For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Sunday, 18 March 2012

Hands off my Fat Duck -- or your goose will be cooked!


This Kat has watched many cooking shows produced by Heston Blumenthal but has not yet been to The Fat Duck Restaurant (cheeky hint-hint if you, Heston, or your people are reading this). As most UK readers will be aware, The Fat Duck is Blumenthal's restaurant in Bray, Berkshire. It opened in 1995, has held a three-star Michelin Guide rating since 2005 and has been named the Best Restaurant in the World in numerous guides. The famed Tasting Menu is marketed as 'a sequence of dishes designed not only to capture a delicious and exciting range of flavours, textures and aromas, but also to bring multisensory appeal, some culinary history and a sense of theatre to the dining experience' and contains unusual dishes such as 'Jelly of Quail, Crayfish Cream' (Chicken Liver Parfait, Oak Moss and Truffle Toast), 'Snail Porridge' (Iberico Bellota Ham and Shaved Fennel) and 'Salmon Poached with Liquorice' (Artichokes, Vanilla Mayonnaise and Golden Trout Roe).

Blumenthal has not yet opened a Fat Duck in Australia, although the rumour mill is rife with speculation that he will do so following a visit to Sydney last year when he was quoted as saying 'I want to open [a restaurant] in a city I love'. In addition,   Blumenthal's company SL6 Limited (this apparently cryptic name is the first half of his restaurant's postcode), has been active on the Australian Trade Marks Register in respect of the trade mark 'The Fat Duck'. First, SL6 opposed the acceptance of the trade mark 'The Fat Duck' in class 33 in the name of Nicfran Pty Ltd (1358646) (accepted 2 September 2010 and opposition lodged 17 December 2010). This Kat understands from the Trade Marks Register that a settlement has been reached, with the trade mark being assigned. Secondly, on 26 September 2011 SL6 filed applications for the trade mark 'The Fat Duck' in classes 9, 16, 41 and 43 (1450496), which were accepted on 30 November 2011.  A divisional application in class 33 (1461192) was filed on 23 November 2011, its examination being deferred.

This Kat was therefore surprised then to hear that a Fat Duck restaurant, serving French cuisine, had opened in September 2011 in Sydney's fashionable Darling Harbour area. On 3 November 2011, SL6 commenced proceedings against the owners of the Sydney restaurant seeking to restrain them from using the name 'The Fat Duck'. On 30 November 2011 the matter was heard by Foster J, who ordered that the Sydney restaurant owners be restrained from representing that they or their products or services had the sponsorship or approval of, or were otherwise affiliated with, Blumenthal's companies, by using the words or trade marks 'Fat Duck', 'Fat Duck Rotissoire Kitchen' and/or 'Fat Duck Catering' or any other words or trade marks which were substantially identical or deceptively similar to them. This included, without limitation, restraining them from using any such words or trade 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 www.fatduckcatering.com.au;
(d) In 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.
After these orders were made, the Sydney restaurant owners changed the name to 'The Naked Duck'. However, they continued to use the words 'Fat Duck' in 'Vive Le Fat Duck' and 'Fat Duck Rotisserie Kitchen' on business cards, on signage at the Darling Harbour restaurant site, on tax invoices and in the White Pages phone book. Blumenthal was not entirely pleased with this lack of compliance and, through his companies, sent further demands to the Sydney restaurant owners (including an objection to the name 'The Naked Duck'). These requests were ignored. On 25 January 2012 the Blumenthal companies filed a further interlocutory application to enforce the orders of 30 November 2011. Blumenthal, through his companies, did not however pursue the name 'The Naked Duck'.

The matter came before Foster J again on 7 February 2012: SL6 Limited v Fat Duck Pty Ltd [2012] FCA 71 (7 February 2012). The Sydney restaurant owners argued (at [17]) that this application was no more than 'at storm in a tea cup'. Foster J disagreed (at [18]) and compelled the Sydney restaurant owners to comply with the orders of 30 November 2011, extending them to cover the words and trade marks 'Vive Le Fat Duck' and 'Le Fat Duck Backery' (curiously, the latter only appeared in the orders and not the reasons for judgment). In making the orders, Foster J added (at [20]) that it would have been open to the Blumenthal companies to pursue the Sydney restaurant owners for contempt of court.

The IPKat thinks that these proceedings sound similar to that in the old English decision of Maxims Ltd v Dye [1977] 1 WLR 1155 (Ch). In that case Maxim's, a world famous restaurant in Paris, enjoyed extensive fame and goodwill in England. In 1975 Dye opened a restaurant in Norwich called 'Maxim's'. The owners of the Paris Maxim's sought to restrain Dye from using the name 'Maxim's' or from otherwise passing off their business, alleging damage to goodwill, inter alia, on the grounds that Dye's restaurant was run to a much lower standard. Graham J granted interim relief on the basis that the Paris restaurant's goodwill was a real interest.

In Australia, the IPKat is reminded of the oft-cited non-restaurant case Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1982] FSR 1. In that case, the 'Fletcher' and 'Challenge' companies, both well known in New Zealand in the finance and securities industries, announced a merger under the name 'Fletcher Challenge'. Within hours of this being announced in the Australian media, two individuals registered the company name 'Fletcher Challenge Pty Ltd' in Australia and described the nature of the business to be carried on as 'investment in shares and property'. When the New Zealand Fletcher Challenge sought to register the company name 'Fletcher Challenge Ltd' the then Commissioner for Corporate Affairs informed it that this name was not available for reservation as it was likely to be confused with the name previously reserved by the two individuals. Upon complaint by the New Zealand Fletcher Challenge, Powell J granted an injunction for passing off on the basis that the action was not restricted to situations involving competing traders in the same line of business, but included cases of false suggestion by a defendant that its business was connected with that of the plaintiff. As such, this would be capable of damaging the plaintiff's goodwill.

Merpel marvels at the audacity of Fat Duck in defying the first court order. When a judge sets out the terms for relief, they are a recipe to which their recipient must adhere if he wants to emerge intact: you can't just improvise on them.

Famous ducks in history here [another British success against the Australians], here and here

2 comments:

Mark Summerfield said...

Well may Justice Foster have warned the Sydney restaurant owners about the risk of contempt of court.

It was less than two years ago that another judge of the Australian Federal Court sent a defendant to jail for three years for refusing to comply with a court order restraining him and his company from infringing IP rights relating to sheepskin 'UGG' boots. (http://blog.patentology.com.au/2010/07/prison-for-infringement-of-ip-rights-in.html)

Pretty serious stuff!

Dave said...

Perhaps Heston should have joined forces with Jamie Oliver (The Naked Chef) to fight the latter issue - share the risk etc. If the restauraters had decided to push their luck further by changing their name to The Fat Chef, Britain's favourite motorway diner could have got in on the action as well!

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