In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328, Swancom Pty Ltd (“Swancom”), operator of live music and hospitality at 57 Swan Street, Richmond in the State of Victoria is the owner of a number of registered trade marks. Swancom initiated court proceedings against The Jazz Corner Hotel Pty Ltd (“JCHPL”/”First Respondent”), Bird’s Basement Pty Ltd (“BBPL”/”Second Respondent”) and Saint Thomas Pty Ltd (“STPL”/Third Respondent”) over the use of “Jazz Corner marks” under s 120(1) of the Trade Marks Act 1995 (Cth)(“TMA”) in relation to live music and booking services associated with live music performances and against Mr. Dadon (“Fourth Respondent”) as a joint tortfeasor for procuring and abetting the infringing conduct.

Federal Court of Australia 

Judges: O’Bryan J

Date of Judgment: 9 April 2021

JCHPL is authorised to use Ubertas Group’s registered trade marks under license. Collectively, the registered trade marks of the respondents are known as “Registered Jazz Corner marks”.

Use “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

Full Court of the Federal Court in Coca-Cola Company v All-Fect Distributors Ltd [1999] 96 FCR 107 (Coca-Cola) at [19] 

Swancom Registered Trade Marks

• THE CORNER (20 Jan 2015) – Trade Mark No. 1669900 in class 41 for Organising, conducting, providing and providing information in relation to entertainment, recreation, sporting and cultural activities, including live music performances; amusement services; entertainment services; providing facilities for entertainment, recreation, sporting and cultural activities, including live music performances; ticket booking and reservation services for entertainment, recreation, sporting and cultural activities; publication services relating to these services; provision of all such services over a global computer network and class 43 for Provision of food and drink; cocktail lounge, bar, cafe, snack bar and restaurant services; catering services; hospitality services.
• CORNER PRESENTS (16 May 2014) – Trade Mark No. 1623364 in class 41 for Music and entertainment booking services, including providing information about music and entertainment booking services.
• CORNER (10 Aug 2011) – Trade Mark No. 1442211 in class 41 for Organising, conducting, providing and providing information in relation to entertainment, recreation, sporting and cultural activities, including live music performances; amusement services; entertainment services; providing facilities for entertainment, recreation, sporting and cultural activities, including live music performances; ticket booking and reservation services for entertainment, recreation, sporting and cultural activities; publication services relating to these services; provision of all such services over a global computer network and class 43 for Provision of food and drink; cocktail lounge, bar, cafe, snack bar and restaurant services; catering services; hospitality services.
• CORNER HOTEL (11 Oct 2010) – Trade Mark No. 1388154 in class 41 for Organising, conducting, providing and providing information in relation to entertainment and cultural activities, being live music performances; providing facilities for live music performances; ticket booking and reservation services for entertainment and cultural activities being live music performances; publication services relating to these services; provision of all such services over a global computer network and class 43 for Provision of food and drink; cocktail lounge, bar, cafe, snack bar and restaurant services; catering services; hospitality services.

Ubertas Operations Pty Ltd (“UOPL”) Registered Trade Marks

• JAZZ CORNER (19 Apr 2017) – Trade Mark No. 1839135 in class 43 for Accommodation bureaux (hotels, boarding houses); Rental of temporary accommodation; Hotels; Hotel reservations; Snack-bars; Bar services; Cafe services; Catering services; Club services for the provision of food and drink; Cocktail lounge services; Night club services (provision of food and drink); Preparation of food and drink; Providing food and drink; Restaurant services
• (14 Feb 2017) – Trade Mark No. 1825739 in class 43 for Accommodation bureaux (hotels, boarding houses); Rental of temporary accommodation; Hotels; Hotel reservations; Snack-bars; Bar services; Cafe services; Catering services; Club services for the provision of food and drink; Cocktail lounge services; Night club services (provision of food and drink); Preparation of food and drink; Providing food and drink; Restaurant services.

Saint Thomas Pty Ltd as trustee for the BT Cafe Trust (“STPL”) Registered Trade Marks

• (09 Feb 2018) – Trade Mark No. 1906026 in class 43 for Snack-bars; Cafe services; Providing food and drink; Restaurant services
• JAZZ CORNER (08 Dec 2017) – Trade Mark No. 1893220 in class 43 for Snack-bars; Cafe services; Providing food and drink; Restaurant services

The specific allegations were for the use of THE JAZZ CORNER OF MELBOURNE, JAZZ CORNER OF MELBOURNE (“Jazz Corner of Melbourne marks”), THE JAZZ CORNER OF THE WORLD and JAZZ CORNER OF THE WORLD (“Jazz Corner of the World marks”), THE JAZZ CORNER HOTEL, JAZZ CORNER HOTEL and JAZZCORNERHOTEL (“Jazz Corner Hotel marks”) and THE JAZZ CORNER CAFÉ, JAZZ CORNER CAFÉ, JAZZCORNER CAFÉ (“Jazz Corner Café marks”), collectively known as the “Jazz Corner Marks”.

Swancom sought a number of remedies including account of profits. In addition, Swancom applied to cancel or amend the Registered Jazz Corner marks under s 88(2)(a) of the TMA on the basis that they are deceptively similar to one or more Swancom’s earlier marks.

In defence, the respondents denied using the Jazz Corner marks in relation to the services that Swancom marks are registered for. The respondents contend that Jazz Corner marks are not deceptively similar to Swancom marks and did not use Jazz Corner of Melbourne marks and Jazz Corner of the World marks as trade marks and hence cannot be liable for infringement. Mr. Dadon, the fourth respondent denied procuring and abetting any infringing conduct.

Validity of Swancom marks

The Corner Hotel has a strong reputation known as “Corner Hotel in Richmond”, being a venue for hosting professional live musical performances for musical groups including The Necks, Marceo Parker, Trombone Shorty and Virgil Donati. It has a reputation for having a box office to sell tickets for patrons to watch musical performances, including providing the necessary sound equipment and personnel, safety and security personnel, bar and cleaning staff. Patrons stand and watch these musical performances while consuming alcoholic drinks.

“CORNER” in connection with hotels, bars and cafés

Based on evidence tendered, the word “CORNER” is used commonly as a descriptive term for hotels providing live screening of sporting events and entertainment such as live music. Such live music can either be ancillary entertainment where patrons need not pay for the musical performances or as a main ticketing event where patrons book and pay for a ticket to enter. “CORNER” is also being used for bars and cafes that also provide entertainment. Mr. Dadon deposed that he did not have intention to appropriate the reputation of the Applicant’s mark CORNER HOTEL with his decision to use THE JAZZ CORNER HOTEL as it was used in relation to class 43, for accommodation services which he believed were different to the services in class 41 by the Applicant.

The primary judge first considered the ordinary signification of the CORNER HOTEL marks, CORNER, THE CORNER and CORNER PRESENTS used in the classes of goods & services claimed.

CORNER HOTEL has a primary description of hotel located on a street corner. It’s secondary, colloquial connotation that a hotel is “round the corner” or within proximity and is not inherently distinctive for ordinary hotel services. However, for class 41 in relation to live music, ticket booking and relative services, his Honour held that CORNER HOTEL has some ordinary signification – a hotel located at a street corner and is venue to patrons who wish for some live music and alcoholic drinks in company. But on balance, his Honour took the view that CORNER HOTEL is capable of distinguishing live music services in respect of which the mark is registered at the filing date based on evidence of use of the mark before the filing date and specialised nature of live services. The evidence showed that the use of the mark has been continuous and constant use in relation to live music since 1995. The services registered are proper in class 41 since the live musical performances are sold via tickets and reflected the range of services required before, during and after the performances at the venue.

His Honour took the view that CORNER and THE CORNER marks are “skillful and covert allusion” characterising live music services and at filing dates of the respective marks, both CORNER and THE CORNER were capable of distinguishing the services in class 41 in relation to live music services and its associated services but there has been no evidence of use for provision of amusement and entertainment services and providing facilities for entertainment, recreation, sporting and cultural activities. It was held that CORNER and THE CORNER are not in any way inherently adapted to distinguish such services. That being said, the question of whether the services of provision of amusement and entertainment services and providing facilities for entertainment, recreation, sporting and cultural activities should be amended in the register to preserve the freedom of hotels and other providers of hospitality services to use CORNER in their trading name remains open.

In regards to CORNER PRESENTS, evidence disclosed that CORNER PRESENTS was being used to promote musical performances at the Corner Hotel or related venues operated by Swancom. It was held that CORNER PRESENTS is capable of distinguishing the services in respect of which the mark is registered. His Honour took the view the CORNER PRESENTS has no ordinary signification in regards to the services for which the mark is being registered.

Use of Swancom marks likely to deceive or cause confusion?

It will be sufficient if the ordinary person would entertain a reasonable doubt whether the two products come from the same source. (Kitto J in Southern Cross Refrigerating at 595). JCHPL advanced arguments that Swancom marks are descriptive and consumers are likely to be deceived or confused if other traders use the same marks in relation to similar services. Based on evidence tendered, his Honour took the view the chances of deception and confusion happening will be remote as Swancom marks have been able to distinguish its services in relation to live musical performances from other traders.

The cross claim by JCHPL was dismissed for CORNER HOTEL and CORNER PRESENTS. As for CORNER and THE CORNER, the parties will be afforded an opportunity to make submissions to cancel/amend/limit the services in class 41.

Did the respondents use the Jazz Corner marks as trade marks in relation to the services for which Swancom marks are registered i.e. live music and booking services?

His Honour found JCHPL used the Jazz Corner marks as a trade mark (umbrella mark or primary mark) in relation to live music services provided at Bird’s Basement and Jazz Corner Hotel marks for accommodation. BBPL cross promoted The Jazz Corner Hotel as providing accommodation as bundle for patrons who wish to watch the live music performances and needing accommodation. BBPL’s use of Bird’s Basement was clearly use as a trade mark in relation to live music services. It was also found that Jazz Corner of Melbourne mark was used as a unifying mark albeit as a trade mark for the accommodation, live music and café businesses while Jazz Corner of the World was used mainly in a descriptive manner alluding to association of some kind between Birdland jazz club in New York and Bird’s Basement.

His Honour was not persuaded that JCHPL, BBPL and STPL have engaged in a “concerted and agreed common action being a joint marketing campaign to promote the services offered and provided by each of them” as alleged by Swancom, such that each would be a joint tortfeasor for the wrongs (infringing use of registered trade marks) of the other as each of the three businesses undertook marketing in their own brand and mark (accommodation, live music and café). 

Are the Jazz Corner marks deceptively similar to Swancom marks?

His Honour took Jazz Corner Hotel and Jazz Corner of Melbourne marks into consideration as they have been used as trade marks by JCHPL in relation to live music services. In determining if Jazz Corner Hotel is deceptively similar to CORNER HOTEL, his Honour was satisfied that Jazz is a memorable word, hence a distinctive word even though it’s descriptive of a style of music and the addition of “Jazz” in the respondents’ mark distinguish itself aurally and in meaning from CORNER HOTEL or CORNER in the minds of ordinary member of the public. His Honour reached the conclusion that the risk of an ordinary member of the public being confused whether the live music services promoted by the use of Jazz Corner marks have an association with CORNER HOTEL (or Swancom marks) to be remote. It was thus held that Jazz Corner Hotel and Jazz Corner of Melbourne marks are not deceptively similar to Swancom marks.

With that conclusion, the allegations of infringement fell away and the application for cancellation of the registered Jazz Corner marks was dismissed.

Mr. Dadon’s Evidence

Mr. Dadon’s decision to use CORNER came as a result of the geographic attribute of the business, the venue of the hotel being located at a corner. The other reason being the use of “CORNER” is allusive of a venue providing entertainment and hospitality services, giving a welcoming and engaging feel. The association with Birdland jazz club in New York being referred as “Jazz Corner of the World” was the reason why “Birdland, The Jazz Corner of the World” was a sign visible at the entrance of the club. The phrases “Jazz Corner Hotel” and “Jazz Corner of Melbourne” also alluded to that association with the emphasis of that particular location in Melbourne being the epicentre for Jazz performances locally.

His Honour accepted the evidence by Mr. Dadon and was persuaded that Mr. Dadon’s conduct did not make him liable as joint tortfeasor even if it was concluded that Jazz Corner marks have indeed infringed Swancom marks.

Conclusion

The primary judge dismissed Swancom’s application, including application for cancellation of the Registered Jazz Corner marks. The cross-claimed for the cancellations of marks for CORNER HOTEL and CORNER PRESENTS marks in respect to services in class 41 were dismissed and as for CORNER and THE CORNER marks, the parties were invited to make further submissions in respect to class 41 before a decision to cancel/amend/limit the marks can be entered to preserve the freedom of hotels, cafes, bars, and restaurants, who may provide ancillary entertainment services to use the word “corner” in their trading name.

Disclaimer: The above is provided to assist in the understanding of the decision by the Federal Court of Australia. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.