Significant investment is made by developers when building businesses. Trade mark registration is necessary to protect that investment. Building developers can and should register the name of their building for any services which could be provided from the building. This includes leasing of property, hotel management services, cleaning services, cafe services, restaurant services, accommodation services and resort services, for example.
If you use a registered trade mark without permission, then you will infringe the registration and its owner can claim an account of all your profits.
The history of recent case law involving buildings and trade marks is as follows:
The Chifley Tower Case - MID Sydney Pty Ltd v The Australian Tourism Co Ltd & Ors [1998] FCA 185 (11 March 1998)
MID called a building in Sydney "CHIFLEY TOWER" and its retail precinct "CHIFLEY PLAZA". MID registered the trade mark CHIFLEY TOWER for leasing, building and property management services.
Australian Tourism wanted to rename its hotels CHIFLEY.
The question was whether use of CHIFLEY by Australian Tourism would constitute infringement, passing off and misleading or deceptive conduct.
The judge held that "CHIFLEY TOWER" referred to a building at the Chifley Square location in Sydney and the word “Chifley” had a geographical connotation referring to the square upon which the building was erected.
The judge held that MID's rights related to property management, while Australian Tourism provided hotel services, such that there was no infringement.
The fact that the building at Chifley Square was well known did not entitle MID to restrain Australian Tourism from using the name “Chifley” from operating a hotel.
The Q1 case - Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 (19 July 2012)
In Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 the Federal Court held that "Q1" is a trade mark even though it is technically a geographic location.
Mantra applied to register the trade mark 'Q1' in classes 36, 39 and 43.
The trade mark was opposed by Spagnuolo who owned apartments in the building and operated a short term holiday accommodation business under the name 'Q1 Holidays Gold Coast' and domain name q1holidaysgoldcoast.com.au.
The Registrar's delegate originally rejected the mark on the basis that it was a geographical location, rather than a badge of origin. She thought that other traders may want to use the name "Q1" to promote their rental accommodation in the Q1 building. The delegate considered that the sign was the only name of a building and, as such, had become "part of the common heritage". Due to the geographical connotation in the mark, consumers would be likely deceived or confused by the use of the mark for Mantra's services.
On appeal, the Federal Court rejected the delegate's conclusion, and found that the mark was inherently adapted to distinguish Mantra's services.
Justice Reeves referred to the principle in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (Clark Equipment). In Clark Equipment, the court commented that a sign is not inherently adapted to distinguish the goods or services of a particular trader where it "includes words or names over which there is a common or public right of use in that they form part of the "common heritage", either in the English language..., or in a geographical name such as that of a town, suburb, district, municipality, region or state."
Justice Reeves also referred to MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 (MID Sydney), wherein the court determined that "Chifley Tower" could distinguish the services of a trader, as it was not part of the "common heritage" in the same sense as a town, suburb or municipality. However, the court suggested that there was an exception where a plaza or other public space adjoining a building has become part of the common heritage.
Justice Reeves held that a sign does not lose its inherent adaptability to distinguish services merely by being applied as the name of a privately owned building at the same time as the mark is applied to distinguish certain services provided from, or in relation to, that building.
Like the Chifley Tower, his Honour found that the name "Q1" did not have any obvious meaning and did not incorporate a geographical name, such as "Surfers Paradise" or the "Gold Coast" into it.
The CARMEN Q1 cases
Mantra successfully opposed registration of trade mark applications for CARMEN Q1 3504 and CARMEN Q1 603 for real estate management and leasing and accommodation services. The numbers 603 and 3504 were the apartment numbers of the Applicant.
The Hearing Officer said that the Applicant did not “particularly stress the descriptive function” of her trade marks in order to avail herself of the statutory defence to infringement. For example, the Applicant's marks were not in the form “CARMEN’S APARTMENT 603 AT THE Q1”.
The "Circle on Cavill" case - Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291(26 March 2010)
Mantra sued a letting agent company called "Tailly Pty Ltd" for making unauthorized use of its registered trade mark "Circle on Cavill" in domain names, meta-tags and on websites.
The Court found that Tailly had not just used CAVILL ON CIRCLE in a descriptive way to identify location, but its use in a banner-style heading and in standalone format. This was determined to be trade mark use for accommodation services. This constituted to infringement of the registrations for management services, property management, realty administration and leasing services and provision of temporary accommodation.
The "Harbour Lights" case - Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554 (5 June 2015)
Accor had registrations for CAIRNS HARBOUR LIGHTS and HARBOUR LIGHTS for real estate, accommodation and hotel services provided in association with its hotel services and apartment rental at the Harbour Lights building.
Accor claimed that Liv infringed its registrations because its use was trade mark use in relation to her letting business for apartments she owned in the building, rather than use as description of the location of the apartments.
The Judge held that the trade marks HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS were not descriptive, not geographical, and were not part of the common heritage.
He determined that the Respondent’s various uses of HAROUR LIGHTS were not as a description of the location of the apartments. Those uses included use as part of domain name, in Google ads, emails, and advertisements.