In 3 Florinians Pty Ltd v PYT Enterprise Pty Ltd  FCA 1077 , the owner of popular Greek restaurant, Little Greek Taverna, obtained an interlocutory injunction to stop two other restaurants from using the word ‘little’ along with the words ‘Greek Cuzina’, pending trial or earlier orders.
A little confused? Shouldn’t a trader be able to describe their restaurant as ‘little’, and by the cuisine they serve?
The Applicant, 3 Florinians Pty Ltd (Florinians), is the registered owner of the trade mark shown in Figure 1 which covers class 43 services ‘providing food and drink’ and other food services, as well as various advertising services in class 35.
The Florinians have run a family restaurant business in the West End of Brisbane since September 2009. Evidence showed that their restaurant had acquired a significant reputation in the ‘Little Greek Taverna’ trade mark. The evidence included numerous restaurant reviews describing the ‘Little Greek Taverna’ as ‘a staple of West End and loved by all who like Greek food’, ‘one of Brisbane’s favourite Greek restaurants’ and ‘constantly alive and bustling with diners’. PYT Enterprises Pty Ltd (PYT) began operating a Greek restaurant called ‘Little Greek Cuzina’ in June 2015 in Graceville, and used the trade marks in Figure 2. The trade marks were licensed by Adamaris Pty Ltd (Adamaris) for a restaurant that began trading in Bulimba in June 2016. The Florinians became aware of PYT using the trade mark ‘Little Greek Cuzina’ in about June 2015, and of Adamaris using ‘Little Greek Cuzina’ in about June 2016. The Florinians relied on evidence of confusion, including examples of: • acquaintances such as their bank manager, mistakenly believing that they ran the ‘Little Greek Cuzina’ • a supplier of Greek food mistakenly giving Florinians’ order for food to PYT as they had ‘similar names’ • people telephoning ‘Little Greek Taverna’ to book at ‘Little Greek Cuzina’ • the quality of the Respondent’s food being questioned, but wrongly connected to the Florinians. In 3 Florinians Pty Ltd v PYT Enterprise Pty Ltd  FCA 1077 , the owner of popular Greek restaurant, Little Greek Taverna, obtained an interlocutory injunction to stop two other restaurants from using the word ‘little’ along with the words ‘Greek Cuzina’, pending trial or earlier orders. Figure 1 No. 1327799 Figure 2 Inspire Inspire December 2016 9 The Florinians sought an interlocutory injunction for trade mark infringement, contravention of the Australian Consumer Law, and the common law tort of passing off. Justice Greenwood only dealt with the trade mark infringement issue in granting the injunction. PYT explained that they had adopted their trade mark in good faith because their restaurant had limited seating, and was a ‘little’ restaurant. They reasoned that the word ‘little’ was often used in the restaurant industry to describe a small restaurant serving a style of food, for example, ‘Little India’ and ‘Little Italy’. Furthermore, the word ‘Greek’ conveyed the style of food served at their restaurant; and the word ‘cuzina’ was a made up derivation of the Greek word for kitchen, ‘kouzina’. PYT argued that it is common for Greek restaurants in Australia to use phrases such as ‘little Greek’, ‘little Greece’ and ‘Greek Taverna’ in their names, and provided searches of restaurant websites, from the Australian Business Register and the ASIC database in support of this proposition. Justice Greenwood, however, found that the searches did not show that it was ‘very common’ for restaurants to be referred to as ‘Little Greek’ as an identifier in a trade name, followed by the word Tavern or Taverna. On the issue of deceptive similarity, Justice Greenwood held that the words ‘Little Greek Taverna’ were the distinguishing characteristics of the Florinian’s logo, and that the words ‘Little Greek’ were distinctive of the Taverna operated by them. Justice Greenwood reasoned that people who knew ‘Little Greek Taverna’ would be prompted to wonder whether the Respondents’ ‘Little Greek Cuzina’ was a restaurant run by the Florinians, particularly given the oral similarities of the marks and the potential for mistaken identity during oral communication of the two restaurants. This case is a useful reminder to take care when using descriptive words in trade marks, particularly when products or services are likely to be identified orally over the counter, in a restaurant, or over the telephone. Natasha Marshall Teoh, Trade Marks Attorney BA (Asian studies) (Hons) LLB @ [email protected] Inspire December 2016 9 (Some) nucleic acids patentable in Australia In 2015, the High Court of Australia held that claims to isolated nucleic acids were not patentable subject matter. The Court considered the substance of the invention related to the genetic information in the nucleotides of the claims, rather than the isolated nucleotides being a tangible product per se, and led to the conclusion that the claims were not for a ‘manner of manufacture’ (patent eligible subject matter). In Arrowhead, the Applicant requested to be heard in relation to the Patent Office’s objection to claims directed to interfering RNAs, on the basis that those claims were not for a manner of manufacture. The Examiner argued that the way the invention works was solely dependent on the sequence of nucleotides in the iRNA, that the utility lay in the sequence itself, and that the substance of the product was information. The Delegate considered the substance of the invention, analysing the description and how the invention worked. Importantly, the Delegate gave consideration to the structural properties of RNA as well as the mechanism and requirements for RNA inhibition, which are also of significance to the working of the invention. The Delegate considered the manner in which the invention worked was not solely dependent on the sequence of nucleotides in the inhibitory RNA, with the informational, structural and chemical content of the dsRNA molecules all being essential elements of the invention. As a result, the substance of the invention was considered to encompass each of these elements, not merely the genetic information conveyed by the molecule. On this basis, the substance of the claimed invention was considered to be a product, not the genetic information contained in the composition, and to meet the requirements of manner of manufacture and therefore be patentable in Australia. This decision means that the Myriad decision will be given a more narrow interpretation than had been applied by Examiners to date. The decision also highlights the importance of presenting material to the Patent Office in relation to the mechanism of action of the composition, as it relates to the substance of the invention.