Sydney restaurant re-ordered to cease using Heston Blumenthal’s “Fat Duck”

Sydney restaurant re-ordered to cease using Heston Blumenthal’s “Fat Duck”

Sydney restaurant re-ordered to cease using Heston Blumenthal’s “Fat Duck”

SL6 Limited v Fat Duck Pty Ltd [2012] FCA 71

A recent decision by the Federal Court of Australia involving the owners of renowned international chef Heston Blumenthal’s UK restaurant “The Fat Duck” reinforces the importance of complying with Court orders.

On 7 February, 2012, the Federal Court confirmed and extended orders it made previously against the proprietors of a Sydney restaurant restraining them from using the “Fat Duck” trade mark.

A history of non-compliance

The history of the case is as follows:

  1. The Fat Duck restaurant, specialising in French cuisine, opened its doors in Sydney’s Darling Quarter in around September, 2011.
  2. The Blumenthal companies issued a proceeding in the Federal Court against the Sydney restaurateurs on 3 November, 2011, seeking to restrain them from using the “Fat Duck” name.
  3. On 30 November, 2011, the Court made orders in the original proceeding by consent. In general terms, these orders included an order that the Sydney restaurateurs be restrained from using the words or marks “Fat Duck”, “Fat Duck Rotissoire Kitchen” and/or “Fat Duck Catering” or any other words or marks which are substantially identical or deceptively similar to them.
  4. Despite changing their name to names including the words “The Naked Duck” after the original orders were made, the Sydney Restaurateurs continued to use the “Fat Duck” trade mark in the form of “Vive Le Fat Duck” and “Fat Duck Rotissoire Kitchen” on business cards and on signage at their Darling Quarter restaurant.
  5. The Sydney restaurateurs ignored the further demands made on them by the Blumenthal companies’ lawyers to comply with the Court orders and the matter came on before the Federal Court on 7 February, 2012 pursuant to the liberty to apply granted to the Blumenthal companies in the original orders.
  6. On 25 January, 2012 the Blumenthal companies filed a further interlocutory application to enforce the orders made by the Court in the original proceeding on 30 November, 2011.

Two ways to deal with non-compliance with Court orders

In making the orders by consent pursuant to the liberty to apply provision in the original orders, Justice noted that it would have been equally open to the Blumenthal companies to pursue the Sydney restaurateurs for contempt of court. The orders made on 7 February effectively compel the Sydney restaurateurs to comply with the orders made on 30 November, 2011 and extend those orders to include references to the words and marks “Vive Le Fat Duck” and “Le Fat Duck Bakery”. (Interestingly, the only reference to “Le Fat Duck Bakery” is in the orders; it does not appear in the reasons for judgment.)

Curiously, despite the Blumenthal companies’ objection to the Sydney restaurateurs’ adoption of the name “The Naked Duck” in the correspondence issued by their lawyers, this was not pursued before the Court in the subsequent application.

Sydney restaurateurs ordered to pay costs

The Court also ordered the Sydney restaurateurs to pay costs to the Blumenthal companies on a party/party basis. (The Blumenthal companies had made a claim for costs on an indemnity basis, but the Court rejected that argument.)