Federal Court of Australia

Los Carnales Pty Ltd, in the matter of Cartel Del Taco Pty Ltd [2022] FCA 1053

ORDERS

THE COURT ORDERS THAT:

1.    The Originating Application be dismissed.

2.    The parties are to provide to the Associate to Goodman J, within 7 days of the date of these orders, agreed orders as to costs, or failing such agreement, an agreed timetable for the filing and service of evidence and submissions concerning costs.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

GOODMAN J

INTRODUCTION

1    The applicant and the respondent are the corporate vehicles by which Mr Marco Ramirez and Mr Erick Guerra on the one hand, and Ms Bonham Fitzgerald and Mr Brandon Chow on the other, respectively pursued their plans of opening a taqueria. The pursuit of those plans occurred in parallel, in Brisbane and Melbourne respectively. Each decided, it seems independently of the other, to use the name “Cartel del Taco” (Name) as the name for their taqueria.

2    The applicant opened its taqueria on 1 April 2022. Prior to doing so, it promoted its taqueria on social and other media using the Name. The respondent has not yet opened (and would have opened by now but for the commencement of this proceeding), but it has also used the Name extensively in social media. Prior to the incorporation of the respondent on 21 September 2021, a partnership of Ms Fitzgerald and Mr Chow also used the Name on social media and registered the Name as a business name.

3    The applicant contends that the use of the Name by the respondent contravenes s 18 of the Australian Consumer Law (ACL), within Sch 2 to the Competition and Consumer Act 2010 (Cth), and involves passing off by the respondent. The applicant seeks orders under s 232 of the ACL, preventing the respondent from carrying on, publicising or promoting a taqueria or like business under the Name “Cartel del Taco” or any name which is substantially identical with or deceptively similar to the Name. The applicant also seeks similar relief for the alleged passing off.

4    For the reasons set out below, the application should be dismissed. In summary, that is because: the relevant conduct of which the applicant complains is the respondent’s use of the Name; the date at which the effect of such conduct is to be assessed is the date of its commencement; and as at the date of the commencement of the use of the Name, namely 10 August 2021, such use did not contravene s 18 of the ACL or involve passing off. In particular, as at that date there was no sufficient association between the Name and the applicant or its proposed taqueria.

relevant principles

5    In many cases, of which the present is one, there is an overlap between causes of action for contravention of s 18(1) of the ACL and passing off: see Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCA 82; (2020) 150 IPR 11 at 58 [232]-[233] (O’Bryan J).

Section 18 of the ACL

6    The principles relevant to the operation of s 18 of the ACL are well-established and not in dispute in the present case. A convenient summary is that of the Full Court (Wigney, O’Bryan and Jackson JJ) in Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2020] FCAFC 130; (2020) 278 FCR 450 at 458-459 [22]:

22    The applicable principles concerning the statutory prohibition of misleading or deceptive conduct (and closely related prohibitions) in the ACL are well known and there was no dispute between the parties concerning those principles. The central question is whether the impugned conduct, viewed as a whole, has a sufficient tendency to lead a person exposed to the conduct into error (that is, to form an erroneous assumption or conclusion about some fact or matter): Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 (Taco Bell) at 200 per Deane and Fitzgerald JJ; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 (Puxu) at 198 per Gibbs CJ; Campomar Sociedad, Limitada v Nike International Limited (2000) 202 CLR 45 (Campomar) at [98]; Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2013) 250 CLR 640 (TPG Internet) at [39] per French CJ, Crennan, Bell and Keane JJ; Campbell at [25] per French CJ. A number of subsidiary principles, directed to the central question, have been developed:

(a)    First, conduct is likely to mislead or deceive if there is a real or not remote chance or possibility of it doing so: see Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) 2 FCR 82 (Global Sportsman) at 87, referred to with apparent approval in Butcher at [112] by Gleeson CJ, Hayne and Heydon JJ; Noone (Director of Consumer Affairs Victoria) v Operation Smile (Australia) Inc (2012) 38 VR 569 at [60] per Nettle JA (Warren CJ and Cavanough AJA agreeing at [33]).

(b)    Second, it is not necessary to prove an intention to mislead or deceive: Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 228 per Stephen J (with whom Barwick CJ and Jacobs J agreed) and at 234 per Murphy J; Puxu at 197 per Gibbs CJ; Google Inc v ACCC (2013) 249 CLR 435 (Google) at [6] per French CJ and Crennan and Kiefel JJ.

(c)    Third, it is unnecessary to prove that the conduct in question actually deceived or misled anyone: Taco Bell at 202 per Deane and Fitzgerald JJ; Puxu at 198 per Gibbs CJ; Google at [6] per French CJ and Crennan and Kiefel JJ. Evidence that a person has in fact formed an erroneous conclusion is admissible and may be persuasive but is not essential. Such evidence does not itself establish that conduct is misleading or deceptive within the meaning of the statute. The question whether conduct is misleading or deceptive is objective and the Court must determine the question for itself: see Taco Bell at 202 per Deane and Fitzgerald JJ; Puxu at 198 per Gibbs CJ.

(d)    Fourth, it is not sufficient if the conduct merely causes confusion: Taco Bell at 202 per Deane and Fitzgerald JJ; Puxu at 198 per Gibbs CJ and 209-210 per Mason J; Campomar at [106]; Google at [8] per French CJ and Crennan and Kiefel JJ.

(e)    Fifth, where the impugned conduct is directed to the public generally or a section of the public, the question whether the conduct is likely to mislead or deceive has to be approached at a level of abstraction where the Court must consider the likely characteristics of the persons who comprise the relevant class to whom the conduct is directed and consider the likely effect of the conduct on ordinary or reasonable members of the class, disregarding reactions that might be regarded as extreme or fanciful: Campomar at [101]-[105]; Google at [7] per French CJ and Crennan and Kiefel JJ.

Passing off

7    The principles relevant to an action in passing off were conveniently summarised by O’Bryan J in Urban Alley at 58-59 [235]-[239]:

235    The elements of the action for passing off are usually expressed in terms of the “classic trinity” expounded by Lord Oliver in Reckitt and Colman Products Ltd v Borden Inc (1990) 17 IPR 1 at 7: see ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 (ConAgra) at 356 per Gummow J; Bodum v DKSH Australia Pty Ltd [2011] FCAFC 98 (Bodum) at [212] per Greenwood, Tracey and Buchanan JJ; 280 ALR 639; 92 IPR 222; Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29 at [82] per Allsop CJ, Nicholas and Katzmann JJ; 357 ALR 15; 129 IPR 238. Those elements are:

(a)    a reputation in the get-up of the plaintiff’s products such that the get-up is recognised by relevant purchasers as distinctive of the plaintiff’s products;

(b)    a misrepresentation (whether intentionally or unintentionally) by the defendant’s use of the same or a similar get-up to indicate that the defendant’s products are the same as the plaintiff’s products or come from the same source; and

(c)    damage flowing from the erroneous belief engendered by the misrepresentation.

236    There is a presumption of damage upon the proof of the first two elements: Draper v Trist [1939] 3 All ER 513 at 525–7 per Goddard LJ; 56 RPC 429; Childrens Television Workshop Inc v Woolworths (NSW) Ltd [1981] 1 NSWLR 273 at 281-2 per Helsham CJ in Eq; Madden v Seafolly Pty Ltd [2014] FCAFC 30 at [116] and [117] per Rares and Robertson JJ; 313 ALR 1.

237    There is no requirement to prove subjective intention to mislead or actual deception: B M Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1977) 12 ALR 363 at 370–1 per Gibbs J; 51 ALJR 254; Verrocchi v Direct Chemist Outlet Pty Ltd (2016) 247 FCR 570 at [103] per Nicholas, Murphy and Beach JJ. Further, the misrepresentation need only be likely to lead the public to believe that the goods are those of the plaintiff: Bodum at [214] per Greenwood, Tracey and Buchanan JJ.

238    Reputation is a matter of fact. It is necessary to consider the extent to which the distinguishing sign or get-up is known to the relevant section of the public. Typically, the applicant in a passing off case establishes its reputation through evidence relating to: the volume of its sales; the extent and nature of its advertising, marketing and promotional activities; and the length of time, and geographical area, in which these activities have taken place: see for example McCormick & Company Inc v McCormick [2000] FCA 1335 (McCormick) at [85]-[87]; 51 IPR 102; ConAgra at 343 and 346 per Lockhart J; and Nutrientwater Pty Ltd v Baco Pty Ltd [2010] FCA 2 at [16] per Kenny J; 265 ALR 140; 84 IPR 452.

239    As a practical matter, reputation will be more difficult to establish if the applicant uses a mark that is descriptive of its products: Hornsby at 229-230 per Stephen J (with whom Barwick CJ and Jacobs J agreed).

The time at which impugned conduct is to be assessed

8    A well-established principle, for both s 18 of the ACL and passing off, and one of particular significance to the present proceeding, is that the date at which the impugned conduct is to be assessed is the date of its commencement: see BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363 at 368.10 and 369.40 (Gibbs J; with whom Barwick CJ and Murphy J agreed); Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 at 861G (Lord Scarman, delivering the judgment of the Privy Council); Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 182 (Franki J) and 203-204 (Deane and Fitzgerald JJ); Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd [1989] FCA 735; (1989) 17 IPR 289 at 302 [46] (Gummow J); Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik [2002] FCA 390; (2002) 56 IPR 182 at 237 [237] (Allsop J , as the Chief Justice then was); Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; (2010) 275 ALR 526 at 588-590 [327]-[334] (Yates J); Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239 at 280 [275] and [280] (Beach J); Urban Alley at 59 and 60 [240] and [243(f)] (O’Bryan J); Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd [2017] FCA 403; (2017) 349 ALR 598 at 612 [24] (Burley J); Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235; (2018) 354 ALR 353 at 424 [309] (Burley J); In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193; (2020) 377 ALR 116 at 151 [181] (Katzmann J).

9    As a result, an applicant cannot rely upon any enhancement of its reputation after the date of the commencement of the impugned conduct. As Yates J stated in Optical 88 at 589 [333], with respect to the predecessor to s 18 (namely s 52 of the Trade Practices Act 1974 (Cth)):

… If, in the present case, the applicant can establish that, as at the date of commencement of the impugned conduct …, it had a sufficient reputation to sustain its claim that the first respondent has contravened s 52 of the Trade Practices Act, it does not need to rely on any intervening strengthening of that reputation in the period before the commencement of proceedings, although any strengthening of its reputation may be a matter that is relevant to the question of relief: Nature’s Blend at [13]. If, on the other hand, the applicant cannot establish that, as at the date of commencement of the impugned conduct, it had a sufficient reputation to sustain its claim, I cannot see how any after-acquired reputation can assist it in the face of what would otherwise have been the legitimate commencement and continued conduct of the first respondent’s business.

Identification of the impugned conduct and its date of commencement

10    An important difference between the parties in this proceeding is the identification of the impugned conduct. This question is, in turn, of importance to the identification of the date upon which such conduct commenced.

Identification

11    The applicant’s position, in its final submissions, is that the impugned conduct is the proposed opening of the respondent’s taqueria, using the Name (albeit, the applicant submits that such conduct is “informed” by the respondent’s past and present conduct in publicising its proposed taqueria) and thus that the time for assessing the impugned conduct is the close of the respondent’s case on 18 August 2022. In contrast, the respondent’s position is that the impugned conduct is the use of the Name from as early as 1 August 2021. I am satisfied that the impugned conduct is the use of the Name (and that this had commenced by 10 August 2021), for the following reasons.

12    First, the question is one of substance rather than form, and cannot be defined by the extent of an applicant’s knowledge of a respondent’s conduct, or by the manner in which an applicant presents its case. As Professor Wadlow opines at [5-310] of Wadlow on the Law of Passing-Off (6th ed, Sweet & Maxwell, 2021): “Needless to say, the conduct complained of must mean the whole course of the defendant’s conduct and not just that of which the claimant was aware or chose to plead”.

13    Secondly, prior to final submissions, the case was conducted upon the basis that the applicant sought to impugn conduct which included both conduct which had already occurred, conduct which was occurring and the proposed future conduct, namely the opening of the respondent’s taqueria. In this regard, the Originating Application seeks orders relating to conduct prior to the opening of the respondent’s taqueria including the promotion of that taqueria using the Name and the use of the Name as a business name. As discussed below, these events occurred as early as August 2021. The applicant’s outline of opening submissions also referred to the failure of the respondent, despite a demand made by the applicant on 9 September 2021, to cease using the Name in connection with the promotion of its proposed taqueria. Further, the evidence adduced by the applicant addresses the respondent’s use of the Name since August 2021.

14    Thirdly, I do not accept the applicant’s submission that its position is supported by Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29; (2018) 357 ALR 15 at 44 [85], where Allsop CJ, Nicholas and Katzmann JJ stated that:

A determination must be made as to whether the claimant has the necessary reputation in the market at the date the impugned product is introduced and the respondent’s conduct must be assessed in the circumstances of the market in which the products are in and according to the type of product: Nutrientwater Pty Ltd v BACO Pty Ltd [2010] FCA 2; 265 ALR 140 at 158 [80].

15    In Nutrientwater Pty Ltd v Baco Pty Ltd [2010] FCA 2; (2010) 265 ALR 140 at 158-159 [80], Kenny J stated:

The relevant date for determining whether NW had the necessary reputation in the elements of packaging and get-up in question was the date upon which Baco launched the Baco Product Range in the Australian market, that is, in May 2009: see Pub Squash at 861; Ricegrowers Ltd v Real Foods Pty Ltd (2008) 77 IPR 32 (‘Ricegrowers’) at 43 per Rares J; Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 at 489 per Jacobson J; and Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 79 IPR 174 at 181 per Tamberlin J.

16    Stone & Wood and Nutrientwater do not contradict, and are consistent with, the proposition that the relevant time for assessing the impugned conduct is the date of its commencement. In those cases, the commencement of the impugned conduct was the date on which the competing product was introduced. I do not read what was said in either of those cases as meaning that if, as in the present case there is relevant conduct prior to the launch of a competing product, then the conduct prior to the launch is to be ignored. Such a proposition would be contrary to the authorities cited at [8] above. Whilst Miller’s Australian Competition and Consumer Law Annotated (44th ed, Thomson Reuters, 2022) at [ACL.18.670] (p 1457) cites Stone & Wood and Nutrientwater for the proposition that: “The relevant point in time at which the applicant has to establish that members of the relevant class of the public would be likely to be misled is the date on which the competing product range was launched”, that proposition, in my view, is too broadly stated, and regard must be had to the facts of those cases and to the authorities cited at [8] above.

Date of commencement

17    Thus, it is necessary to determine the date on which the respondent commenced to use the Name. Prior to doing so, it is necessary to address an anterior question, namely the relevance of conduct engaged in before the respondent was incorporated and became the owner of the business name “Cartel del Taco”. This question arises because the Name was used on the partnership’s Instagram Page from early August 2021 and on the partnership’s Facebook Page from 18 September 2021, but the respondent was not incorporated until 21 September 2021 and did not become the registered owner of the business name “Cartel del Taco” until 18 November 2021.

18    A similar issue arose in Knott Investments Pty Ltd v Winnebago Industries Inc [2013] FCAFC 59; (2013) 211 FCR 449. In that case, Mr Binns obtained a business name registration for “Winnebago Industries” in 1978. Commencing in the same year, Mr Binns and his wife, as a partnership trading under the name “Winnebago Industries”, manufactured and sold recreational vehicles using the name “Winnebago” and a logo which was substantially similar to that of Winnebago Industries Inc. In 1982, the partnership transferred the registered business name to a company, Knott Investments Pty Ltd, and from that point the company carried on the business formerly carried on by the partnership. In the absence of evidence of a formal agreement transferring the business from the partnership to the company, the primary judge determined that the offending conduct commenced in 1982 (see Winnebago Industries, Inc v Knott Investments Pty Ltd (No 2) [2012] FCA 785; (2012) 293 ALR 108 at 114 [30]-[31]). This finding was overturned on appeal. Allsop CJ, after setting out the relevant evidence stated at 453-454 [9]:

The above evidence supports the clearly available, indeed compelling, inference that a transfer of the business that had been carried on by Mr and Mrs Binns was made informally to the trustee of their family’s trust, that is, to Knott. The date to assess the offending conduct was 1978.

19    Jagot J held at 480 [141]:

However, there was evidence that after Mr and Mrs Binns used the name Winnebago from March 1978 and the logo from July 1978 the first appellant started doing so on 1 June 1982 the day after Mr and Mrs Binns ceased doing so. This is recorded in the Statement of Change of Names to whom Business Name is Registered lodged with the Corporate Affairs Commission (as it was) on 4 June 1982. In those circumstances it must be the case that, notwithstanding the lack of any sale of business agreement between Mr and Mrs Binns and the first appellant, the first appellant acquired the business which had existed for four years and thus acquired whatever goodwill and reputation that went with it. This so irrespective of the family trust arrangements by which the first appellant is the trustee of a trust for the Binns family. The relevant date, accordingly, is July 1978. It follows that ground 3 of the appeal must be accepted.

20    The third member of the Full Court, Cowdroy J, agreed (at 466-467 [81]-[82]) with the reasons of Allsop CJ.

21    In the present case, on 2 August 2021 the partnership - “B.J. Chow and B.L. Fitzgerald” - registered the Name as a business name; and on 18 November 2021, after the incorporation of the respondent on 21 September 2021, the registration of the Name was transferred from the partnership to the respondent. It follows, by dint of the approach taken in Knott Investments that the use of the Name by the partnership prior to the transfer of the Name to the respondent should be taken into account.

22    Against that background, I turn now to consider the first use of the Name by the partnership.

23    In April 2021, Ms Fitzgerald and Mr Chow decided to open a taqueria in Melbourne. In about July 2021, Ms Fitzgerald and Mr Chow settled on the name “Cartel del Taco” for their taqueria.

24    On 1 August 2021, Ms Fitzgerald established for the partnership an Instagram page with the user name “cartel.del.taco”. This page was initially set to “private”, which restricted access to followers approved by the operator of the page.

25    On 10 August 2021, that page was switched from “private” to “public”. From then it displayed: the user name “cartel.del.taco”; the text “ CARTEL DEL TACO ” at the top of the page; and (until it was changed on 10 November 2021) the logo below as its profile picture:

26    I am thus satisfied that the use of the Name had commenced by 10 August 2021.

The effect of the use of the Name as at 10 August 2021

27    I turn now to consider the effect of this conduct as at 10 August 2021. For the use of the Name by the respondent to have been a contravention of s 18 of the ACL, it must have had a sufficient tendency to lead a not insignificant number of ordinary or reasonable members of the class of persons exposed to such conduct into error (relevantly, to form an erroneous assumption or conclusion that the two – yet to be opened – taquerias were associated). For passing off, the applicant must establish, inter alia, that the applicant’s proposed taqueria had a reputation based on the Name, such that the Name is recognised by relevant purchasers as distinctive of the applicant’s proposed taqueria and that the respondent’s use of the Name in connection with its proposed taqueria was a misrepresentation of an association between the two proposed taquerias.

28    For each cause of action in the present case, the applicant must establish, at a factual level, that a not insignificant number of ordinary or reasonable members of the class of persons exposed to the respondent’s conduct would likely make a connection or association between the Name and the applicant’s proposed taqueria. This can only occur if such persons can be taken to have some knowledge of the applicant’s proposed taqueria.

29    The evidence establishes the following. In September 2020, Mr Ramirez and Mr Guerra set up an Instagram page. I will refer to that page, for convenience, as the applicant’s Instagram Page. The user name for the applicant’s Instagram Page as at September 2020 is not apparent from the evidence. It is, however, apparent that it did not have its current name - “carteldeltacobrisbane” - as at September 2020, and that that name was not adopted until a date after January or February 2021.

30    On 29 September 2020, the first post was made on the applicant’s Instagram Page. It included the following picture:

31    The original text of that post was not in evidence. The text, as edited on about 18 June 2021, was “COMING SOON”.

32    During 2020, Mr Ramirez registered the domain name: “lacasadeltaco.com.au”.

33    On 18 January 2021, Mr Ramirez posted on his personal Instagram page a photograph of a chair bearing the words “La Casa del Taco”. On 11 February 2021, Mr Ramirez posted on his Instagram page a photograph of himself wearing a “hoodie” with the words “La Casa del Taco”, together with the caption “Branding on point”. Those photographs are reproduced below:

34    After January or February 2021, and on a date which Mr Ramirez cannot now remember, he changed the user name for the applicant’s Instagram Page to “carteldeltacobrisbane”.

35    On 7 June 2021, the applicant was incorporated with Mr Ramirez and Mr Guerra as its directors and shareholders. The applicant is the trustee of the La Chona Unit Trust. On 12 June 2021, the applicant, qua trustee of the Trust, registered “La Casa del Taco” as a business name.

36    On 14 June 2021, Mr Ramirez posted the following image to the applicant’s Instagram page:

37    The text of that post as it existed prior to 17 September 2021 was not in evidence.

38    On 22 July 2021, the applicant, qua trustee of the Trust, registered the domain names: “carteldeltaco.com.au” and “elcarteldeltaco.com.au”. On 27 July 2021, the applicant, qua trustee of the Trust, registered the business name: “El Cartel Del Taco”.

39    In about early August 2021, the applicant’s website: www.carteldeltaco.com.au was established.

40    I have not had regard to evidence subsequent to 10 August 2021, including: the applicant’s Facebook page; other Instagram pages that the applicant created; later Instagram posts made by the applicant; online promotions and reviews of the applicant’s taqueria; signage at the premises from which the applicant’s taqueria trades; or the fact that the applicant has traded since 1 April 2022.

41    Having taken into account all of the relevant evidence ([23]-[25] and [29]-[39] above), I am not satisfied that a not insignificant number of ordinary or reasonable members of the class of persons subject to the respondent’s use of the Name would have been aware of the applicant’s proposed taqueria, much less that such persons would likely have made a connection between the Name and the applicant or its proposed taqueria, or that they could have been misled or deceived by the respondent’s use of the Name. That is so, for the following reasons.

42    First, the applicant’s taqueria had not opened and such an opening was still almost eight months away. Nor had the applicant entered into a lease of premises from which to operate its proposed taqueria. Thus, there can have been no recognition of the Name generated as a result of patrons dining at the taqueria, or from signage at the premises at which it eventually opened.

43    Secondly, whilst the applicant’s Instagram Page had been created, there is no basis for an inference that the applicant’s Instagram Page had the user name “carteldeltaco.com.au” as at 10 August 2021 in circumstances where the evidence is that the applicant’s Instagram Page did not have that user name until some (indeterminate) time after January or February 2021. That change may have occurred before or after 10 August 2021. Further, the only posts made on that page as at 10 August 2021 were those reproduced at [30] and [36] above. Neither post used the Name and the text “COMING SOON”, which was part of the first post from about 18 June 2021 does not convey any connection to the applicant or its proposed taqueria.

44    Thirdly, whilst the applicant had established the website “www.carteldeltaco.com.au” in about early August 2021 (the precise date is not in evidence), there is no evidence of its content (if any) at that time. Further, the evidence was that as at 12 September 2021, the applicant’s website was still undergoing development.

45    Fourthly, the partnership owned the Name as a registered business name. The applicant was the registered owner of the business name “La Casa del Taco” (and had been since 12 June 2021) and the business name “El Cartel Del Taco” (and had been since 27 July 2021).

46    Finally, whilst the posts on Mr Ramirez’s personal Instagram page in January and February 2021 used a name similar to the Name, they conveyed no connection with the applicant or its proposed taqueria.

47    It follows that the applicant has failed to establish that there was, as at 10 August 2021, any association between the Name and the applicant or its proposed taqueria. Indeed, the evidence falls well short of what would be required. This is fatal to each of the applicant’s causes of action.

conclusion

48    The application should be dismissed. The respondent indicated that it wishes to be heard on the question of costs. Orders will be made for the dismissal of the proceeding and for submissions on costs if the parties are unable to agree on a form of costs order.

Associate:    

Dated:    9 September 2022