Deceptively similar? The Corner Hotel v The Jazz Corner Hotel

In the recent Federal Court decision of Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No. 2) [2021] FCA 328 (9 April 2021) Justice O'Bryan decided against the claim of ‘The Corner Hotel’ (Applicant) and the counter-claim of ‘The Jazz Corner’ (Respondent) in determining that the word ‘Corner’ in a trade mark has a widespread meaning used since the early days of European settlement for hotels, cafes and bars located on a corner.¹

This matter involved the Applicant, a Richmond live music venue with a long standing award-winning reputation (which hosted famous guests such as Mick Jagger, Crowded House and Powderfinger amongst others) in a dispute with the Respondent, a provider of accommodation services which offers live music to guests. The Applicant sought to cancel or amend the registered Respondent’s marks for being deceptively similar under section 88(2)(a) Trade Marks Act 1995 (Cth) (TMA), of which they claimed were infringing on their rights.²  The Respondent brought a cross-claim seeking amendment of the Applicant's registered marks on two grounds. Firstly, that the marks were not capable of distinguishing the Applicant's services, and secondly, that the Applicant's marks were likely to deceive or cause confusion.³  The Court noted that in Australia, hotels or, more colloquially, pubs are often located on corners and the Applicant's and Respondent's claims must be dismissed.⁴

Deceptively Similar?

Deceptively similar is defined under section 10 of the TMA as a mark that “so nearly resembles that other trade mark that it is likely to deceive or cause confusion”.⁵ The concepts of section 10 are well established by case law, and a wide scope can be applied by looking at factors such as; reputation of the mark and/or the use of the mark, however, the most relevant principles were applied by the Court in this case. It was held six tests must be addressed.

The Tests

Firstly, to assess the likelihood of deception or confusion the particular goods and services and likely buyers of the goods and services must be considered.

Secondly, that the assessment should not be a side-by-side comparison of the marks.⁶  The reason for this is that the likely buyers wouldn’t have a chance to consider the respective marks side-by-side and would likely have an imperfect recollection.

Thirdly, the likelihood of deception and confusion is to be judged by the similarity and also the effect of the similarity in the circumstances.⁷ 

Fourthly, being perplexed, feeling doubt and having cause to wonder is considered confusion.⁸

The fifth test is the existence of a real risk and sixth is that there is no requirement for an intention to deceive or confuse in order to make the assessment.⁹

Considerations

The Court concluded that there were obvious similarities between the marks. Undoubtedly, they both have two words in common, being ‘Corner’ and ‘Hotel’. Therefore, in applying the third test, the Court considered the effect of the similarity. The Court noted that consumers would give attention to the more striking and memorable words of the marks, being ‘Jazz’ of which describes a style of music. The words ‘corner’ and ‘hotel’ are ordinary descriptive words which has a clear primary meaning to consumers of the hotel, being a hotel located on the corner of the street.

The Respondent relied upon Federal Court cases where the Court held that the marks “Healthplus” and “Inner Health Plus” were not deceptively similar, as with “Australia Post” and “Digital Post Australia”.¹⁰

The Court concluded that the chance of an ordinary member of the public confusing the 'Jazz Corner' and the 'Corner Hotel' was remote and unlikely and the marks would cause confusion or deceive.¹¹

Lavan comment

Trade mark registration in Western Australia is completed pursuant to the TMA and the Trade Marks Regulations 1995 (Cth). There are many steps that need to be considered and subsequent steps to be taken before applying for your or your company’s trade mark. Below a few of the steps are noted, although the list is not exhaustive:

1. Complete a conflict check on the Intellectual Property Australia website for trade marks which may be similar in appearance or effect. This includes words and logos;
2. The applicant is to satisfy the requirements of s 27 TMA; and
3. The applicant must select the types of goods and services of which the product is to be classified under; amongst other things.

Lavan can assist you with trade mark applications and assessing if your trade mark may be considered deceptively similar to another mark on the register. By taking time to consider your trademark and its registration, you may be able to avoid issues and expensive litigation.

If you require assistance in preparing trade mark applications or wish to check to see whether your current registrations are enforceable, do not hesitate to contact Iain Freeman or Andrew Sutton.