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A dispute between two Victorian concert halls over the use of marks such as “CORNER” and “CORNER HOTEL” has seen infringement claims thrown out by the Federal Court of Australia. The court found that the Respondents’ various JAZZ CORNER marks did not deceptively resemble any of the Plaintiff’s CORNER mark registrations.
Although Judge O’Bryan accepted that the word “JAZZ” had a descriptive meaning when used in connection with live musical performances, His Honor held that the addition of this term to the word CORNER (or words CORNER HOTEL) left an impression distinct from the impression created by each of the plaintiff’s CORNER marks. This decision highlights the importance of any impression left by unusual (or unusual) elements of a brand, especially when the common elements are considered descriptive.
Since at least 1995, Swancom Pty Ltd (“Swancom”) has operated a hotel providing live music and hospitality services in Richmond, Victoria. Swancom also holds Australian trade mark registrations for CORNER HOTEL, CORNER, THE CORNER and CORNER PRESENTS for various entertainment and hospitality services in Classes 41 and 42.
Swancom brought trademark infringement proceedings against five defendants, namely Jazz Corner Hotel Pty Ltd (“JCH”), Bird’s Basement Pty Ltd (“BB”), Saint Thomas Pty Ltd “(ST”), Ubertas Operations Pty Ltd (“UO”) and Mr. Albert Dadon. Mr Dadon is the sole director of JCH, BB and ST, which each operate businesses from a building in William Street, Melbourne, namely a hotel business called The Jazz Corner Hotel, a jazz music venue called Bird’s Basement and a café called The Jazz Corner Café.
UO has Australian trademark registrations (used by JCH with authority from UO) for the word mark JAZZ CORNER and the composite mark shown below for various hotel, nightclub, food and drink services in class 43.
ST has obtained trademark registrations for the word mark JAZZ CORNER and the composite mark below for various food and beverage related services in Class 43.
Swancom alleged that the Respondent’s use of JAZZ CORNER OF MELBOURNE, JAZZ CORNER OF THE WORLD, JAZZ CORNER HOTEL and JAZZ CORNER CAFÉ (the “JAZZ CORNER Marks”) in connection with live music services and related ticket reservation infringed its CORNER records. In addition, as the sole director of JCH, BB and ST, Swancom has alleged that Mr. Dadon was co-tornife in the alleged offenses and has requested the cancellation of the various Jazz Corner listings described below. above.
The respondents denied the alleged infringement and sought partial cancellation of Swancom’s recordings. A partial cancellation was requested because the infringement complaints were not relevant to all services covered by the recordings.
Validity of CORNER trademarks
The respondents argued that Swancom’s CORNER recordings lacked sufficient distinctiveness when used in connection with the recorded services. O’Bryan J took first notice that hotels in Australia are often located on street corners and usually provide entertainment services to guests. Further, the evidence revealed that the word “corner” had been used descriptively to refer to the geographic location of hotels and in hotel trade names since the 19th century.
On this basis, His Honor concluded that the term “CORNER HOTEL” was not distinctive from ordinary hotel services (such as alcoholic beverages served on the premises, prepared meals and, to a lesser extent, accommodation ). However, O’Bryan J felt that the words CORNER HOTEL could function as a mark for services relating to the staging of professional live music performances, particularly given the extent to which Swancom and its predecessors have used this expression as a mark. .
Accordingly, Swancom’s CORNER HOTEL registration was valid as it only covered services relating to the staging of professional live music performances. For similar reasons, His Honor argued that Swancom’s CORNER and THE CORNER marks were also capable of distinguishing services related to the staging of professional live music performances. Swancom’s CORNER PRESENTS mark was also considered capable of distinguishing the Class 41 services concerned.
However, as Swancom’s CORNER and THE CORNER registrations cover a wider range of Class 41 services, O’Bryan J invited both parties to comment on whether these registrations should be modified/limited to preserve the freedom of other hotels, cafes, bars and restaurants to use the word “corner” in their commercial name.
Infringement of Swancom Trademark Registrations
The question of whether the Respondents’ use of the JAZZ CORNER marks infringed Swancom’s CORNER recordings actually rested on two factors, namely:
- Did the Respondents use the marks JAZZ CORNER as a mark in connection with services related to the staging of live music performances; and
- Is the respondent’s mark JAZZ CORNER deceptively similar to Swancom’s CORNER registrations?
Use as a trademark
Based on the evidence, His Honor found that JCH, BB and ST operate separate businesses, namely The Jazz Corner Hotel, Bird’s Basement and The Jazz Corner Café (respectively). O’Bryan J considered that only BB provided services for which Swancom trademarks are registered, namely live professional musical performances.
However, His Honor noted that BB’s Jazz Club was located in the same building as the JCH and ST companies which shared common ownership and offered accommodation and cafe services under the JAZZ CORNER brands. In addition, each of these companies was found to engage in extensive cross-promotion of the other’s business.
Based on the manner and context of its use, His Honor concluded that ordinary members of the public would perceive The Jazz Corner Hotel as a provider of live music performances in the basement jazz club known as of Bird’s Basement. As such, O’Bryan J held that JCH had used JAZZ CORNER HOTEL as a trademark in connection with live music services.
Although Judge O’Bryan acknowledged that JAZZ CORNER OF MELBOURNE could potentially be used in a descriptive or laudatory manner, His Honor held that JCH and BB had used JAZZ CORNER OF MELBOURNE as a trademark in connection with all undertakings conducted in from the William Street premises, namely hotel, cafe and jazz club.
Although Judge O’Bryan found that BB cross-promoted the Jazz Corner Hotel, the evidence showed that BB did not use the marks JAZZ CORNER HOTEL as an insignia of origin in connection with live music services. Similarly, while ST was found to have cross-promoted live music performances at the Bird’s Basement jazz club, the evidence showed that ST did not use JAZZ CORNER CAFÉ as its insignia. origin when it comes to live music services.
The JAZZ CORNER OF THE WORLD marks have been used on a more limited basis and primarily in connection with the Bird’s Basement jazz club. On this basis, His Honor concluded that the defendants had used the phrase “Jazz Corner of the World” in a descriptive manner rather than as a trademark.
Are the Jazz Corner marks deceptively similar to Swancom’s CORNER marks?
In view of the above, O’Bryan J was only required to consider whether the marks JAZZ CORNER HOTEL and JAZZ CORNER OF MELBOURNE were deceptively similar to any of Swancom’s CORNER registrations.
His Honor considers that the addition of “jazz” to the word “corner” (or to the words “corner hotel”) gives the composite expression a distinct sound and meaning. In His Honor’s opinion, attention is immediately drawn to the word “jazz” and the words “corner” or “corner hotel” play a secondary role in the expression. Further, His Honor has expressed the view that the addition of “jazz” is likely to create an impression or idea in the mind of an ordinary member of the public which is distinct from the impression or idea created by Swancom’s CORNER brands.
On this basis, O’Bryan concluded that the marks JAZZ CORNER HOTEL and JAZZ CORNER OF MELBOURNE were not deceptively similar to any of Swancom’s CORNER registrations. Accordingly, Swancom’s infringement actions against the Respondents were dismissed.
Potential Defenses Against Infringement
Although not strictly necessary, O’Bryan JA then considered the respondents’ potential defenses to infringement. In summary, His Honor held that the Respondents could not rely on the following defenses against infringement:
- Paragraph 122(1)(b) – that the respondents had used the JAZZ CORNER marks in good faith to indicate certain characteristics or qualities of the services;
- Section 122(1)(fa) – that due to the extent of the use of the terms “JAZZ CORNER OF MELBOURNE” and “JAZZ CORNER OF THE WORLD”, the defendants would be entitled to obtain the registration of these marks in Australia;
- Paragraph 122(1)(e) – that the respondents’ use of the JAZZ CORNER registered trademarks was only the exercise of rights conferred on them by the trademark law. In fact, the respondents had only registered their mark for the class 43 services, and not for the class 41 services covered by the infringement action;
His Honor also found that Mr. Dadon could not be a joint tortfeasor because all relevant decisions and actions were taken in his capacity as director. The evidence did not establish that Mr. Dadon had such involvement or responsibility in the terms and extent of this cross-promotion that he should be considered a joint tortfeasor.
Swancom has now filed an appeal regarding this matter.
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