Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) – Case Summary

Author: Jasmine Burrows, Progressive Legal

Facts

The Appellant, Cairns Harbour Lights Pty Ltd (CHL), built and took care of the apartments in the Harbour Lights / Cairns Harbour Lights residential area in Cairns. This place has two types of apartments; those rented by people living there long-term and those for short stays.  

In 2004, CHL obtained the domain names harbourlights.com.au and cairnsharbourlights.com. In the same year, CHL gave Mirvac Hotels Pty Ltd (Mirvac) the special rights to manage and let out both types of apartments in the complex. 

In 2007, an individual named Ms. Bradnam started her own business renting out apartments for both short- and long-term stays, competing with CHL. She used the name “Harbour Lights Property Management and Sales” and obtained domain names related to “Harbour Lights” and “Cairns Harbour Lights,” but not the ones Mirvac had. 

In 2009, CHL registered and obtained the trade marks “HARBOUR LIGHTS” and “CAIRNS HARBOUR LIGHTS,” in respect of services falling within Class 36 and Class 43. CHL gave Mirvac the exclusive rights to use the trade marks. 

Ms. Bradnam sold her business to Liv Pty Ltd (Liv) in the same year. Liv operates under the name “Cairns Luxury Apartments” and promotes its services on various websites. They also own the domain name “harbourlightscairns.com.au,” and this, along with the domain names Ms. Bradnam had, directed people to Liv’s website.  

In 2012, Mirvac changed its name to Accor Australia & New Zealand Hospitality Pty Ltd (Accor). 

Both CHL and Accor claimed that Liv violated their trade marks.  

The decision at first instance was that Liv’s use of “Harbour Lights” in the meta tags of its website broke the rules for the “HABOUR LIGHTS” and “CAIRNS HABOUR LIGHTS” trade marks. 

Meta tags are textual elements functioning as code to describe the content of a webpage. They are not visible to regular users and are employed by search engines to guide users to suitable websites based on their search terms. Consequently, meta tags can serve as a method to manipulate search results in your favour. 

The Court thought that the words “HARBOUR LIGHTS” in the website’s code, “content: = Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short-term rental,” basically acted as a business name for a business that provides “places to stay for short periods” like a badge to tell people where the services come from. This use broke the trade mark rules.

Issues

Was the use of CHL’s trade marks in the meta tags on Liv’s website a trade mark infringement?

Decision

The Full Court agreed with the primary Judge’s decision that Liv’s use of CHL’s trade marks in the meta tags on their website was indeed trade mark infringement.

Reasoning

The Full Federal Court emphasised that the term “Harbour Lights” used as a metatag isn’t actually shown on the screen but is used by search engines like Google to decide which search results to show when someone searches for something. 

Liv used these words as a business name, not just as descriptions. This means they were using it like a trade mark, which goes against the Trade Marks Act 1995 (Cth) and counts as trade mark infringement under section 120(1). 

The Court agreed with an expert’s explanation that this source data “was visible to people who knew where to look, it’s the foundation of Liv’s website, and it affects search results.” However, CHL/Accor didn’t provide evidence that anyone had actually seen these words in the source code. 

Even though there wasn’t direct proof that someone from Liv put the source data in that specific place, the Court still found that Liv infringed the trade marks. This is because Liv had hired an IT consultant to make the website, Liv managed and changed the website’s content over time, and they controlled the website including its source data.  

Even if the meta tag code was added by someone else like an IT expert, the website owner could still be held responsible for trade mark infringement. 

From this, the Court inferred that the words in the source data were probably added to improve search results for Liv’s benefit. The Court concluded that Liv likely had the IT consultant include those words in the source data with Liv’s agreement. In essence, Liv was considered to have used those words.

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