Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd (No 2) [2017] FCA 1250

Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd (No 2) [2017] FCA 1250

The term 'centrefold' was not capable of distinguishing Entertainment's services from those offered by others, including the Metro parties. The statutory registration was cancelled under s 88 of the Trade Marks Act 1995 (Cth). Claims of passing off and contraventions under s 18 ACL were dismissed. No unreasonable conduct was shown in rejecting settlement offers; therefore, costs were ordered on the standard party/party basis, not indemnity.

Parties
First Applicant / First Cross Respondent: Metro Business Centre Pty Limited; Second Applicant / Second Cross Respondent: Sexy Entertainment Pty Limited; Third Cross Respondent: CG Trading Pty Limited; First Respondent / Cross Claimant: Centrefold Entertainment Pty Limited; Second Respondent: Matthew Prendergast
Jurisdiction
Australia
Judgment Date
08 August 2017
Procedural Posture
Intellectual Property (trade Marks) Dispute / Post Trial Judgment Addressing Costs and Final Orders
Outcome
Statutory trade mark registration cancelled; remaining claims dismissed; costs awarded.
Legal Topics
Trade Marks, Passing Off, Australian Consumer Law S 18, Costs
Intellectual Property Competition Law Trade Marks Passing Off Australian Consumer Law S 18 Costs

Case Brief

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Parties

Metro Business Centre Pty Limited

First Applicant / First Cross Respondent

Sexy Entertainment Pty Limited

Second Applicant / Second Cross Respondent

CG Trading Pty Limited

Third Cross Respondent

Centrefold Entertainment Pty Limited

First Respondent / Cross Claimant

Matthew Prendergast

Second Respondent

Procedural Posture

Intellectual Property (trade Marks) Dispute / Post Trial Judgment Addressing Costs and Final Orders

Legal Issues

  1. 1 Validity of registration of the CENTREFOLD trade mark
  2. 2 Entitlement to common law and statutory trade mark in 'centrefold'
  3. 3 Passing off

Ratio Decidendi

The term 'centrefold' was not capable of distinguishing Entertainment's services from those offered by others, including the Metro parties. The statutory registration was cancelled under s 88 of the Trade Marks Act 1995 (Cth). Claims of passing off and contraventions under s 18 ACL were dismissed. No unreasonable conduct was shown in rejecting settlement offers; therefore, costs were ordered on the standard party/party basis, not indemnity.

Court Disposition

Statutory trade mark registration cancelled; remaining claims dismissed; costs awarded.

Orders

  • Register of Trade Marks to be rectified by cancelling registration number 1695466 for the trade mark CENTREFOLD in respect of all goods and services.
  • Amended originating application and amended statement of claim otherwise dismissed.