Taco Bell Pty Ltd v Taco Company of Australia Inc [1981] FCA 268

CATCHWORDS

Trade Practices - Consumer Protection - Passing off - Use by Sydney restaurant of name substantially similar to that of overseas restaurant chain - Sydney restaurant known under that name to significant section of Sydney public - Knowledge of name of overseas chain by significant section of Sydney public gained whilst overseas - Subsequent commencement of business in Sydney by overseas chain under its name - Use by it of "T.M." in relation to name - Nature of Goodwill -Whether use

of name by overseas chain misleading or deceptive conduct - Whether false representation of standard quality grade sponsorship or approval- Whether passing off -

Whether use of "T.M." deceptive or misleading conduct.

Trade Practices Act 1974, ss. 52, 53

TACO BELL PTY. LIMITED -v- TACO COMPANY OF AUSTRALIA INC.

CORUM: ELLICOTT J.

DATE: 22 DECEMBER 1981 PLACE: SYDNEY

GENERAL DIVISION

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NO. G120 of 1981

BETWEEN: TACO BELL PTY. LIMITED

Applicant

AND: TACO COMPANY OF AUSTRALIA INC.

Respondent

CORAM: ELLICOTT J.

REASONS FOR JUDGMENT

ELLICOTT J: Taco Bell Pty. Limited (the applicant) has for several years, conducted a mexican food restaurant at Bondi under the name "Taco Bell's Casa". In January 1981 an American company, Taco Company of Australia Inc. (the respondent) opened a mexican food restaurant at Granville. On 3 September 1981 1t opened

another in George Street in the inner City of Sydney.

Since 3 September each of the restaurants conducted by the respondent has traded under the name "Taco Bell". In advertising and on signs relating to its business it has used the letters "T.M." in association with the name "Taco Bell" and has

Stated "Taco Bell is the trademark of Taco Bell, a California

Corporation".

The applicant claims that the respondent is guilty of misleading or deceptive conduct and of making false representations contrary to ss. 52 and 53 of the Trade Practices