Premetis v 260 Oxford Street Pty Ltd & Ors [2005] NSWSC 904

Premetis v 260 Oxford Street Pty Ltd & Ors [2005] NSWSC 904

The name "Arthur's Pizza" was excluded from the 1993 sale of business and did not pass with the goodwill to Mr and Mrs Vujovic; alternatively, a collateral agreement to that effect was established. The Vujovics therefore could not transfer rights in the name to 260 Oxford Street Pty Ltd. Clause 20 of the 2000 lease clearly provided that the name belonged to Mr Premetis, granted only a limited licence while the Oxford Street company remained his tenant, and prohibited use of the name at other premises. The intended use of "Arthur's Pizza", "Arthur's" or "the Arthur's Crew" at 180 Oxford Street would breach cl 20, create a grave risk of market confusion, constitute passing off, and be...

Jurisdiction
Australia
Judgment Date
08 September 2005
Procedural Posture
Supreme Court of New South Wales Equity Division Proceedings Concerning Contractual Restrictions, Passing Off, and Misleading or Deceptive Conduct / Judgment on Entitlement to Injunctive Relief; Damages and Costs to Be Considered Separately
Outcome
Mr Premetis was entitled to injunctive relief for breach of contract, passing off, and misleading or deceptive conduct under the Trade Practices Act 1974 (Cth) and the Fair Trading Act 1987. The Oxford Street company's claim in passing off failed. Questions of damages and costs were reserved for separate consideration.
Legal Topics
['construction and Interpretation of Contracts' 'sale of Business and Goodwill' 'revocable Licence to Use Trade Name' 'collateral Agreement' 'admissibility of Pre Contract Negotiations' 'restrictive Covenant in Lease' 'assignment of Future Property' 'goodwill in Gross' 'misleading or Deceptive Conduct' 'injunctive Relief']
['contracts' 'equity' 'passing Off' 'trade Practices' 'fair Trading'] ['construction and Interpretation of Contracts' 'sale of Business and Goodwill' 'revocable Licence to Use Trade Name' 'collateral Agreement' 'admissibility of Pre Contract Negotiations' 'restrictive Covenant in Lease' 'assignment of Future Property' 'goodwill in Gross' 'misleading or Deceptive Conduct' 'injunctive Relief']

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Procedural Posture

Supreme Court of New South Wales Equity Division Proceedings Concerning Contractual Restrictions, Passing Off, and Misleading or Deceptive Conduct / Judgment on Entitlement to Injunctive Relief; Damages and Costs to Be Considered Separately

Legal Issues

  1. 1 ['Whether the name "Arthur\'s Pizza" passed with the goodwill to Mr and Mrs Vujovic upon the purchase of the business in 1993' 'Whether Mr Premetis was entitled to enforce the restrictive provision in cl 20 of the 2000 lease' 'Whether Mr Premetis or, alternatively, the Oxford Street company was entitled to damages or an account of profits for passing off or damages under the Trade Practices Act 1974 (Cth) or the Fair Trading Act 1987 for misleading or deceptive conduct' 'Whether evidence of pre-contract discussions and a collateral agreement about the trade name was admissible' 'Whether cl 20 was void as an attempted assignment of future property or assignment of goodwill in gross']

Ratio Decidendi

The name "Arthur's Pizza" was excluded from the 1993 sale of business and did not pass with the goodwill to Mr and Mrs Vujovic; alternatively, a collateral agreement to that effect was established. The Vujovics therefore could not transfer rights in the name to 260 Oxford Street Pty Ltd. Clause 20 of the 2000 lease clearly provided that the name belonged to Mr Premetis, granted only a limited licence while the Oxford Street company remained his tenant, and prohibited use of the name at other premises. The intended use of "Arthur's Pizza", "Arthur's" or "the Arthur's Crew" at 180 Oxford Street would breach cl 20, create a grave risk of market confusion, constitute passing off, and be...

Court Disposition

Mr Premetis was entitled to injunctive relief for breach of contract, passing off, and misleading or deceptive conduct under the Trade Practices Act 1974 (Cth) and the Fair Trading Act 1987. The Oxford Street company's claim in passing off failed. Questions of damages and costs were reserved for separate consideration.

Orders

  • ['The parties are to bring in short minutes of orders reflecting the reasons.' 'The Court will hear the parties on the terms of appropriate orders and on costs.']