San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842

FEDERAL COURT OF AUSTRALIA

San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842 INTELLECTUAL PROPERTY – application for interlocutory injunction – whether serious question to be tried – passing off – misleading and deceptive conduct – false representation – trade mark infringement – whether goods of same description – whether trade mark well known – balance of convenience – strength of applicant's case – whether actual immediate harm or damage to applicant's business, brand equity, reputation or goodwill.

Trade Marks Act 1995 (Cth): s 92(3) & (4)(b), s 120(2) & (3), s 254

Bullock v The Federated Furnishing Trades Society of Australasia (No 1) (1985) 5 FCR 464 considered Roses Only & Lush Pty Ltd v Mark Lyons Pty Ltd [1999] ATPR 41‑706 referred to Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 referred to SAN REMO MACARONI COMPANY PTY LTD v SAN REMO GOURMET COFFEE PTY LTD & ORS GOLDBERG J 15 DECEMBER 2000 MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY V 861 of 2000

BETWEEN: SAN REMO MACARONI COMPANY PTY LTD

(ACN 007 543 544)

Applicant

AND: SAN REMO GOURMET COFFEE PTY LTD

(ACN 064 047 605)

First Respondent

CAFÉ COFFEE PTY LTD

(ACN 092 803 042)

Second Respondent

JUDGE: GOLDBERG J

DATE OF ORDER: 15 DECEMBER 2000

WHERE MADE: MELBOURNE

UPON the first respondent by its counsel undertaking that until the hearing and determination of the proceeding, or further order, it will not: (a) sell the business of the retail sale of coffee products and associated products carried on by it at the premises situated at and known as 269 Charman Road, Cheltenham; (b) establish or open for business any other retail business or establishment which offers for sale or sells coffee products and associated products under or by reference to the name "San Remo Gourmet Coffee".