Sometimes little things make a big difference; that was certainly the case when two Greek restaurants went head to head in the Federal Court of Australia recently over the use of allegedly similar names. 3 Florinians Pty Ltd (“Florinians”), owned a registered Australian trade mark consisting of an image of a red pepper sitting above the words, in stylised form, “LITTLE GREEK” with the word “TAVERNA” underneath. It also used the term, LITTLE GREEK TAVERNA, as the name for its popular restaurant and had done so for around 7 years. However in 2015 it was brought to the attention of Florinians that a nearby restaurant had adopted the name LITTLE GREEK CUZINA. Unfortunately for the LITTLE GREEK CUZINA, the reason that Florinians became aware of the restaurant was because there were several instances of the public confusing the names of the two establishments. Anxious to prevent any such confusion harming its popular dining spot, Florinians sought an injunction from the Court based, among other things, on trade mark infringement. On 5th September, the Court duly obliged and ordered the owners of the LITTLE GREEK CUZINA to remove the word “little” from its name.
The case is interesting on several fronts, but not least of course in that the removal of a small (no pun intended), and arguably descriptive word, was seen as sufficient to differentiate the two names in question. Prior to the injunction diners hungry for hummus were no doubt faced with choosing between a plethora of Mediterranean restaurants, two of which happened to be called LITTLE GREEK TAVERNA and LITTLE GREEK CUZINA. A primary factor for consideration is of course that restaurants are not purchased from shelves after due consideration, but recommended by friends over the phone and searched for on the interent using half-remembered terms. There is therefore a perfect opportunity for a degree of cloudy recollection to creep in and, as such, for seemingly innocent terms to take on a larger than life significance. Looking at the names here, we have 3 words, the first 2 are the same, the last ones both end in –NA and, I understand, have somewhat similar meanings with CUZINA meaning kitchen. When dissected in this way, and in light of actual confusion, it’s not hard to see why the Court saw it appropriate to try to create some distance between the two names. In deciding how to do so, the options were of course fairly limited. If LITTLE GREEK CUZINA had to lose one part of its name, the style of its food was no doubt seen as more important to retain than, presumably, the size of its establishment. Size is after all, subjective and in the eye of the beholder; whereas whether food is Greek or not should be unarguable. Hence LITTLE GREEK CUZINA was cut down to size and ordered to become GREEK CUZINA which, when we re-run the very wooden analysis set out above, means we are left with 2 names of different lengths that only share one common element (not two) and places those with a taste for taramasalata in a much better position to decide on where to dine.
The oft used term, “It's all Greek to me.” denotes something that is not understood when written or said and so has ironic relevance here as of course, the restaurants at issue were “all Greek”. It will be interesting to see how this progresses from here, but the take home lesson seems to be that even where common, descriptive words are used in trading names, it may be best to steer away from identical words used in the same order. A quick glance at a thesaurus may be of value as perhaps a SMALL restaurant would not have faced the same unfortunate issues.
In the end a Federal Court judge has ordered Little Greek Cuzina to remove the word “little” from its trademark name, citing a prima facie case of deceptive similarity to the trademark name of the pre-existing and well-recognized Little Greek Taverna.