A Building's Name Is Not a Brand: GORDON HOUSE Trade Mark Removed

A Building's Name Is Not a Brand: GORDON HOUSE Trade Mark Removed

Naming a building is not the same as trading in goods or services under a trade mark. It's an intuitive distinction once stated, but one that the Owners Corporation of the Gordon House building in Melbourne discovered the hard way when their registered composite trade mark was removed for non-use. The case raises important questions about what motivates trade mark registration and why the wrong motivation leads to the wrong result.

Background: A Melbourne Landmark and Its Mark

Gordon House is a distinctive Melbourne building — the kind of address that has character and a name worth protecting. The Owners Corporation PS318104R registered a composite trade mark incorporating an architectural illustration of the building alongside the words GORDON HOUSE in Classes 19 (building materials) and 37 (construction services).

The mark appeared on the building's facade and in various forms of correspondence. To an outside observer, there was at least some public presence. But James Xenidis filed a removal application, and when the delegate looked closely at why and how the mark was being used, the registration couldn't survive.

The Purpose Problem

Trade marks exist to distinguish the commercial goods or services of one trader from those of another. They are badges of commercial origin. The question in every non-use proceeding is whether the mark has been used in that commercial sense — to identify and distinguish goods or services offered in trade.

The Owners Corporation's own evidence answered this question in a way that was ultimately self-defeating. The declaration of Mr Brown stated that the mark was used "for the control of use of the name and trade mark both for the building and its common areas." That purpose — controlling who uses the building's name, protecting the identity of the building as a whole — is a legitimate goal. But it is not a trade mark purpose.

Delegate Debrett Lyons found that the Owners Corporation was using the mark for three purposes, none of which constituted commercial trade in goods or services: (a) for the benefit of its own members; (b) to assert control over the naming and identity of the building; and (c) to prevent businesses operating from the premises from using the name without permission. These are purposes of naming rights and property management — not trade mark use.

Additional Problems: No Intention, and the Word Mark Isn't the Same as the Composite

Even if some use could be found, the delegate identified a further difficulty. The registered mark was a composite — a device incorporating an architectural illustration of the building with the words GORDON HOUSE. The Owners Corporation sometimes used only the words GORDON HOUSE, without the architectural illustration.

The delegate found that the word mark GORDON HOUSE was not substantially identical to the composite mark. The architectural illustration was too prominent and distinctive an element for the words alone to constitute use of the composite mark as registered. You cannot use part of your mark and claim it satisfies the use requirement for the whole.

The delegate also found no evidence of any genuine intention to use the mark as a trade mark at the filing date in August 2021. The discretion to maintain the registration was not exercised. Costs were awarded against the Owners Corporation.

Practical Takeaways

• Trade marks must be used commercially, not just displayed. A mark on a building facade or in correspondence is not automatically trade mark use. The use must connect the mark to goods or services offered in commerce to the public.

• Naming rights and trade mark rights are different things. Owners corporations, trusts, clubs, and other bodies that want to protect the name of a place or venue should think carefully about whether a trade mark registration is the right vehicle — or whether other mechanisms (contract, property law, passing off) better suit their purpose.

• Protect both your word mark and your composite mark. If you have a device or composite mark, register the word element separately as well. Using the words without the device may not constitute use of the composite mark.

• Intention to use must be genuine and commercially directed. Filing a trade mark to protect a name for the benefit of members, or to control property use, is not the same as filing with intention to use the mark to distinguish goods or services in trade.

Citation: Opposition by Owners Corporation PS318104R v James Xenidis [2026] ATMO 136 (20 July 2026)

Facing a trade mark issue? Contact Stellar Law for expert advice.