Melbourne’s iconic hospitality destination, Il Mercato Centrale, has announced a “favourable” outcome in a recent legal dispute regarding the use of the word “mercato,” meaning “market” in Italian.
The case, brought forward by an Adelaide business attempting to claim exclusive rights to the term, has been resolved in Il Mercato Centrale’s favour.
Il Mercato Central Melbourne co-founder Eddie Muto said: “We are deeply grateful for a court system that ensures fairness and prevents monopolisation of common language. While we empathise with the Adelaide business owner’s efforts to establish a brand, ‘mercato’ is a widely used term. It represents a concept, not something that should be exclusively owned by one entity.”
Il Mercato Centrale remains committed to delivering an authentic, vibrant market experience for Melbourne while celebrating its Italian roots.
“The venue’s operations will continue as usual, and the team is excited to move forward, welcoming locals and visitors to experience everything Il Mercato Centrale has to offer.”
The Full Court of the Federal Court of Australia handed down its decision on 6 December, affirming 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.
Late in December 2022 Caporaso Pty Ltd commenced Federal Court proceedings seeking to restrain Mercato Centrale Australia Pty Ltd from using the name “Il Mercato Centrale” for the proposed opening of its new business in the iconic Macpherson Building on Collins Street Melbourne. “Il Mercato Centrale” in Australia can now focus on building the business.
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 this year confirming non-infringement of the trade mark, however the matter did not end there. Caporaso Pty Ltd 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 successful grand opening of “Il Mercato Centrale” then took place a few months ago in September 2024.
“By the decision, Mercato Centrale Australia’s position has been vindicated. It not only successfully resisted a second round of infringement allegations, it was also successful in having the MERCATO trade mark registered in the name of Caporaso Pty Ltd, cancelled.” Caporaso Pty Ltd was also ordered to pay Mercato Centrale Australia’s costs of the hearing at first instance and on appeal.
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 the 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 the Rigby Cooke IP and litigation 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 will love it!”
Initially announced in 2022, Il Mercato Centrale Melbourne officially opened its doors on 19 September 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.
