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

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

The appeals were dismissed because the primary judge correctly applied established legal principles in assessing deceptive similarity—acquired factual distinctiveness of the registered marks is not to be considered in the s 120(1) infringement context except in limited circumstances, and the relevant use and context of the respondents' marks did not amount to infringement. The costs orders were not shown to involve an error of principle or discretion.

Jurisdiction
Australia
Judgment Date
13 September 2022
Procedural Posture
Appeal / Judgment on Appeal Against Primary Judgment and Costs Orders
Outcome
Both appeals dismissed
Legal Topics
['trade Marks' 'trade Mark Infringement' 'deceptive Similarity' 'costs Orders']
['intellectual Property'] ['trade Marks' 'trade Mark Infringement' 'deceptive Similarity' 'costs Orders']

Case Brief

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Procedural Posture

Appeal / Judgment on Appeal Against Primary Judgment and Costs Orders

Legal Issues

  1. 1 ["Whether the primary judge erred in not taking into account the factual distinctiveness of Swancom's marks at their respective filing dates in determining deceptive similarity" 'Whether the primary judge erred in finding the respondents had not used certain marks as trade marks' 'Whether the primary judge erred in his costs orders']

Ratio Decidendi

The appeals were dismissed because the primary judge correctly applied established legal principles in assessing deceptive similarity—acquired factual distinctiveness of the registered marks is not to be considered in the s 120(1) infringement context except in limited circumstances, and the relevant use and context of the respondents' marks did not amount to infringement. The costs orders were not shown to involve an error of principle or discretion.

Court Disposition

Both appeals dismissed

Orders

  • ['The appeal in VID 228 of 2021 is dismissed.' "The appellant (Swancom) to pay the respondents' costs of the appeal in VID 228 of 2021." 'The appeal in VID 408 of 2021 is dismissed.' "The appellant (The Jazz Corner Hotel Pty Ltd) to pay the respondent's costs of the appeal in VID 408 of 2021."]