In the recent (September 5, 2016) case 3 Florians PTY LTD v PYT Enterprise PTY LTD the Federal Court of Australia dealt, in context of an application for interlocutory injunctions to restrain use of certain unregistered trademarks, with issues of deceptive similarity. Part of the issue was whether certain common words “little” and “Greek”, used in context of three restaurants, were relevantly distinctive of particular business operations..
3 Florians PTY LTD (3F) owned a registered mark comprising a red pepper above text “Little Greek Taverna” in respect of the services in classes 35 and 43 and had been using the mark in context of a restaurant business since 2009.
PYT Enterprise PTY LTD (PYT) (the First Respondent) used a pair of unregistered marks described as “Square Parthenon Mark” and “Parthenon” marks both of which used words “Little Greek Cuzina” [a made up word]. A Second Respondent, Adamaris Pty Ltd used the PYT marks under what was put to the Court is a licence arrangement.
The three restaurants in question were all within a few kilometres of each other in the city of Brisbane, Queensland Australia.
3 F claims that PYT and Adamaris, in use of their marks, in connection with their operations (since 2015) infringed the registered mark of 3F and, in substantive proceedings yet to be heard, seek damages and/or accounting for profits in damages.
However, the issue before the Court at the time related particularly to an application for an injunction to stop PYT and Admaris using the Parthenon marks and name “Little Greek Cuzina” name upon the basis that the use of the mark and words was “deceptively similar” to the registered trademark of 3F in breach of section 120 of the Trade Marks Act 1995 (Commonwealth of Australia).
The position of PYT and Adamaris was substantively that there was no breach of the Trade Marks Act on the basis that they relied upon section 122 (1) (b) (a) of the Trade Marks Act. That provision is to the effect that there is no breach where the relevant words were only being used in good faith to indicate kind, quality, quantity, intended purpose, value, geographical origin or other characteristic of the goods or services in issue.
Detailed evidence was given by or on behalf of 3F about the length of use of the registered trademark and some detail outlining various media and social media uses and/or references to the registered trademark and, more particularly, the restaurant known as “Little Greek Taverna”.
Evidence and submissions given on behalf of PYT was to the effect that the name and use of the Parthenon Marks reflected, in part, the smallness of the restaurant in the sense of “little” being descriptive.
Various searches were provided to the Court detailing various restaurant names some of which use the word “Little” in various restaurants’ names.
The Court concluded that despite the use of the word “little” in the names of various restaurants it was not “”very common” for the operators of restaurant businesses to adopt the words “Little Greek” as an identifier for tradename or title either followed by “Tavern” or “Taverna” or other words of edition”.
The Court concluded that, by the time PYT adopted its mark comprising “Little Greek” and artwork used with the invented word “Curzina”, 3F had had a market reputation in the relevant area reflective of some years of operation.
In light of the evidence produced, the Court concluded that there was evidence of the marketplace being confused by the three restaurants each using “Little Greek” as a significant component of their name.
The Court considered issues for and against the grant of the interlocutory injunction where the relief sought, in an amended application, was to remove the word “Little” from the names used by PYT and Adamaris.
Notwithstanding that the Court acknowledge that normally word such as “Little” and “Greek” are merely descriptive, it held, by reference to the particular evidence presented to the Court, that whilst both “Little” and “Greek” are merely descriptive, in the circumstances and used together and with the word of “Taverna”, they amounted to “a badge of identification of a particular business” and held that “Little Greek”, on the evidence before the Court, is sufficiently distinctive of the business of 3F for the purposes of the Trade Mark which was registered and that the marks used by the first and second respondents were deceptively similar to the registered mark of 3F so as to attract the protections available under the Trade Marks Act.
In a sense, the Court concluded that despite use of words which might normally be seen as merely descriptive [”Little” and “Greek”] those words, in this context and composition, were adequately distinguishing and identifying of the particular restaurant, apart from the actual artwork used, and granted the injunction to require word “Little” to be removed from “Little Greek Cuzina” restaurants pending the substantive hearing of the overall dispute.
The case reinforces the need for care to be taken in using common words in trademarks and business names.
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