Intellectual Property Update - Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 3) [2021] FCA 729 (30 June 2021)

Intellectual Property Trade Practices
Tom Cordiner Headshot
C Cunliffe 2
Marcus Fleming Headshot 1

Trade Marks – Corner – condition or limitation imposed on registration

This decision (“Swancom 3”) follows an earlier decision of O’Bryan J ([2021] FCA 328) (“Swancom 2”) concerning claims brought by the Applicant, Swancom Pty Ltd (“Swancom”), concerning allegations of infringement of various trade marks incorporating the word “Corner”, including “CORNER HOTEL”, “CORNER”, “CORNER PRESENTS” and “THE CORNER” (the “Applicant’s Marks”).

In Swancom 2, O’Bryan J held (at [163]-[164]) in respect of two of the Applicant’s Marks – “CORNER” and “THE CORNER” – that those marks are not inherently adapted to distinguish certain services relating to the provision of amusement and entertainment services in class 41. His Honour determined that a question arose whether the registration of those marks ought to be amended, or a condition or limitation imposed upon registration, in respect of those services (Swancom 2, at [166]).

The decision in Swancom 3 concerned the resolution of that question (in addition to the question of costs of the trial).

The cross-claimant, The Jazz Corner Hotel Pty Ltd (“JCHPL”), submitted that the “CORNER” and “THE CORNER” marks ought to have a limitation imposed on them in the following form:

Registration of this mark shall give no right to prohibit hotels, cafes, bars and restaurants that may provide ancillary entertainment services (such as free live music or sporting events shown on large screens) from using the word CORNER in their trading name.

Swancom did not oppose the Court making an order to amend the registration of the “CORNER” and “THE CORNER” marks, but submitted the appropriate course was to narrow the services in class 41, to make the specification identical with the class 41 services of the “CORNER HOTEL” mark (which did not need to be narrowed).

Justice O’Bryan preferred Swancom’s approach (Swancom 3, at [11]-[12]), agreeing with Swancom that its order was appropriate in circumstances where the Court had considered those services and found them to be properly registrable for “CORNER HOTEL” and it would avoid the potential issues of construction that might arise if the limitation were imposed.

On the question of costs, O’Bryan J ordered that Swancom pay the respondents’ costs of the application, and that JCHPL pay Swancom’s costs of the cross-claim, observing that the respondents had successfully defended the application and accepting Swancom’s submission that it should be regarded as, overall, the successful party to the cross-claim.

The decision in Swancom 2 has been appealed to the Full Court of the Federal Court and the costs decision is also being appealed.

Tom Cordiner Headshot

Tom Cordiner KC holds the dual qualification of barrister and registered patents and trade mark attorney

C Cunliffe 2

Clare Cunliffe practises in intellectual property and general commercial litigation

Marcus Fleming Headshot 1

Marcus Fleming has a significant practice in commercial litigation with a particular focus on intellectual property law.

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