Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157 – Case Summary

Author: Jasmine Burrows, Progressive Legal

Facts

The Applicant, Swancom Pty Ltd, was the owner of the hotel, ‘The Corner Hotel’ in Richmond, Melbourne. They owned four trade marks incorporating the word, ‘Corner’ including ‘CORNER HOTEL’, ‘CORNER’, ‘CORNER PRESENTS’ AND ‘THE CORNER’ (the Swancom marks).  

The first three respondents conduct the businesses ‘The Jazz Corner Hotel’, ‘Bird’s Basement’, and ‘The Jazz Corner Café.’ Each business operates in the same building in Melbourne. The three businesses have common ownership, management, and control under The Ubertas Group, a property development company.  

Swancom alleged that the respondents had infringed the Swancom marks by using, without the licence or authority of Swancom, the following trade marks (collectively known as the ‘Jazz Corner marks’) in Australia in relation to live music services (class 41) and hospitality services (class 43): 

1. THE JAZZ CORNER OF MELBOURNE and JAZZ CORNER OF MELBOURNE (Jazz Corner of Melbourne marks); 
2. THE JAZZ CORNER OF THE WORLD and JAZZ CORNER OF THE WORLD (Jazz Corner of the World marks); 
3. THE JAZZ CORNER HOTEL, JAZZ CORNER HOTEL and JAZZCORNERHOTEL (Jazz Corner Hotel marks); and 
4. THE JAZZ CORNER CAFÉ, JAZZ CORNER CAFÉ and THEJAZZCNRCAFE (Jazz Corner Café marks). 

The respondents cross-claimed to cancel the Swancom trade mark registrations for Class 41 services, stating that the marks were not capable of distinguishing Swancom’s services and were likely to deceive or cause confusion.  

At first instance, after considering how widely the term, ‘corner’ is used in the names of hotels, cafes, and bars, the primary Judge believed that the phrase ‘corner hotel’ was to be understood by consumers as descriptive of a hotel situated on a corner. Despite this, the primary Judge found that Swancom’s marks had become distinctive for class 41 services through previous use, even though they were inherently descriptive.  

When comparing Swancom’s marks to the Jazz Corner Marks under section 120(1), O’Bryan J dismissed the significance of the words ‘corner hotel’ due to their widespread use and lack of distinctiveness. He believed that adding nearly any adjective to those words would make a name distinctive.  

Even though the word ‘jazz’ has a dictionary meaning, O’Bryan J found it to stand out more. This was because it’s not as commonly used in the names of hospitality businesses and it is associated with the unique style of jazz music, which gives it a special impact. 

On appeal, Swancom argued that the primary judge made a mistake by not considering the unique meaning that Swancom’s marks had gained over time. Swancom believed that the primary Judge erred in deciding that there was only a small chance that the ordinary person would be uncertain about whether the live music services linked to the Jazz Corner Marks came from Swancom. 

Issues

Is it appropriate to have regard to evidence of acquired distinctiveness (s 41 Trade Marks Act 1995 (Cth)) for the purposes of conducting the comparison required by s 120 (1) in assessing deceptive similarity.  

Decision

The Full Court agreed with the primary Judge and dismissed the appeal. Swancom was ordered to pay the costs of the appeal.  

Reasoning

The Full Court unequivocally rejected Swancom’s argument.  

The Full Court emphasised that the process of deciding if a mark can be registered is different from the process of deciding if a mark is being infringed under s 120(1) of The Act.  

Once a mark is registered, all marks are treated the same when considering if they are being infringed. This is true regardless of how they got registered, whether they are widely known or used, or whether they are very well-known or used.  

The legislative definition of ‘deceptively similar’ indicates that deception or confusion must arise from the resemblance of the marks themselves and not the manner in which they are used.  

The accepted test for deceptive similarity is based on the ordinary person’s memory of a registered trade mark, even if it’s not perfectly clear. But this ordinary person is not assumed to know how the registered mark is actually used or how well it is known.  

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