Federal Court of Australia Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd (No 2) [2024] FCA 256 File number: SAD 188 of 2022 Judgment of: CHARLESWORTH J Date of judgment: 19 March 2024 Catchwords: TRADE MARKS – form of order for amendment of Register of Trade Marks – cross-respondent the registered owner of a trade mark in certain services in class 43 – cross-claimant alleging the registered owner of the trade mark was not the owner – cross-claim upheld in relation to some of the registered services but not others – Court earlier making an order for variation granting liberty to apply to vary the order – variation application by cross-claimant – whether the form of order may cause confusion or tension – whether the amendment ordered may be interpreted in a way that would unintentionally exceed the Court's substantive findings – order varied Cases cited: Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138 Division: General Division Registry: South Australia National Practice Area: Intellectual Property Sub-area: Trade Marks Number of paragraphs: 11 Date of last submissions: Applicant and Cross-Respondent: 4 March 2024 Respondents and Cross-Claimant: 8 March 2024 Date of hearing: Determined on the papers Counsel for the Applicant and Cross-Respondent: Mr Travis Shueard Solicitor for the Applicant and Cross-Respondent: Piper Alderman Counsel for the Respondents and Cross-Claimant: Mr Tom Hoerner Solicitor for the Respondents and Cross-Claimant: Rigby Cooke Lawyers ORDERS SAD 188 of 2022 BETWEEN: CAPORASO PTY LTD AS TRUSTEE FOR THE DIRVERSITY TRUST (ACN 612 176 020) Applicant AND: MERCATO CENTRALE AUSTRALIA PTY LTD (ACN 627 469 818) First Respondent EDDIE MUTO Second Respondent AND BETWEEN: MERCATO CENTRALE AUSTRALIA PTY LTD (ACN 627 469 818) Cross-Claimant AND: CAPORASO PTY LTD AS TRUSTEE FOR THE DIVERSITY TRUST (ACN 612 176 020) Cross-Respondent order made by: CHARLESWORTH J DATE OF ORDER: 19 MARCH 2024 THE COURT ORDERS THAT: 1. Paragraph 3 of the orders made on 26 February 2024 be varied so as to substitute the description of services with the following description: Services for providing food and drink (other than services for the provision of food and drink at cafés, restaurants, bars or hotels); catering services; preparation of takeaway and fast foods; take away food and drink services; bakery services; bakery services relating to cakes and pastries; consultancy services relating to the operation of restaurants, cafes, take away food services, bars and hotels; temporary accommodation. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT CHARLESWORTH J 1 On 26 February 2024 I made Orders in this proceeding resolving a claim and cross-claim relating to trade marks owned by the applicant and cross-respondent Caporaso Pty Ltd. Reasons were published as Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138. The cross-claim was upheld to the extent provided for in paragraph 3 of the Orders. It was expressed as follows: 3. Subject to paragraph 4, in respect of Trade Mark No 1760112, the Register of Trade Marks be amended so that the description of services in Class 43 read as follows: Services for providing food and drink (other than services relating to the provision of food and drink at cafés, restaurants, bars or hotels); catering services; preparation of takeaway and fast foods; take away food and drink services; bakery services; bakery services relating to cakes and pastries; consultancy services relating to the operation of restaurants, cafes, take away food services, bars and hotels; temporary accommodation. 2 The effect of the order was to require the amendment of the Register of Trade Marks in respect of Trade Mark No 1760112. Caporaso is the registered owner of that trade mark. 3 The respondent and cross-claimant, Mercato Centrale Australia Pty Ltd was partially successful in its claim that Caporaso was not the owner of the Trade Mark in relation to certain challenged services in class 43 in respect of which it was registered. The challenge based on ownership was upheld in respect of some of the challenged services, but not others. The parties had not previously made submissions contemplating that the challenge based on ownership may be upheld only in part. Accordingly, I made the order subject to later variation upon the application of any party to ensure that it properly reflected the reasons for judgment and that it did not have unintended consequences. 4 By email transmitted on 4 March 2023, Caporaso applied to have the order varied so that it did not have certain unintended consequences described below. The application was opposed by Mercato Centrale for reasons given in an email transmitted on 8 March 2023. The emails containing the parties' submissions on the question have been marked for identification and will be kept on the Court record. 5 The description of services for which the Trade Mark was originally registered was as follows: Services for providing food and drink including services relating to the provision of food and drink at cafes, restaurants, bars, hotels and provision of catering services; preparation of take away and fast foods; take away food and drink services; bakery services; bakery services relating to cakes and pastries; consultancy services relating to the operation of restaurants, cafes, take away food services, bars and hotels; temporary accommodation 6 In the Reasons, I concluded that the Trade Mark had first been used in the operation of a restaurant business situated in Daylesford in Victoria, and specifically that the word MERCATO had been used in a website address and within a website promoting that restaurant. The reasons refer to the Trade Mark being used in the provision of services "relating to the provision of food and drink at cafes, restaurants" (at [194], [196], [201] and [207]). I further concluded (at [207]) that those services were "the same kind of thing as providing food and drink at bars and hotels". I concluded that the evidence was insufficient to prove that the Trade Mark had been used in the provision of any of the other challenged services in class 43 (at [202]) and stated that on the evidence before me I was not satisfied that the business in Daylesford provided any other services referred to in the registration. I was not satisfied that the Register should be amended to remove from the description of class 43 services anything other than services relating to the provision of food and drink in restaurants, cafes, bars and hotels. 7 Caporaso acknowledges that the words "relating to" were originally used in the class 43 description to describe the services in respect of which the Trade Mark was registered, and acknowledges that the same words are employed in the relevant part of the Reasons. However, it submits that the amendment provided for in paragraph 3 of the Orders has a wider effect than may have been anticipated by the Court by restricting the registration beyond what is justified by reference to the Court's findings. It submits that the words "relating to" have broader implications when used in an exclusionary way as compared to their use in an inclusionary way. It submits that other services described in class 43, specifically "preparation of takeaway and fast foods", "take away food and drink services" and "consultancy services relating to the operation of restaurants, cafes, take away food services, bars and hotels" could each be interpreted to be services "relating to" the provision of food and drink at cafes, restaurants bars and hotels. In addition, it submits that wholesaling services (class 35) could also be considered to be services "'relating to' the provision of food and drink at cafes, restaurants, bars or hotels". As such, Caporaso submits that the amendment as it presently stands would create tension or inconsistency in the description and the potential for confusion, and that it would in that way exceed the Court's substantive findings as to ownership. 8 I accept that the order for amendment in its present form of words may have the potential to cause confusion in the manner described in those submissions and that it may unwittingly exclude more trading activities than can be justified against the Reasons, read in their proper context. The relevant finding was that the Trade Mark had been used (and so was owned) only in respect of the provision of food and drink in a restaurant or café, which was held to be the same kind of thing as the provision of food and drink in a hotel or bar. The Court's use of the words "relating to" in the Reasons should otherwise be understood in a way that accords with the findings in fact made. Read as a whole, the Reasons make it plain that the cross-claim was unsuccessful insofar as it alleged that Caporaso was not the owner of the Trade Mark in respect of any other goods or services falling within the challenge. I reject Mercato Centrale's submission that the amendment proposed in paragraph 3 properly reflects the intention of the Court and that it has no unintended consequence. The submissions place too much store on the use of the words "relating to" in the reasons for judgment themselves, and insufficient store on the substantive findings. 9 Caporaso submits that the order should be varied with the effect that the amended description of services in class 43 would read as follows: Services for providing food and drink (other than services for the provision of food and drink at cafés, restaurants, bars or hotels); catering services; preparation of takeaway and fast foods; take away food and drink services; bakery services; bakery services relating to cakes and pastries; consultancy services relating to the operation of restaurants, cafes, take away food services, bars and hotels; temporary accommodation. 10 That formulation of words better accords with the Reasons, properly understood. It avoids the unintended consequence that there may be inconsistency or confusion in the expression of the class 43 services and avoids any doubt as to whether Caporaso is the owner of the Trade Mark in connection with all of the described services other than those referred to between the newly installed brackets. 11 The application to vary the order will be allowed and the varied order entered in the terms sought by Caporaso. I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Charlesworth. Associate: Dated: 19 March 2024