Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 3) [2021] FCA 729

Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 3) [2021] FCA 729

The appropriate rectification was to narrow the class 41 services for registered trade mark numbers 1442211 and 1669900 rather than add JCHPL's proposed limitation, because Swancom's formulation matched services the Court had found properly registrable and avoided potential construction issues. On costs, the respondents were successful on the application and Swancom was overall successful on the cross-claim; because the Court lacked sufficient material to fairly offset competing entitlements and because only JCHPL was liable on the cross-claim while all respondents were entitled on the application, separate lump sum costs orders were appropriate.

Jurisdiction
Australia
Judgment Date
30 June 2021
Procedural Posture
Trade Marks Proceeding Involving Infringement Application and Cross Claim for Rectification of the Register / Determined on the Papers on Outstanding Issues Concerning Rectification of the Register and Costs After Principal Judgment
Outcome
The class 41 services for trade mark numbers 1442211 and 1669900 were ordered to be amended; the first respondent's cross-claim was otherwise dismissed; separate lump sum costs orders were made for the application and cross-claim, with no order for costs on the outstanding issues.
Legal Topics
['rectification of the Register' 'amendment of Class 41 Services' 'trade Mark Capability of Distinguishing' 'costs Discretion' 'lump Sum Costs Orders' 'consolidated Costs Orders']
['intellectual Property' 'trade Marks' 'costs'] ['rectification of the Register' 'amendment of Class 41 Services' 'trade Mark Capability of Distinguishing' 'costs Discretion' 'lump Sum Costs Orders' 'consolidated Costs Orders']

Case Brief

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Procedural Posture

Trade Marks Proceeding Involving Infringement Application and Cross Claim for Rectification of the Register / Determined on the Papers on Outstanding Issues Concerning Rectification of the Register and Costs After Principal Judgment

Legal Issues

  1. 1 ['Whether the registration of trade mark numbers 1442211 for "CORNER" and 1669900 for "THE CORNER" in respect of class 41 services should be amended, or a condition or limitation entered on the registration, to preserve freedom of hotels, cafés, bars and restaurants to use the word "corner" in their trading name when providing ancillary entertainment services.' 'Whether a consolidated costs order should be made offsetting competing costs entitlements, or separate costs orders should be made.' 'Whether costs should be awarded in lump sums pursuant to r 40.02(b) of the Federal Court Rules 2011 (Cth).']

Ratio Decidendi

The appropriate rectification was to narrow the class 41 services for registered trade mark numbers 1442211 and 1669900 rather than add JCHPL's proposed limitation, because Swancom's formulation matched services the Court had found properly registrable and avoided potential construction issues. On costs, the respondents were successful on the application and Swancom was overall successful on the cross-claim; because the Court lacked sufficient material to fairly offset competing entitlements and because only JCHPL was liable on the cross-claim while all respondents were entitled on the application, separate lump sum costs orders were appropriate.

Court Disposition

The class 41 services for trade mark numbers 1442211 and 1669900 were ordered to be amended; the first respondent's cross-claim was otherwise dismissed; separate lump sum costs orders were made for the application and cross-claim, with no order for costs on the outstanding issues.

Orders

  • ['Pursuant to ss 88(1)(b) and 90 of the Trade Marks Act 1995 (Cth), the Registrar of Trade Marks is directed to amend the class 41 services specified in respect of registered trade mark number 1442211 (for "CORNER") and registered trade mark number 1669900 (for "THE CORNER") as marked up in the order.' "The first...