South Australian delicatessen Mercato in trademark battle with Melbourne food hall

Iconic SA deli Mercato is in a battle to protect its trademarked name, accusing a Melbourne businessman of “taking advantage” of its 50-year reputation.

Mercato’s Campbelltown store.

An interstate battle of the brands is brewing between iconic South Australian delicatessen and food retailer Mercato and a rival food hall in Melbourne.

Caporaso Pty Ltd, which owns Mercato’s registered trademarks, has commenced Federal Court proceedings against Melbourne’s soon-to-open Mercato Centrale, claiming its brand name infringes trademarks designed to protect the “substantial and valuable reputation and goodwill” built up by the family-run Adelaide business over more than 50 years of trade.

In documents filed with the court, Caporaso claims the use of the Mercato Centrale and Il Mercato Centrale brand names are “likely to mislead or deceive” consumers to believe there’s an affiliation between the Melbourne venue and its products, and Mercato and the products its sells online and at its Campbelltown store.

Mercato Centrale in Milan. The Italian concept store will open in Melbourne later this year.

However in a statement of cross claim, Mercato Centrale calls for Mercato’s trademarks to be cancelled given the descriptive nature of the term ‘mercato’ – an Italian word that translates to market.

It argues Italian is a widely spoken language in Australia, and ‘mercato’ is a word that other traders might “legitimately need or desire to use” to describe a place that sells the same or similar products to the Adelaide business.

Mercato Centrale director Eddie Muto is planning to open the first Mercato Centrale food hall outside of Italy later this year, with 20 artisan stalls, bakeries, butchers, bars and restaurants to be featured across three floors of the landmark McPherson’s Building on Collins St.

Caporaso argues the trading name is “substantially identical or deceptively similar” to its own trademarked ‘Mercato’ name, and relates to goods and services for which its own trademarks are registered.

It is seeking for Mr Muto and his company to be restrained from using the brand names Mercato Centrale and Il Mercato Centrale.

“The applicant has invested and continues to invest significant amounts in developing its reputation and goodwill in the trademark ‘Mercato’,” the statement of claim says.

“The First Respondent’s conduct was and is undertaken with the intention of taking advantage of and appropriating, and was calculated to take advantage of and appropriate the resolution and goodwill of the applicant and the applicant’s reputation.”

Caporaso is also claiming damages, accusing Mr Muto of refusing requests to terminate his use of the brand names.

Mercato managing director John Caporaso at the Campbelltown store.

In a statement of cross-claim, Mr Muto’s company argues the term ‘mercato’ is already widely used in the names of dozens of traders running similar businesses across Australia.

It lists 46 registered business names containing the word.

“The word ‘mercato’ carries an ordinary signification in Australia, to persons concerned with the goods and services for which the Caporaso (Trade) Marks are registered, meaning ‘market’ or ‘marketplace’, especially a market selling fresh food and ready-prepared meals in the style commonly associated with Italy,” the statement of cross-claim says.

“Other traders, acting without any improper motive, would want to use the term ‘mercato’, in relation to the registered goods and the registered services, for its ordinary signification as referring directly to a market or marketplace.”

Mercato Centrale is calling for Caporaso’s trademarks to be cancelled, or otherwise rectified to remove any exclusive right to use the term.

Mr Muto declined to comment on the legal proceedings, or on the expected opening date of the new Mercato Centrale food hall.

Mercato was established by Imma and Mario Caporaso in 1972. Their son John, who now runs the business, declined to comment.

Mercato will open a second store in the $250m Eighty Eight O’Connell development in North Adelaide.