JLCS Pty Ltd v Squires Loft City Steakhouse Pty Ltd [2008] FCA 867

JLCS Pty Ltd v Squires Loft City Steakhouse Pty Ltd [2008] FCA 867

The earlier declaration conferred on Harold Miller and Saul Miller an unconditional right to operate the City restaurant using the Squires Loft mark and was not dependent on their ownership of shares in SQUIRES LOFT CITY STEAKHOUSE PTY LTD or units in the unit trust; the operation of a restaurant is different from its ownership. The change in ownership therefore did not end the licence, and there was no basis to vary the declaration to impose an ownership condition. JLCS, as grantor of the licence, was obliged not to derogate from its grant by using or permitting use of the Squires Loft name in a location so close to the City restaurant that it would likely have a significant adverse...

Jurisdiction
Australia
Judgment Date
12 June 2008
Procedural Posture
Contract and Trade Mark Licence Dispute With Cross Claim / Reasons for Judgment and Orders After Hearing
Outcome
The application was dismissed. The cross-claimants were directed to submit a memorandum concerning the relief sought on the cross-claim, with the cross-respondents to respond. The reasons state that final orders will include an order that the applicant pay the respondent's costs.
Legal Topics
['trade Mark Licence' 'non Derogation From Grant' 'implied Term' 'declaration' 'misleading or Deceptive Conduct']
['contract' 'trade Marks' 'practice and Procedure'] ['trade Mark Licence' 'non Derogation From Grant' 'implied Term' 'declaration' 'misleading or Deceptive Conduct']

Case Brief

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Procedural Posture

Contract and Trade Mark Licence Dispute With Cross Claim / Reasons for Judgment and Orders After Hearing

Legal Issues

  1. 1 ['Whether the licence to use the Squires Loft mark for the City restaurant was no longer valid because of changes in ownership of shares in SQUIRES LOFT CITY STEAKHOUSE PTY LTD and units in the unit trust.' 'Whether the earlier declaration should be varied to confine use of the Squires Loft name to the period when Harold Miller and Saul Miller were the sole directors and shareholders of SQUIRES LOFT CITY STEAKHOUSE PTY LTD.' 'Whether JLCS PTY LTD was restrained by the rule against derogation from grant, or by an implied term, from permitting another steak restaurant in close proximity to the City restaurant to use the Squires Loft name.' 'Whether the use of the Squires Loft name by Squires Loft City Grill Room in close proximity to the City restaurant created confusion and supported relief on the cross-claim.']

Ratio Decidendi

The earlier declaration conferred on Harold Miller and Saul Miller an unconditional right to operate the City restaurant using the Squires Loft mark and was not dependent on their ownership of shares in SQUIRES LOFT CITY STEAKHOUSE PTY LTD or units in the unit trust; the operation of a restaurant is different from its ownership. The change in ownership therefore did not end the licence, and there was no basis to vary the declaration to impose an ownership condition. JLCS, as grantor of the licence, was obliged not to derogate from its grant by using or permitting use of the Squires Loft name in a location so close to the City restaurant that it would likely have a significant adverse...

Court Disposition

The application was dismissed. The cross-claimants were directed to submit a memorandum concerning the relief sought on the cross-claim, with the cross-respondents to respond. The reasons state that final orders will include an order that the applicant pay the respondent's costs.

Orders

  • ['The application be dismissed.' 'The cross-claimants should submit a memorandum concerning the relief they seek on the cross-claim within 48 hours to which the cross-respondents should respond within a further 48 hours.']