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 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.
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.
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.
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:
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.
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Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658. See .
Although these cases provided no particular guidance to the Court in this matter. Health World Ltd v Shin-Sun Australia Pty Ltd  FCA 5; 64 IPR 495, Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2)  FCA 862; 293 ALR 369, upheld on appeal at  FCAFC 153.