A little too close in the Greek restaurant trade

In the recent case of 3 Florinians Pty Ltd v PYT Enterprise Pty Ltd [2016] FCA 1077 (September 5, 2016), the Federal Court granted an interlocutory injunction to Florinians, the owner of the LITTLE GREEK TAVERNA trademark, against co-respondents PYT Enterprise Pty Ltd and its licensee Adamaris Pty Ltd restraining use of the LITTLE GREEK CUZINA trademark pending trial or earlier order.

 

Florinians was the owner of the composite mark (Trademark Registration 1327799) shown below:

the-little-greek-taverna

This mark was registered from October 23 2009 for a range of advertising services in Class 35 and various food and beverage-related services in Class 43. Florinians had been using the mark since September 2009 in relation to a Greek restaurant in Brisbane’s West End.

The first respondent (PYT) had operated a Greek restaurant business since June 9 2015 in the Brisbane suburb of Graceville using the following trademarks:

little-greek-cuzina

In June 2016, the second respondent (Adamaris) opened a Greek restaurant in Bulimba, Brisbane using the above trademarks under licence from PYT.

Florinians became aware of PYT’s business on or about its commencement in June 2015. However, it waited until just after the opening of the Adamaris business in June 2016 before it retained lawyers and filed proceedings for trademark infringement, misleading and deceptive conduct and passing off.

There was evidence of instances of actual confusion between the respective restaurants from customers and a produce supplier.

The issues for determining whether an interlocutory injunction would be granted involved a consideration of the strength of the prima facie case for infringement and the balance of convenience.

Justice Greenwood determined from the evidence that the words ‘Little Greek Taverna’ were the essential or distinguishing characteristics of the registered mark and were distinctive of the restaurant services provided by Florinians notwithstanding PYT’s argument to the contrary that it was common for Greek restaurants to trade under names such as ‘Little Greek’, ‘Little Greece’ and ‘Greek Taverna’. Greenwood found that it was more common to include a differentiating introductory word which connected the Greek restaurant or Taverna to a particular operator by first name.

Greenwood was satisfied that the trademarks LITTLE GREEK TAVERNA and LITTLE GREEK CUZINA were deceptively similar on the basis that persons who knew of the earlier business would be cause to wonder whether the two businesses were connected.

It seems that Greenwood’s finding on deceptive similarity was influenced by the reputation developed by Florinians through use of its registered mark rather than a notional comparison of this registered mark with the marks used by the respondents.

Having established that Florinians had demonstrated a prima facie case for infringement, Greenwood went on to consider the balance of convenience between the parties. The delay in Florinians bringing the proceedings was discussed but the judge ultimately determined that it was not a material factor. He noted that the respondents would incur costs in rebranding by removing the word ‘Little’ from their livery, but these costs were quantifiable, whereas the costs to Florinians in trying to isolate and quantify its loss of custom, revenue and profits expressly attributable to the respondents’ conduct would be difficult. The judge decided that the injury that Florinians would suffer if an interlocutory injunction were denied would outweigh the injury that PYT would suffer if an interlocutory injunction were granted.

Accordingly, Greenwood granted an interlocutory injunction pending trial subject to Florinians giving an undertaking as to damages. The respondents were given 30 days to remove the word ‘Little’ from the LITTLE GREEK CUZINA trademarks.

This article was first published in the World Trademark Review in November 2016.