledge and accept that the signage and use of the words and mark “Fat Duck” described in:
(a)paragraphs 3–11 of the affidavit of Catherine Chant sworn on 2 February 2012;
(b)paragraphs 8–9 of the affidavit of Jessica Cameron affirmed on 2 February 2012;
(c)paragraphs 6–7 of the affidavit of Feng Guo affirmed on 3 February 2012; and
(d)paragraphs 2–7 of the affidavit of Selina McManus affirmed on 2 February 2012,
in this proceeding (and the annexures referred to in those paragraphs) do not comply with Orders 2 and 3 made on 30 November 2011.
BY CONSENT, THE COURT ORDERS THAT:
3.The respondents be restrained from, either directly or by their directors, officers, employees, agents or otherwise, representing that they or their products or services have the sponsorship or approval of, or are otherwise affiliated with, the applicants, by using the words or marks “Vive Le Fat Duck” or “Le Fat Duck Bakery”:
(i)as part of any logo or otherwise in signage in or about any restaurant or related menus, business cards or other in-restaurant promotional materials;
(ii)in any other ex-restaurant catalogue or other promotional materials concerning any restaurant or catering business;
(iii)in any website or domain name; or
(iv)in either of the first or second respondent’s corporate names.
4.The respondents at their cost immediately destroy all documents and materials upon or in relation to which the words and marks “Vive Le Fat Duck” or “Le Fat Duck Bakery” appear.
5.The respondents at their cost immediately to the full extent they have power to do so remedy the non-compliance by them with Orders 2 and 3 made on 30 November 2011 referred to in paragraphs 1 and 2 above, including by notifying the applicants’ solicitors of their proposed replacement signage in respect of the signage referred to in paragraph 1 above within seven (7) days of the date of this Order and by removing and replacing that signage within fourteen (14) days of the date of this Order.
6.The respondents verify their compliance with paragraphs 3–5 above by both the fourth and fifth respondents making, filing and serving on the solicitors for the applicants by no later than twenty-one (21) days after the making of this Order affidavits describing and confirming all steps taken by them and the first, second and third respondents to comply with those orders.
7.Subject to compliance by the respondents with the orders of the Court made on 30 November 2011 and this day, the whole of the proceeding be dismissed.
THE COURT ORDERS THAT:
8.The respondents pay the applicants’ costs of and incidental to the Interlocutory Application filed by the applicants on 25 January 2012 on the party/party basis.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 1933 of 2011
BETWEEN: SL6 LIMITED
First ApplicantTHE FAT DUCK LIMITED
Second ApplicantTFDG LIMITED
Third ApplicantAND: FAT DUCK PTY LTD (ACN 150 661 466)
First RespondentFAT DUCK (NSW) PTY LTD (ACN 150 661 635)
Second RespondentCHAPTER ONE HOLDINGS PTY LTD (ACN 128 306 098)
Third RespondentGEORGE NAHAS
Fourth RespondentTOUFIC CHIDIAC
Fifth Respondent
JUDGE:
FOSTER J
DATE:
7 FEBRUARY 2012
PLACE:
SYDNEY
REASONS FOR JUDGMENT
On 3 November 2011, the applicants commenced the current proceeding. On 30 November 2011, which was the first return date for the proceeding, I made orders by consent which effectively disposed of the entire proceeding. I say “effectively” because the orders which I made contemplated the filing and serving of an affidavit by the respondents verifying compliance with the substantive orders made on 30 November 2011 and reserving to the applicants liberty to apply in the event of some difficulty arising out of the orders which I made.
The orders which I made on 30 November 2011 were in the following terms:
THE COURT:
1.GRANTS leave to the respondents to file in Court the document titled “Notice of Address for Service”.
BY CONSENT, THE COURT ORDERS THAT:
2.The respondents be restrained from, either directly or by their directors, officers, employees, agents or otherwise, representing that they or their products or services have the sponsorship or approval of, or are otherwise affiliated with, the applicants, by using the words or marks “Fat Duck”, “Fat Duck Rotissoire Kitchen” and/or “Fat Duck Catering” or any other words or marks which are substantially identical or deceptively similar to them, including without limitation restraining them from using any such words or marks:
(a)As part of any logo or otherwise in signage in or about any restaurant or related menus, business cards or other in-restaurant promotional materials;
(b)In any other ex-restaurant promotional materials;
(c)On the website located at the domain name fatduckcatering.com.au;
(e)In any catalogue or other promotional materials concerning fat duck catering, or
(f)In either of the first or second respondents’ corporate names,
(together the Infringing Conduct).
3.The respondents at their cost immediately destroy all documents and materials upon or in relation to which the Infringing Conduct appears.
4.The respondents, at their cost, immediately:
(a)Remove all Infringing Conduct from the website located at
registration of the domain name fatduckcatering.com.au; and
(c)Change the first and second respondents’ names to names that do not include the word or mark “Fat Duck” or any other words or marks which are substantially identical or deceptively similar to them.
5.The respondents verify their compliance with orders 3 and 4 above by the fourth and fifth respondents making, filing and serving on the applicants no later than 14 days after the making of this order affidavits describing and confirming all steps taken by them and the first, second and third respondents to comply with those orders.
6.On the respondents’ compliance with order 5 above the proceeding be otherwise dismissed.
7.The respondents pay the applicants’ costs of the proceeding.
THE COURT:
8.GRANTS liberty to apply in the event that there is a need to do so arising out of the orders made above, such liberty to be exercised on two days’ notice or on such shorter notice as a Judge might allow.
On 5 December 2011, the applicants entered the orders which I made on 30 November 2011 and arranged for the endorsement thereon of a penal notice which cautioned the respondents against the consequences of non compliance with those orders in accordance with the Rules of the Court.
The evidence discloses that the orders as entered were served upon each of the respondents in due course. Service was effected upon all respondents by 15 December 2011.
On 16 December 2011, the fifth respondent filed an affidavit sworn on that day in which he deposed that the respondents had complied with most of the orders which I made on 30 November 2011. He said that:
(a)The respondents had caused the name of the first and second respondents to be changed;
(b)All references to the words “Fat Duck” had been removed from signs and displays at the restaurant premises operated by the respondents; and
(c)The respondents had destroyed all marketing material and documents including, but not limited to, business cards, menus and in-restaurant and ex-restaurant promotional materials which related or referred to the words “Fat Duck”, “Fat Duck Catering” and “Fat Duck Rotissoire Kitchen”.
The fifth respondent also swore that he had caused the website fatduckcatering.com.au to be decommissioned.
By 22 December 2011, the solicitors for the applicants had become aware that the respondents appeared not to have complied with the Orders which I made on 30 November 2011 in a number of respects. On that day, the solicitors for the applicants wrote to the solicitors for the respondents in the following terms:
SL6 LIMITED & OTHERS -V- FAT DUCK PTY LTD & OTHERS
FEDERAL COURT OF AUSTRALIA PROCEEDINGS NO. NSD 1933 OF 2011
We refer to your letter dated 19 December 2011 attaching the affidavit of Toufic Chidiac dated 16 December 2011 which refers, among other things, to the change of name of the first and second respondents to names including the words “The Naked Duck”.
We attended the respondents’ restaurant at Darling Quarter on 21 December, 2011 and found that, in addition to using the trade mark The Naked Duck. they are still using the trade mark “Fat Duck”. In particular, business/coffee cards are on display at the respondents’ restaurant bearing the words “Vive Le Fat Duck” and signage appears on a glass door/wall at the restaurant bearing the words “Vive Le Fat Duck” and “Fat Duck Rotissoire Kitchen”. We attach copies of photographs taken at the respondents’ restaurant on 21 December, 2011.
The respondents’ adoption and use of a name containing the word “Duck” and continued use of the trade mark Fat Duck in printed material and signage, are a clear indication that they continue to trade on our client’s trade mark The Fat Duck.
The respondents do not appear to appreciate the seriousness of the orders of the Federal Court and are clearly in breach of them. We are instructed to demand that they immediately:
1.remove from display and destroy all “Vive Le Fat Duck” business/coffee cards;
2.remove the signage appearing on the glass door/wall at the respondents' restaurant bearing the words “Vive Le Fat Duck” and “Fat Duck Rotissoire Kitchen”;
3. change the trade mark “The Naked Duck” and the company names containing those words to names not including the word “Duck”
and confirm in an affidavit to be supplied to us by 9 January, 2012 that they have taken the action at 1, 2 and 3 above and have ceased all Infringing Conduct as defined in the Court Orders made on 30 November 2011.
Quite apart from the Respondents’ continued use of the Fat Duck trade mark in breach of Court orders, unless they move completely away from the use of the word “Duck” in their name, there will continue to be confusion, leading to possible further action by our clients.
We await your response.
On 16 January 2012, the solicitors for the applicants sent a reminder email to the solicitors for the respondents in the following terms:
I refer to my email and faxed letter dated 22 December, 2011, a copy of which is attached, and note that I have not received your reply.
Please let me have your urgent response before I return to my client to seek its instructions regarding further action.
On 23 January 2012, the solicitors for the applicants wrote a further letter in circumstances where they had not received any substantive response to their earlier communications from the solicitors for the respondents. That letter was, omitting formal parts, in the following terms:
SL6 LIMITED & OTHERS -V- FAT DUCK PTY LTD & OTHERS
FEDERAL COURT OF AUSTRALIA PROCEEDINGS NO. NSD 1933 OF 2011
We refer to our letter dated 22 December 2011 (a copy of which we attach), our email dated 16 January, 2012 and our conversation with Amanda of your office on 20 January, 2012. We have been informed by Amanda that you are overseas, that no other person in your office is handling this matter in your absence and that you are still “taking calls and emails.”
We again attended the premises of your clients’ restaurant at Shop 13, 1 Harbour Street Darling Quarter on 20 January, 2012 and found that your clients are still using the words “Fat Duck”at the premises. In particular, business/coffee cards are on [sic] still on display at the premises bearing the words “Vive Le Fat Duck” and signage appears on a glass door/wall at the restaurant bearing the words “Vive Le Fat Duck” and “Fat Duck Rotissoire Kitchen”. We attach copies of photographs taken at the respondents’ restaurant on 20 January, 2012. We also note that, contrary to our client’s request in our letter dated 22 December, 2011, your clients have not changed their trade mark The Naked Duck and the company names containing those words to words not containing the word “Duck”.
We have been instructed to notify your clients that unless they comply with the demands at 1 to 3 of our letter dated 22 December, 2011 and confirm to us that they have done so by 1 pm on Tuesday 24 January, 2012, we will immediately make an interlocutory application to the Federal Court of Australia seeking:
1. explicit orders that your clients immediately take the action they have failed to take to comply with the Federal Court’s order of 30 November, 2011; and
2. indemnity costs.
We note that given that your clients are still using the words “Fat Duck” as a trade mark in respect of their restaurant, your client Toufic Chidiac has clearly perjured himself in his affidavit dated 16 December, 2011. Our client reserves its rights in relation to that matter.
We await your response.
On 25 January 2012, having received no response to any of the correspondence to which I have referred, the applicants filed an Interlocutory Application in which they sought further injunctive relief. That application was returned before me on 31 January 2012.
When the matter was called on on that day, the respondents said that they were taking further action to comply with the orders which I had made on 30 November 2011. In light of that circumstance, the matter was adjourned until this morning so as to enable both sides of this dispute to bring the evidentiary matrix up to date.
When the matter was called on this morning, after some discussion between the bench and Counsel for the applicants, on the one hand, and the bench and the fourth and fifth respondents, on the other hand, the matter was resolved upon terms set out in Consent Orders which I have marked as “MFI-A”. Although the respondents are still represented by a solicitor on the record, I gave leave to Mr Chidiac, who is the fifth respondent, to represent all of the respondents at the hearing today. Mr Chidiac and Mr Nahas, who is also present in Court today, have indicated to me that they consent to the orders in “MFI-A” on behalf of themselves and on behalf of all other respondents. The first to third respondents are controlled by Messrs Chidiac and Nahas. Accordingly, I propose to make those orders and I do so now.
After those orders were made, the question of costs remained.
Counsel for the applicants seeks an order that the respondents pay the applicants’ costs of and relating to the applicants’ Interlocutory Application filed on 25 January 2012 on an indemnity basis. The simple proposition advanced by the applicants’ Counsel is that the application which has been made by his clients was made necessary by the failure on the part of the respondents to comply with the orders which I made on 30 November 2011. In support of that proposition, Counsel read and relied upon a number of affidavits which I need not detail for present purposes.
As at 10.15 am this morning, there was evidence that:
(a)At some stage recently, employees of the respondents had handed over to a customer in the restaurant a tax invoice bearing the name “Fat Duck”;
(b)The name “Fat Duck” still appeared in the White Pages and in various websites associated with the respondents’ new business trading name “Naked Duck”; and
(c)There remained, albeit hidden to some extent under black electrical tape, vinyl images on a glass wall comprising several glass panels separating the respondents’ restaurant from the foyer area of the building in which it is located, reference to the word “Fat” associated immediately thereafter with the word “Duck”. Those images appeared prominently on images of placards carried by persons apparently marching in a demonstration depicted on this glass wall.
It seems to me that the orders which I made on 30 November 2011 required that steps would immediately be taken by or on behalf of the respondents to ensure that there was no continuing reference to the name “Fat Duck” in any advertising or promotional material or signs or business cards or invoices associated with the respondents’ business. It was incumbent upon the respondents to ensure that the references to “Fat Duck” on the glass wall, to which I have referred, were removed.
Mr Chidiac has submitted to me that there is no demonstrated breach of the orders which I made on 30 November 2011, that the orders were very narrow in compass and did not require that all of the things about which the applicants now complain be attended to and that the current application is no more than a “storm in a teacup”.
I do not agree.
It seems to me that it was incumbent upon the respondents, assiduously and diligently, to set about ensuring that all references to “Fat Duck” in materials, signs and displays associated with their business were removed and that, in particular, the reference to “Fat Duck” in the placards in the display on the glass wall to which I have referred, were removed.
I had granted liberty to the applicants to apply in respect of the orders made on 30 November 2011 and they submit that the current application is nothing more than the exercise of that liberty to apply. It seems to me that, although it may have been open to the applicants to pursue the respondents for contempt of Court, the course which they have adopted was within the liberty which I granted and was a reasonable way of attempting to secure complete compliance with the orders which I had previously made.
In my view, the applicants were compelled to return to Court in order to seek appropriate relief in respect of the respondents failure to comply with the orders which I made on 30 November 2011. The present application was an appropriate vehicle by which the respondents’ conduct could be assessed and, if appropriate, remedied.
In defence of the respondents, Mr Chidiac focussed on the proposition that he and his partner, Mr Nahas, were simple restaurant proprietors who needed to have orders and matters such as the orders of 30 November 2011 explained to them very carefully. However, it should not be forgotten that, as at 30 November 2011, the respondents were being actively represented by the current solicitor on the record. Presumably, that gentleman did explain to the respondents the full import of the orders which I made on 30 November 2011. I have no reason to think otherwise.
I propose to order that the respondents pay the applicants’ costs of the Interlocutory Application filed 25 January 2012.
The applicants have sought that those costs be paid on an indemnity basis.
I have carefully considered whether those costs should be paid on an indemnity basis. I think that, in the circumstances, they should be paid on the ordinary party/party basis. The respondents, when they have come to Court, have endeavoured to resolve promptly the ongoing difficulties created by their non-compliance with the orders of 30 November 2011 and have not persisted in unreasonable positions once the true import of those orders was drawn to their attention. Whilst I have some reservations about the respondents’ conduct and attitude, I think that, on balance, I would not be justified in making an indemnity costs order.
Accordingly, the order for costs which I make is an order that the respondents pay the applicants’ costs of and incidental to the Interlocutory Application filed on 25 January 2012.
I have added a dismissal order to the Consent Orders. The whole of this proceeding has now been concluded subject to compliance with all of the orders which I have made both on 30 November 2011 and today.
I certify that the preceding twenty-seven (27) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Foster. Associate:
Dated: 13 February 2012
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