On Friday 6 December 2024, the Full Court of the Federal Court of Australia dismissed the appeal against the decision of Justice Charlesworth on 26 February 2024 where her Honour ruled that Mercato Centrale Australia Pty Ltd’s use of the name ‘Il Mercato Centrale’ did not infringe the registered trade mark ‘MERCATO’ held by Caporaso Pty Ltd.
In late December 2022, Caporaso commenced Federal Court proceedings seeking to restrain Mercato Centrale Australia from using the name ‘Il Mercato Centrale’ for the proposed opening of its new business in the iconic ‘Macpherson Building’ on Collins Street, Melbourne.
Rigby Cooke Lawyers represented Mercato Centrale Australia at the first hearing in Adelaide before Justice Charlesworth in late July 2023. Her Honour delivered her judgment in February 2024 confirming non-infringement of the trade mark and partially allowing a cross claim by Mercato Centrale Australia, however the matter did not end there. Caporaso instituted an appeal to the Full Court of the Federal Court and that appeal was heard in August 2024. In the appeal, Mercato Centrale Australia repeated its denial of infringement of the trade mark and sought to have the applicant’s trade mark cancelled.
The very successful grand opening of ‘Il Mercato Centrale’ then took place a few months ago in September 2024.
By this decision, Mercato Centrale Australia’s position has been vindicated. It was successful in having the MERCATO trade mark registered in the name of Caporaso, cancelled. Caporaso was also ordered to pay Mercato Centrale Australia’s costs of the hearing at first instance and on appeal. ‘Il Mercato Centrale’ in Australia can now focus on building the business.
The partner leading the team that brought home the Il Mercato Centrale victory Elizabeth Guerra-Stolfa said:
“The attack made on Il Mercato Centrale was a very hard fought and intense one, but our legal team including preeminent senior and junior counsel worked seamlessly and tirelessly together to bring this victory home. It is also very pleasing to see that the monopoly on the word ‘MERCATO’ has been lifted so that traders wanting to trade off the Italian word for ‘market’ are not necessarily prevented from doing so.
“Many thanks to Ian Rosenfeld, Tom Hoerner, Arielle Vlahiotis and Lena Smythe of Rigby Cooke’s Intellectual Property and Litigation & Dispute Resolution teams for all their input and hard work.
“Now, go and have a nice pasta, panino, cannoli or enjoy one of the restaurants at ‘Il Mercato Centrale’. You’ll love it!”
Initially announced in 2022, Il Mercato Centrale Melbourne officially opened its doors on September 19, 2024. This vibrant Italian food market is located at 546 Collins Street and offers a wide range of artisanal food vendors, dining areas, and cultural experiences.
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