TGI Friday's Australia Pty Ltd v TGI Friday's Inc [1999] FCA 304

FEDERAL COURT OF AUSTRALIA TGI Friday's Australia Pty Ltd v TGI Friday's Inc [1999] FCA 304 TRADE PRACTICES – Alleged misleading conduct – Use of name TGI Friday's by appellants' hotel bars – Use by respondents of the same name for restaurants – Substantial differences in get up – Whether members of public are likely to be misled into assuming an association between the parties. PASSING OFF – Whether use of name TGI Friday's by appellants constitutes the passing off of its services as those of the respondents – Whether public likely to be misled. Trade Practices Act 1974, ss52 and 53(c). TGI FRIDAY'S AUSTRALIA PTY LIMITED and BIG COUNTRY DEVELOPMENTS PTY LIMITED v TGI FRIDAY'S INC and TGI FRIDAY'S MINNESOTA, INC NG1121 of 1998

WILCOX, KIEFEL and EMMETT JJ SYDNEY 26 MARCH 1999 IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG1121 OF 1998

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN: TGI FRIDAY'S AUSTRALIA PTY LTD

First Appellant

BIG COUNTRY DEVELOPMENTS PTY LTD

Second Appellant

AND: TGI FRIDAY'S INC

First Respondent

TGI FRIDAY'S MINNESOTA, INC

Second Respondent

JUDGES: WILCOX, KIEFEL and EMMETT JJ

DATE OF ORDER: 26 MARCH 1999

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The appeal be allowed; 2. The orders made by Whitlam J on 18 September 1998 in matter NG678 of 1996 be set aside and, in lieu thereof, it be ordered that: (a) Application NG678 of 1996 be dismissed; (b) The costs of the trial of the said proceeding be reserved for determination by Whitlam J; and 3. The respondents, TGI Friday's Inc and TGI Friday's Minnesota Inc, pay to the appellants, TGI Friday's Australia Pty Limited and Big Country Developments Pty Limited, their costs of the appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.