Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56

Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56

The Full Court held that the appellants, as authors and first users of the marks 'Harbour Lights' and 'Cairns Harbour Lights', were entitled to registration for all specified Class 36 and 43 services. CHL's use of the marks, including in advertisements and domain names from at least December 2005, was sufficient first use as a badge of origin for all registered services, not just commercial real estate agency services. The additional elements (stars and slogan) did not prevent such use from being use of the marks substantially identical with the registered marks. The trial judge's finding that ownership for all services did not vest in the appellants was reversed. The marks were also held...

Parties
First Appellant: Accor Australia & New Zealand Hospitality Pty Ltd; Second Appellant: Cairns Harbour Lights Pty Ltd; First Respondent: Liv Pty Ltd; Second Respondent: Ivana Patalano; Third Respondent: Elise Wyandra Warring aka Elise Bradnam
Jurisdiction
Australia
Judgment Date
07 April 2017
Procedural Posture
Appellate / Judgment After Hearing Appeal
Outcome
Appeal upheld; cross-appeal dismissed.
Legal Topics
Trade Marks, Ownership by First Use, Capacity to Distinguish, Trade Mark Infringement
Intellectual Property Trade Marks Ownership by First Use Capacity to Distinguish Trade Mark Infringement

Case Brief

Summary, issues, holding and outcome

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Parties

Accor Australia & New Zealand Hospitality Pty Ltd

First Appellant

Cairns Harbour Lights Pty Ltd

Second Appellant

Liv Pty Ltd

First Respondent

Ivana Patalano

Second Respondent

Elise Wyandra Warring aka Elise Bradnam

Third Respondent

Procedural Posture

Appellate / Judgment After Hearing Appeal

Legal Issues

  1. 1 Whether appellants were owner/proprietor by first use of trade marks 'Harbour Lights' and 'Cairns Harbour Lights' for all registered services at the registration date
  2. 2 Whether use of marks by respondents constituted infringement under ss 120(1)/(2) of the Trade Marks Act 1995 (Cth)
  3. 3 Whether 'Harbour Lights' and 'Cairns Harbour Lights' are capable of distinguishing, per s 41 of the Trade Marks Act 1995 (Cth)

Ratio Decidendi

The Full Court held that the appellants, as authors and first users of the marks 'Harbour Lights' and 'Cairns Harbour Lights', were entitled to registration for all specified Class 36 and 43 services. CHL's use of the marks, including in advertisements and domain names from at least December 2005, was sufficient first use as a badge of origin for all registered services, not just commercial real estate agency services. The additional elements (stars and slogan) did not prevent such use from being use of the marks substantially identical with the registered marks. The trial judge's finding that ownership for all services did not vest in the appellants was reversed. The marks were also held...

Court Disposition

Appeal upheld; cross-appeal dismissed.

Orders

  • Order cancelling registration of 'Cairns Harbour Lights' set aside.
  • Orders amending registration of 'Harbour Lights' in relation to Class 36 and 43 services set aside.