Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328

Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328

The Jazz Corner marks are not deceptively similar to the Swancom marks because the addition of the word 'jazz' to the common or descriptive elements 'corner' and 'hotel' creates a distinct impression. There is no real or tangible likelihood of confusion among ordinary members of the public. The Swancom marks are valid in respect of professional live music services, but not for the broad class of entertainment and related services. The respondent companies' use of the Jazz Corner marks does not amount to trade mark use for live music services by all respondents, and there is no joint tortfeasance found. The application and relevant cross-claims are dismissed subject to submissions on...

Parties
Applicant: Swancom Pty Ltd; First Respondent: The Jazz Corner Hotel Pty Ltd; Second Respondent: Bird's Basement Pty Ltd; Third Respondent: Saint Thomas Pty Ltd; Fourth Respondent: Albert Dadon; Fifth Respondent: Ubertas Operations Pty Ltd
Jurisdiction
Australia
Judgment Date
09 April 2021
Procedural Posture
Intellectual Property / Trade Marks / Post Trial Decision (orders and Reasons for Judgment)
Outcome
Application dismissed; Cross-claim partially dismissed; Further submissions invited on limited issues (possible amendment, conditions) and costs
Legal Topics
Trade Marks, Trade Mark Infringement, Trade Mark Validity, Rectification of Register, Deceptive Similarity, Descriptive Marks, Hospitality and Live Music Services
Intellectual Property Trade Marks Trade Mark Infringement Trade Mark Validity Rectification of Register Deceptive Similarity Descriptive Marks Hospitality and Live Music Services

Case Brief

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Parties

Swancom Pty Ltd

Applicant

The Jazz Corner Hotel Pty Ltd

First Respondent

Bird's Basement Pty Ltd

Second Respondent

Saint Thomas Pty Ltd

Third Respondent

Albert Dadon

Fourth Respondent

Ubertas Operations Pty Ltd

Fifth Respondent

Procedural Posture

Intellectual Property / Trade Marks / Post Trial Decision (orders and Reasons for Judgment)

Legal Issues

  1. 1 Whether the Swancom marks are validly registered for live music services under s 41 of the Trade Marks Act 1995 (Cth)
  2. 2 Whether the respondents infringed the Swancom marks under s 120(1) of the Trade Marks Act 1995 (Cth)
  3. 3 Whether the Jazz Corner marks are deceptively similar to the Swancom marks

Ratio Decidendi

The Jazz Corner marks are not deceptively similar to the Swancom marks because the addition of the word 'jazz' to the common or descriptive elements 'corner' and 'hotel' creates a distinct impression. There is no real or tangible likelihood of confusion among ordinary members of the public. The Swancom marks are valid in respect of professional live music services, but not for the broad class of entertainment and related services. The respondent companies' use of the Jazz Corner marks does not amount to trade mark use for live music services by all respondents, and there is no joint tortfeasance found. The application and relevant cross-claims are dismissed subject to submissions on...

Court Disposition

Application dismissed; Cross-claim partially dismissed; Further submissions invited on limited issues (possible amendment, conditions) and costs

Orders

  • The Applicant's application be dismissed.
  • The First Respondent's cross-claim is dismissed in respect of registered trade marks CORNER HOTEL (1388154) and CORNER PRESENTS (1623364).