FEDERAL COURT OF AUSTRALIA

Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd

[2017] FCAFC 56

ORDERS

THE COURT ORDERS THAT:

1.    Having regard to the reasons for judgment published today and, in particular, [361] of those reasons (without limitation), the appellants are directed to submit a final form of orders for consideration of the Court, within 21 days.

2.    The parties are directed to file written submissions as to the disposition of costs, within 21 days, limited to five pages.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

Introduction; some preliminary background facts as found; and the framing of the proceedings before the primary judge

Trade Marks

1    The second appellant, Cairns Harbour Lights Pty Ltd (“CHL”), obtained registration, from 21 January 2009, of the trade mark “Harbour Lights” pursuant to the Trade Marks Act 1995 (Cth) (the “Act”) and the Trade Mark Regulations 1995 (Cth) (the “Regulations”) in respect of services falling within Class 36 and Class 43 of the Classification of Services in Sch 1 to the Regulations: Trade Mark 1281759. The application was filed on 21 January 2009; accepted on 30 March 2009; and entered on the Register on 31 August 2009 from 21 January 2009.

2    The Classification of Services by s 19 of the Act and Reg 3.1 of the Regulations provides for the division of services into the classes described in Column 2 of Pt 2 of Sch 1. Class 36 services are described as: “Insurance; financial affairs; monetary affairs; real estate affairs”. Class 43 services are described as: “Services for providing food and drink; temporary accommodation”. This classification of services represents a “class heading corresponding to the description of that class”: Reg 3.1(2).

3    The description of the Class 36 services, falling within that heading, recited in the registration of the trade mark “Harbour Lights”, is in these terms:

(a)    Agency services for the leasing of real estate property;

(b)    Apartment letting agency;

(c)    Apartment rental services;

(d)    Rental of accommodation;

(e)    Rental of apartments;

(f)    Commercial real estate agency services.

4    The description of the Class 43 services, falling within that heading, recited in the registration of the trade mark “Harbour Lights” is in these terms:

(a)    Accommodation letting agency services (holiday apartments);

(b)    Accommodation letting agency services (hotel);

(c)    Accommodation reservation services;

(d)    Booking services for accommodation;

(e)    Hotel accommodation services;

(f)    Hotel services.

5    CHL obtained registration of the trade mark “Cairns Harbour Lights” from 21 April 2009 in respect of services within Class 36 and Class 43 in Sch 1 to the Regulations: Trade Mark 1295197. The description of the Class 36 and Class 43 services for the trade mark “Cairns Harbour Lights”, although recited in a different order in the Certificate of Registration, is the same description set out in respect to the relevant class, at [3] and [4] of these reasons. The application was filed on 21 April 2009; accepted on 30 June 2009; and entered on the Register on 30 November 2009 from 21 April 2009. All references to provisions of the Act in these reasons are references to provisions as they stood as at January and April 2009.

CHL and the property complex

6    CHL is a property developer. It developed a property consisting of three towers of residential apartments and a retail section at 1 Marlin Parade in Cairns in Far North Queensland. The complex is known as “Harbour Lights” or “Cairns Harbour Lights”: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554, primary judge (PJ) at [5]. Construction of the complex commenced in September 2004 and was completed in July 2007: PJ at [5]. The residential part of the complex consists of two community titles schemes. They are these:

(a)    Harbour Lights Community Titles Scheme 36769 (which the primary judge described as the “Residential Scheme”); and

(b)    Harbour Lights (Managed Apartments) Community Titles Scheme 36770 (which the primary judge described as the “Managed Scheme”).

7    The Community Titles Schemes are concerned with “lots”. Those lots correspond, for all practical purposes, to apartments. The apartments in the Residential Scheme are larger than those in the Managed Scheme. The Residential Scheme apartments are designed for owner-occupiers and longer-term tenants: PJ at [7]. However, the owners of some of the apartments in the Residential Scheme also let their apartments on a short-term basis. The apartments in the Managed Scheme are smaller, lack full kitchen facilities “and are like hotel rooms”: PJ at [7]. Those apartments are designed to attract tourists and business travellers seeking short-term accommodation: PJ at [7]. CHL, at the date of trial, had sold approximately 112 of the 191 lots and retained ownership of the remainder: PJ at [7].

CHL and Mirvac

8    On 21 December 2004, CHL caused the body corporate for each of the Residential Scheme and the Managed Scheme to enter into agreements with Mirvac Hotels Pty Ltd (“Mirvac”). By those agreements, Mirvac was granted the exclusive right to provide “on-site letting services and caretaking services for the schemes”: PJ at [10]. As to those agreements, on 21 December 2004, CHL, as developer of the “Complex” made up of the two Community Titles Schemes entered into a Development Agreement and Sale of Management Rights Agreement with Mirvac by which it appointed Mirvac “to manage the Schemes (including to provide the Services), on completion of the construction of the Complex”.

9    On 28 September 2010, CHL and Mirvac entered into a “Trade Marks Licence”, in writing, by which Mirvac was granted by cl 2.2 a licence to use the trade marks “Harbour Lights” and “Cairns Harbour Lights” in the provision of “Services” defined to mean “the real estate, property management, letting and other services which [Mirvac] is authorised to provide under the Service Agreements” for the term of the licence. The Service Agreements are defined to mean: “Authorisation of Letting Agent” dated 14 June 2007 between the body corporate for the Managed Scheme and Mirvac for a term of 25 years from 21 May 2007; “Authorisation of Letting Agent” (undated) between the body corporate for the Residential Scheme and Mirvac for the same period; and “Caretaker’s Agreement” dated 14 June 2007 between the body corporate for the Managed Scheme and Mirvac for the same period.

10    Apart from the cl 2.2 grant of the licence, the Trade Mark Licence by cl 2.1, contains an acknowledgement (as between CHL and Mirvac at least) that Mirvac has used the two trade marks for the “Services” (as defined) from the “Commencement Date” (defined to mean 21 December 2004) with CHL’s consent. Those parties also acknowledge that Mirvac has “continuously and extensively” used the trade marks for the “Services” since the commencement of the Service Agreements (14 June 2007). Those parties also acknowledge that CHL has not, either before or after 21 December 2004, given any other party a licence to use the trade marks for the Services or any part of those Services.

Accor

11    In 2012, there was a change in Mirvac’s shareholding and Mirvac’s name was changed to Accor Australia & New Zealand Hospitality Pty Ltd (“Accor”), the first appellant in these proceedings.

12    Accor acts as “letting agent” for a number of owners of lots (apartments) in the Residential Scheme and the Managed Scheme: PJ at [12]. Accor manages a “pool of apartments” which are let to members of the public as “short-term holiday or holiday accommodation”: PJ at [12]. It operates its “letting business” as a “4½ star hotel”: PJ at [12]. Apartment owners who wish to let their apartments are free to choose Accor or another letting agent or to arrange the letting themselves. However, only Mirvac (and from 2012, Accor as Mirvac’s new name) was and is able to operate its letting business on-site, due to its agreement with each body corporate for each scheme and by reason of the operation of the body corporate bylaws in each case. Due to its on-site advantages, Accor is able to offer benefits to guests such as on-site reception and on-site luggage storage: PJ at [13]. As to its method of operation, Accor advertises and takes bookings for the apartments in its pool (across both schemes) through its own website, travel agents, various hotel and apartment listing websites and telephone directory listings: PJ at [14].

Ms Bradnam

13    The third respondent to the appeal is Ms Elise Wyandra Warring also known as Ms Elise Bradnam. Ms Bradnam obtained registration of the following domain names on the following dates (PJ at [16]):

(a)    cairnsharbourlights.com.au on 4 October 2006;

(b)    harbourlightscairns.com.au on 4 October 2006;

(c)    harbourlightscairns.com on 17 January 2007.

14    Ms Bradnam commenced operating “a business involving short and long-term letting and sales in respect of apartments in the Residential Scheme and the Managed Scheme” from “about July 2007”: PJ at [17]. She had earlier established a website which commenced advertising apartments on 31 October 2006 “in anticipation of their later availability”: PJ at [17]. When Ms Bradnam’s domain names at [13] were entered into a web browser, the viewer would be directed to the website. Ms Bradnam “traded” her business under the registered business name “Harbour Lights Property Management and Sales”: PJ at [17]. Ms Bradnam advertised “her business on her own website and on a number of external hotel and apartment listing websites and on outdoor signs”. Ms Bradnam’s business was in competition with Accor in respect of “short-term letting”: PJ at [18].

Liv and Ms Patalano

15    In September 2009, Ms Bradnam entered into a contract for the sale of her business to Liv Pty Ltd (“Liv”), the first respondent to the appeal. Ms Ivana Patalano, the second respondent to the appeal, is the sole director and sole shareholder of Liv. Liv trades under the registered business name “Cairns Luxury Apartments”. It is in competition with Accor in respect of “short-term letting of accommodation” in the “Harbour Lights complex”. Liv advertises “its business” (the provision of its services) on its own website. Ms Bradnam remains the registrant of the domain names “cairnsharbourlights.com.au” and “harbourlightscairns.com.au”. Ms Patalano is the registrant of the domain name “harbourlightscairns.com”, although entering any of those three domain names into a browser directs the viewer to Liv’s website. Liv also advertises on a number of external hotel and apartment listing websites: PJ at [20].

The framing of the case before the primary judge

16    The appellants (as applicants before the primary judge) contended that Liv, Ms Patalano and Ms Bradnam had infringed each registered trade mark, as contemplated by s 120 of the Act, by using, as a trade mark, a sign substantially identical or deceptively similar to “Harbour Lights” and “Cairns Harbour Lights” in relation to services in respect of which each mark was registered. The expression of that infringing conduct was said to be use by the respondents of the domain names, their websites, advertising and the use of email addresses and business names: PJ at [22]. The appellants also contended that the respondents had engaged in misleading and deceptive conduct by reason of the same conduct. They sought relief derived from those contended causes of action. Apart from denying the infringing conduct, the respondents, by cross-claim, sought rectification under s 88 of the Act of the Register by cancellation of the registration of each trade mark. They did so based on the following contentions (PJ at [32]):

(a)    the trade marks are not capable of distinguishing the services of CHL or Accor from the services of others: s 41 [of the Act];

(b)    the use of the trade marks would be contrary to law because their use would be likely to mislead or deceive consumers into believing that CHL or Accor are the sole owners of the apartments in the Harbour Lights complex, or are the sole provider of letting services for apartments in the Harbour Lights complex: s 42 [of the Act];

(c)    the trade marks have a connotation that would deceive or cause confusion: s 43 [of the Act];

(d)    because of the circumstances at the time the cross-claim was filed, the use of the trade mark is likely to deceive or cause confusion: s 88(2)(c) [of the Act];

(e)    CHL is not the owner of the trade marks – the owner being Ms Bradnam or Liv: s 58 [of the Act].

17    Section 88(1)(a), relevantly, provides that on the application of an aggrieved person, a prescribed court may order that the Register be rectified by cancelling the registration of a trade mark. An application may be made under s 88(1)(b) for an order that the Register be rectified by amending any entry wrongly made or remaining on the Register. An application may be made on any of the grounds set out in s 88(2) and no other grounds. Section 88(2)(a) provides that an application may be made on any of the grounds on which the registration of the trade mark could have been opposed under the Act. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant “is not the owner of the mark”. The primary judge began his consideration of the above five grounds relied upon by the respondents for cancellation of each trade mark by addressing the question of whether the contention that CHL is not the “owner” of each trade mark had been made good by the respondents. The primary judge observed that the respondents (Liv, Patalano and Bradnam) contended that Ms Bradnam is the owner of each trade mark because she was the “first user” of the trade marks “Harbour Lights” and “Cairns Harbour Lights” in relation to “at least some of the services” in respect of which each trade mark is registered. That first use was said to have occurred in October 2006 when Ms Bradnam’s website went “live” and she began advertising three apartments in the complex for rental or letting. The respondents contended that Ms Bradnam then began renting or letting apartments in about July 2007 using the business name “Harbour Lights Property Management and Sales”: PJ at [35].

18    CHL and Accor contended that CHL had used each trade mark in relation to each of the Class 36 and Class 43 services as early as 2004 and that Accor (as Mirvac) did so from 2005. CHL and Accor contended that marks used by Ms Bradnam were not substantially identical to each registered trade mark and disputed that Ms Bradnam had used the marks “in relation to the same kind of services” as those in respect of which each mark was registered. The respondents disputed that CHL and Accor had “used substantially identical trade marks prior to October 2006 in relation to all but one of the Class 36 and Class 43 services” and disputed that the marks were “used as trade marks”: PJ at [35] to [37].

19    It will be necessary to examine the findings of fact in some detail.

The orders of 21 July 2015

20    However, in the result, the primary judge made the following Orders on 21 July 2015.

21    First, the Register be rectified, pursuant to s 88(1)(a) of the Act, by cancelling the registration of the trade mark “Cairns Harbour Lights”.

22    Second, the Register be rectified, pursuant to s 88(1)(b) of the Act, by amending the registration of the trade mark “Harbour Lights” so as to remove the following services within Class 36 from the registration: (a) agency services for the leasing of real estate property; (b) apartment letting agency; (c) apartment rental services; (d) rental of apartments; and (e) rental of accommodation.

23    Third, the Register be rectified, pursuant to s 88(1)(b) of the Act, by amending the registration of the trade mark “Harbour Lights” so as to remove the following services within Class 43 from the registration: (a) accommodation letting agency services (holiday apartments); (b) accommodation reservation services; and (c) booking services for accommodation.

24    Fourth, the operation of Orders 1, 2 and 3 be stayed pending any appeal.

25    Fifth, Liv be restrained from using:

(a)    “Harbour Lights Cairns”; and

(b)    “cairnsharbourlights.com.au”; and

(c)    “harbourlightscairns.com.au”; and

(d)    “harbourlightscairns.com”

as a trade mark to promote or advertise any hotel accommodation services in Australia including via websites; and from using “Harbour Lights Apartments” as a trade mark to promote or advertise any commercial real estate agency services in Australia, including via websites.

26    Sixth, on the expiration of 14 days from 21 July 2015, Liv be restrained in relation to the letting of apartments located in the Harbour Lights [Residential Scheme] and the Harbour Lights [Managed Scheme] from:

(a)    representing that [Liv’s] business provides 5 star hotel services or the benefits of 5 star hotel services;

(b)    representing to users of the following websites that the user is booking a hotel room;

(i)    HotelClub.com;

(ii)    Hotels.com;

(iii)    Agoda.com;

(iv)    Expedia.com.au; and

(v)    Orbitz.com; and

(c)    representing to users of the internet that [Liv’s] listing for “Cairns Luxury Apartments” is a listing for a hotel room which has an accommodation manager situated within the same property as the room.

27    Seventh, the application is otherwise dismissed.

28    Eighth, the cross-claim is otherwise dismissed.

29    Ninth, the matter be listed for directions for the taking of an account of profits on a date to be fixed and tenth, the applicants pay 40% of the costs of the respondents of the proceeding.

30    The appellants contend by their notice of appeal that the primary judge fell into error in making a range of findings. They also contend that the primary judge ought to have made other findings. Before examining the content of those contentions, the grounds of Ms Patalano’s cross-appeal and the grounds on which Ms Bradnam says the findings of the primary judge may otherwise be supported, it is necessary to identify the findings made by the primary judge and the basis for those findings.

The findings of the primary judge and the basis for those findings

31    At [38] to [54], the primary judge examines the authorities on the question of the onus the respondents were required to discharge in seeking to establish grounds of cancellation. It will be necessary to say something about onus later in these reasons but, for present purposes, it is enough to note that at [55] the primary judge reached this conclusion:

In summary, where cancellation of the registration of a trade mark is sought on the ground that the person registered as the owner is not the owner, the party seeking cancellation must prove that he or she or someone else used the trade mark in Australia earlier than the registered owner did. The party seeking cancellation must establish that the earlier use was:

(a)    use of a trade mark identical or substantially identical to the trade mark sought to be registered;

(b)    use as a trade mark;

(c)    use in respect of goods or services of the same kind or class; and

(d)    at a time when there was actual trade, or an offer to trade, in the goods or services bearing the mark, or, at least, an existing intention to offer or supply the goods or services in Australia.

32    As to the question of first user, the primary judge observes at [58] that the respondents did not dispute “or only faintly disputed” that CHL was the first user of each trade mark “in respect of some of the Class 36 and Class 43 services” [emphasis added]. The primary judge at [60] observed that Ms Bradnam disclaimed first use and ownership of the trade marks in respect of the following Class 43 services:

•    Accommodation letting agency services (hotel); Class 43(b) at [4] of these reasons;

•    Hotel accommodation services; Class 43(e) at [4] of these reasons;

•    Hotel services; Class 43(f) at [4] of these reasons.

33    At [60], the primary judge accepted that CHL is the owner of the trade marks in relation to the three classes of services described at [32] of these reasons. The primary judge also observed at [61] that there was little or no dispute that CHL was the first user of the trade marks in relation to “commercial real estate agency services” (Class 36(f) at [3] of these reasons), “by its use of the trade marks in connection with the sale of lots [apartments]”.

34    Thus, CHL was the first user of the trade marks in relation to: accommodation letting agency services (hotel), hotel accommodation services, hotel services and commercial real estate agency services: PJ at [60] and [61].

35    At [62], the primary judge observes that Ms Bradnam claimed ownership, by first use, of the trade marks in relation to “the remainder of the services” which means the services at Class 36(a) to (e) at [3] of these reasons and the services at Class 43(a), (c) and (d) at [4] of these reasons, namely:

(a)    Agency services for the leasing of real estate property;

(b)    Apartment letting agency;

(c)    Apartment rental services;

(d)    Rental of accommodation;

(e)    Rental of apartments;

(f)    Accommodation letting agency services (holiday apartments);

(g)    Accommodation reservation services; and

(h)    Booking services for accommodation.

The primary judge’s approach to defining the services

36    In the context of determining the contentious question of first use of the trade marks in connection with each of the services in respect of which each mark is registered (apart from the concessions made by the respondents just mentioned), the primary judge observed that little evidence and attention was given to the content of each of the services set out at [35] of these reasons. In order to determine the question in issue going to ownership by first use, the primary judge considered it important to set out his assessment of the content of those services. This was an important taxonomic matter for the primary judge.

37    The primary judge considered that, for the purposes of the case, no distinction was to be made between: “apartment letting agency” services, “apartment rental” services, “rental of apartments” services, “rental of accommodation” services and “accommodation letting agency services (holiday apartments)”: PJ at [63]. The primary judge observed that no distinction between these categories was suggested by the parties: PJ at [63]. The primary judge considered that in providing these services, “a business” would advertise the availability of apartment accommodation and take bookings or reservations from guests for an apartment booking and thus the services just described would “also involve” the provision of “accommodation reservation services” (Class 43(c) services at [4] of these reasons) and “booking services for accommodation” (Class 43(d) services at [4] of these reasons): PJ at [64].

38    The primary judge chose to refer to all those services, collectively, as “rental and letting services”: PJ at [64]. Thus, the primary judge finds that these “rental and letting services” are made up of the services set out at [35(b)] to [35(h)] of these reasons.

39    The primary judge seems to proceed on the basis of this approach such that any use of the trade marks in connection with any of the services at [35(b)] to [35(h)] consists of rental and letting services and that any use able to be characterised as rental and letting services constitutes one or more services described at [35(b)] to [35(h)], because there is no distinction to be made, of any relevance to the case, between any of these services.

40    That is not so, in the primary judge’s view, in relation to “agency services for the leasing of real estate properties” (leasing services) because those services suggest a “formal lease for medium to long-term accommodation” which represents a category of accommodation comprising a “longer period” than “rental for short-term holidays, business travel and the like”. Thus, “some distinction” exists: PJ at [65]. The primary judge concludes that “rental for short-term holidays, business travel and the like” represents features characterising “rental and letting services”: PJ at [65] and also at [63].

41    At [66], the primary judge characterises all services the subject of the registration for each trade mark, as “leasing, letting and rental services” other than the following:

(a)    Commercial real estate agency services;

(b)    Accommodation letting agency services (hotel);

(c)    Hotel accommodation services;

(d)    Hotel services.

42    At [67], the primary judge considered the factors that distinguish leasing letting and rental services from: “accommodation letting agency services (hotel)”, “hotel accommodation services”, and “hotel services”. At [71], the primary judge observes that a hotel is ordinarily understood to be an accommodation facility that provides, at a minimum, an on-site reception desk and the ability to check-in and check-out on-site. The primary judge finds at [71] that these three services incorporating the word “hotel” have “corresponding meanings” to that conception, although an accommodation facility that does not have on-site reception and check-in services may “still be regarded as a hotel if it has some of the other features of a hotel” set out at [67] to [69]. At [67], the primary judge identifies nine features which characterise the services provided by Accor in its “hotel business at the Harbour Lights complex”.

43    The primary judge describes “accommodation letting agency services (hotel)”, “hotel accommodation services” and “hotel services”, collectively, as “the hotel services”: PJ at [72].

44    Thus, the primary judge concludes that, first, the collection of services described at [35(b)] to [35(h)] of these reasons are properly understood, collectively, as rental and letting services. Second, the collection of services other than those described at [41] is to be regarded as leasing letting and rental services. Third, leasing letting and rental services are to be distinguished from hotel services in the way earlier described and, fourth, commercial real estate agency services are something other than rental and letting services, leasing letting and rental services and hotel services.

Use by CHL

45    The name “Harbour Lights” was created by Mr George Chapman, a director and shareholder of CHL, in December 2003 for the proposed development: PJ at [74]. The development entity changed its name to [CHL] on 22 December 2003: PJ at [74]. CHL’s intention was that the Managed Scheme would operate as a hotel. The larger apartments in the Residential Scheme were designed for owner/occupiers and “longer term tenants”: PJ at [75]. CHL sold the caretaking and letting rights for both the Managed Scheme and the Residential Scheme to Mirvac on 21 December 2004: PJ at [76].

46    Mirvac operated a chain of hotels under the name “Sebel” and used the name “The Sebel Harbour Lights” to describe “both its letting business and the Harbour Lights complex until 2009”: PJ at [76]. The reference to “its letting business” must necessarily be a reference to the services provided by Mirvac under the name “The Sebel Harbour Lights”. After that, Mirvac used the name “Cairns Harbour Lights”: PJ at [76]. In late 2008, a wholly owned subsidiary of CHL began providing the service of long-term rentals of apartments in the Managed Scheme and the Residential Scheme after obtaining a “real estate agent’s licence”: PJ at [77].

47    On 28 January 2004, the following domain names were registered: harbourlights.com.au and cairnsharbourlights.com. CHL (although not the registrant) used the domain names such that anyone undertaking a search using a browser would be taken to CHL’s website: PJ at [80]. In “early 2004” CHL’s website went “live” and from “early 2005”, CHL also used the domain name “cairnsharbourlights.com.au”. However, that registration lapsed: PJ at [80].

48    The domain name was subsequently registered by Ms Bradnam: PJ at [80].

49    The primary judge at [85] notes Mr Kenneth George Chapman’s evidence that CHL “operated a website to promote sales of apartments” and noted that that evidence was consistent with other aspects of his evidence demonstrating that CHL used “Harbour Lights” and “Cairns Harbour Lights” as trade marks “in respect of sales of lots in the development from 2004” [emphasis added]. Although Mr Chapman gave evidence that CHL used its website to encourage potential owners to use the services of Mirvac as an on-site letting agent, the primary judge rejected that evidence: PJ at [87]. The primary judge found at [88] that, in any event, Mr Chapman’s evidence did not go far enough to establish that “Harbour Lights” was used on the website, as a trade mark, in relation to Mirvac’s letting services. Rather, “Harbour Lights” was used “merely as descriptive of the complex”: PJ at [88].

50    Although the primary judge accepted that the linking of a domain name (comprised of the trade mark leaving aside the prefix “www” or the suffix “.com” or “.com.au”), to a website which contains advertising material promoting services for which a trade mark is registered could give rise to use as a trade mark, the primary judge found that use of CHL’s domain name linked to the website did not constitute trade mark use “in relation to letting services”: PJ at [88].

51    The primary judge found that CHL’s website advertised or promoted sales of apartments but not “leasing, rental or letting” of apartments or “hotel services”: PJ at [90]. Thus, at [90], the use of the domain names linked to CHL’s website:

… was not use in connection with the Class 36 and Class 43 services, other than “commercial real estate agency services”.

[emphasis added]

52    The primary judge found that that conclusion equally applied to all examples put forward by the appellants as to uses of CHL’s domain names linked to its website. None of the examples constituted trade mark use in connection with the Class 36 and Class 43 services other than commercial real estate agency services: PJ at [91]. Nevertheless, the primary judge accepted that CHL, by the use of its domain names resolving to its website, promoted sales of apartments and constituted trade mark use in relation to “commercial real estate agency services”: PJ at [91].

The notion of a composite trade mark

53    Although the appellants do not rely upon an advertisement in The Financial Review of 28 October 2004 as a contended example of prior use going to ownership, the primary judge’s discussion, in the context of that advertisement, of the notion of a “composite trade mark” is relevant in relation to a later discussion. In the advertisement, the words “HARBOUR LIGHTS” appear with, immediately above those words, an image of five gold-coloured stars in a horizontal line (said to be a device) and immediately below the words “HARBOUR LIGHTS”, in much smaller text, are the words “A NEW STAR SHINES”. The arrangement of the three items is set out below although the lesser text is difficult to read in this particular reproduction:

54    The appellants contended that the words “HARBOUR LIGHTS”, as they appear in the depiction at [53], are used as a trade mark in its own right. The respondents contended that the words “HARBOUR LIGHTS”, the device comprising the gold stars and the words “A NEW STAR SHINES” were used as a composite trade mark.

55    In reliance upon the observations in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [68] and [69], the primary judge expressed this finding at [108]:

In my opinion, the words “HARBOUR LIGHTS” together with the device and the words “A New Star Shines” formed a composite mark. There was a connection between all three parts of the mark because the image of the stars alluded to the word “Lights” in “Harbour Lights” and the words “A New Star Shines” alluded to the device and the word “Lights”. The device and the words “A New Star Shines” were not mere descriptors but were distinguishing features.

[emphasis added]

56    And at [111], the primary judge said this:

On a side by side comparison, the device and the additional words in the composite mark are so significant that the composite mark cannot be described as substantially identical to HARBOUR LIGHTS or CAIRNS HARBOUR LIGHTS. Mere similarity is not enough.

[emphasis added]

57    It will be necessary to return later in these reasons (in the context of other advertisements) to the question of whether use of “HARBOUR LIGHTS” in the arrangement depicted at [53] of these reasons constitutes use of the trade mark or whether use of those words in conjunction with five stars and the slogan in diminished text underneath those words constitutes something so significantly different to the trade mark “HARBOUR LIGHTS” that use of the depiction at [53] cannot be described as use of something substantially identical to the trade mark “HARBOUR LIGHTS”.

The advertisement of 16 April 2005 (AB, Part C, Tab 37, p 264; AB, Part C, Tab 53)

58    The appellants at trial (and on appeal) relied upon an advertisement of 16 April 2005 as an example of prior use. The advertisement appeared in The Sydney Morning Herald that day. It consisted of a large photograph of the Cairns waterfront with the reader’s attention drawn to an apparent building with the words “HARBOUR LIGHTS” shown adjacent to the building. It contained text in these terms:

Harbour Lights is situated right on the waterfront in the heart of Cairns, close to everything this beautiful region has to offer. Boasting stunning views of the Coral Sea, rainforest-clad mountains and the city of Cairns, it’s no wonder this luxurious development is selling fast. Reside or invest, Harbour Lights is the opportunity of a lifetime.

Purchasing here guarantees absolute waterfront living with comfort second to none. Invest here and you have secured your piece of a tropical paradise that attracts 2.3 million visitors per annum, with management services provided by one of Australia’s leading operations, Mirvac Hotels and Resorts. But above all, be quick!

[emphasis added]

59    For the purpose of simply illustrating the layout and arrangement of the advertisement, the advertisement is attached as Schedule 1 to these reasons. The text in that example is difficult to read. However, the text is otherwise recited in these reasons.

60    As to the advertisement, the primary judge made this finding at [118]:

There is no evidence as to the meaning of “management services”. However, I accept that in the context the expression would be understood by an ordinary reader to refer to the service to be provided by Mirvac of managing the rental and letting of the apartments on behalf of owners. In respect of those services, the advertisement did not distinguish between apartments in the Residential Scheme and those in the Managed Scheme, and so covered both. In my opinion, each of the Class 36 and Class 43 services, other than “commercial real estate agency services” and “agency services for the leasing of real estate properties”, was encompassed within the term “management services”.

[emphasis added]

61    Below the text quoted at [58] of these reasons, the advertisement depicts, in large text, the words “HARBOUR LIGHTS” with five gold stars above those words, and under those words, in smaller text, the words “A NEW STAR SHINES”. At the bottom of the advertisement is a line of small text which says “CAIRNS HARBOUR LIGHTS PTY LTD” and an ACN number. Although present, this text is unable to be read on “Schedule 1 to these reasons”.

62    At [119], the primary judge considered whether “Harbour Lights” was used as a trade mark in relation to the management services to be provided by Mirvac, as found at [118]. At [119], the primary judge said this:

… The words “Harbour Lights” were used as the name of the development in which apartments are offered for sale and were also used in CHL’s domain name which resolved [directed enquirers] to its website promoting such sales. However, “Harbour Lights” was not used as a badge of origin in relation to the management services. The advertisement did not suggest, for example, that management services would be provided “by Harbour Lights”; but only that such services would be provided by Mirvac for the owners of apartments in Harbour Lights. The advertisement did not indicate a connection between the user of the mark and rental and letting services or hotel services.

[emphasis added]

63    In addition, the primary judge found that the advertisement used the composite mark and that the mark was not substantially identical to either the trade mark “Harbour Lights” or the trade mark “Cairns Harbour Lights”: PJ at [120]; see the layout at Schedule 1 to these reasons.

The “Hotel Fact Sheet” of May 2005 (AB, Part C, Tab 11, pp 17-18)

64    The appellants at trial (and also on appeal) relied upon a further example of prior use in support of their ownership of each mark, consisting of a brochure described as a “Hotel Fact Sheet” created by Mirvac in May 2005. Page 1 of the brochure depicts a harbour scene and building with two other images and in the middle bears the description “Splendour by the sea … the facts”. Page 1 bears the words:

THE SEBEL

HARBOUR LIGHTS

65    It also says “Opening mid-2006”. The second page of the brochure sets out the facts in relation to “THE SEBEL HARBOUR LIGHTS” and describes such things as the location, distinctive features, the nature of the accommodation, a plan showing the layout of guest rooms, guest room features and facilities and other features. It bears Mirvac’s website address and Mirvac’s hotel email address. At [122], the primary judge made this finding:

I accept that “The Sebel Harbour Lights” was used as a trade mark in relation to the Class 36 and Class 43 services other than “commercial real estate agency services” and “agency services for the leasing of real estate properties”.

[emphasis added]

66    Before the primary judge, the appellants contended that they used the words “The Sebel” and the words “Harbour Lights” as separate trade marks. In the course of the appeal, the trade mark “Sebel” was described as a “house mark” separate from the trade mark “Harbour Lights”. After having analysed the contentions of the parties on this topic, the primary judge made this finding at [125]:

I accept that “The Sebel Harbour Lights” consists of two brands which are each registered trade marks. I accept that the use of two brands together to market a hotel is common. I accept that there were sound marketing reasons for Accor [Mirvac] promoting its services by the use of “The Sebel Harbour Lights”, which reflected the reputation or attributes of each brand. However, the focus of [the appellants] on brands tends to distract from the real issue, which is whether “Harbour Lights” was used as a trade mark in the brochure: …

[emphasis added]

67    At [130], the primary judge made these findings:

As the brochure was created in May 2005, some two years prior to the completion of the building, it is likely to have been directed to persons who had contracted to buy a lot or were considering doing so, and it is necessary to consider how the words would be understood by an ordinary member of that class. In my opinion, such a person would understand “The Sebel Harbour Lights” to be used as a single sign. The natural reading of those words is as a single phrase. Each of the words commenced with a capital letter, which grouped the words together and distinguished them from the surrounding words. Such a person would not view “The Sebel” as one sign and “Harbour Lights” as a separate one. The whole of the words appeared to be used together, and there was nothing to indicate that they were to be considered separately. … In my opinion, Accor must be taken to have used “The Sebel Harbour Lights” as a trade mark, not “Harbour Lights”.

[emphasis added]

68    The primary judge then considered whether “The Sebel Harbour Lights”, found to be the trade mark used by Mirvac rather than “Harbour Lights”, is substantially identical to “Harbour Lights” and “Cairns Harbour Lights”. The primary judge made that assessment on the basis of “a total impression of similarity emerging on a comparison of the two marks” and reached this finding at [132]:

In my opinion, “The Sebel Harbour Lights” is a substantially different mark to “Harbour Lights” and “Cairns Harbour Lights”. The words “The Sebel” are distinctive and not merely descriptive.

[emphasis added]

69    In reaching the conclusion reflected at [132], the primary judge said that he was assisted by the analysis of Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (“Carnival v Sitmar”) at 513. It will be necessary to return to the observations of Gummow J in the context of the primary judge’s conclusions on the issues at [67] of these reasons.

The advertisement of 17 December 2005 (AB, Part C, Tab 36, p 207)

70    The appellants at trial (and also on appeal) relied upon a further example of prior use in support of their ownership of each trade mark, consisting of an advertisement in The Weekend Post realtor (the “realtor”) published on 17 December 2005. Although we will turn to the grounds of appeal later in these reasons (in the context of the challenge to the findings made and the contention as to findings that ought to have been made), the appellants contend that this advertisement is the strongest evidence of prior use of each mark in respect of each of the services for which each mark is registered, giving rise to ownership in the appellants to the necessary exclusion of Ms Bradnam. The advertisement is attached as Schedule 2 to these reasons.

71    The advertisement occupies half a page of the realtor. It has a heading:

Three year fixed rent lease option now available.

72    An image of the Cairns waterfront appears under that heading. The physical location of a building is shown on the waterfront under which appears very faintly the words “HARBOUR LIGHTS”, with the words (clearly shown):

Cairns’ only absolute waterfront investment

73    Another image depicts two people on a balcony overlooking (apparently) the waterfront and the mariner. Next to that image is a column of text (about one-third of the width of the advertisement) with the introductory words:

The Sebel Harbour Lights Cairns is the star performer in luxurious waterfront managed apartment investments.

74    In slightly lesser text, seven features that make the investment the so-called “star performer” are set out adjacent to a gold star in this way:

☆    Cairns’ only absolute waterfront investment [1]

☆    3 Year Fixed Rent Leaseback Option now available [2]

☆    Large 1 and 2 bedroom (dual key) apartments [3]

☆    Operated under Mirvac’s prestigious Sebel brand [4]

☆    Exclusive Mirvac owners’ Recognition Programme [5]

☆    Resort facilities include gymnasium, spa and restaurants [6]

☆    95 metres of absolute waterfrontage [7]

75    Under that text are the words:

OPENING MID 2006

76    To the right of the seven attributes marked with a star is the trade mark “HARBOUR LIGHTS”, with five gold stars above those words and, underneath the trade mark in diminished text, appears the words “A NEW STAR SHINES”, all set out in the manner shown at Schedule 2 (and at [53] of these reasons). Under that, are the words “Developed by Cairns Harbour Lights Pty Ltd”.

77    The advertisement invites readers to visit the display suite and sales office under which the website harbourlights.com.au appears.

78    Then, the following boxed image appears (more particularly depicted in Schedule 2):

THE SEBEL

HARBOUR LIGHTS

CAIRNS

79    Under that in tiny text are the words:

MANAGED BY [LOGO AND MIRVAC] HOTELS RESORTS

80    As to all of these things, see Schedule 2.

81    Of this example of prior use, the primary judge at [143] made this finding:

I accept that the advertisement referred to both the sale of lots and to the leasing of lots back to either the developer or “The Sebel Harbour Lights Cairns”. An ordinary reader would infer that the apartments would then be leased, rented or let to members of the public. The mark “The Sebel Harbour Lights Cairns” was used as a trade mark in relation to each of the Class 36 and Class 43 services.

[emphasis added]

82    The primary judge then observed at [144] that the next question is whether “either of the marks used in the advertisement” (by which the primary judge was referring to the image described as the so-called composite mark; and the mark “The Sebel Harbour Lights Cairns”), is substantially identical to “Harbour Lights” and “Cairns Harbour Lights”, and concluded at [144] that neither use in the advertisement was substantially identical to either of the trade marks in suit for the reasons at [111] (as to which see [56] of these reasons as to the “composite mark”) and [130] (as to which see [66]-[68] of these reasons as to “The Sebel Harbour Lights”).

The advertisement in The Financial Review of 2006 (AB, Part C, Tab 38, p 268)

83    Before the primary judge and on appeal, the appellants also relied upon an advertisement published in The Financial Review “in the spring of 2006” (before October 2006): PJ at [145]. The appellants say that this advertisement probably takes the question of contended prior use of each trade mark in connection with each of the services for which each mark is registered no further than the advertisement in the realtor of 17 December 2005. In any event, the advertisement shows an image of the Cairns waterfront under the heading:

Only the best address in Cairns offers these absolute waterfront views!

84    Under the image are the words:

The Sebel Harbour Lights Cairns is the star performer in luxurious waterfront managed apartment investments.

85    Under that, six gold stars mark six features rendering “The Sebel Harbour Lights Cairns” the star performer. The advertisement is attached to these reasons as Schedule 3. The features identified as features numbered 1, 2, 3, 5 and 7 at [74] of these reasons are also five of the features recited in this advertisement. The other recited feature is this:

14 nights free accommodation at Sebel Harbour Lights

86    This advertisement also displays the so-called composite mark. Under that, the following words appear:

Developed by Cairns Harbour Lights Pty Ltd

87    The example in the Appeal Book (“AB”) (Schedule 3 to these reasons) does not show the faint diminished text “A NEW STAR SHINES” under the words “HARBOUR LIGHTS” although it seems to be common ground that those words were also present in the image.

88    The advertisement also displays the boxed image (though without the word “Cairns”) as follows:

THE SEBEL

HARBOUR LIGHTS

89    As to these various images, see Schedule 3.

90    As to this advertisement, the primary judge at [146] to [148] found that use of the “composite mark” (as found by the primary judge) was not use of a mark substantially identical to either of the trade marks in suit and use of “The Sebel Harbour Lights Cairns” (in the way depicted) was use of a “single mark” not substantially identical to either trade mark in suit.

The Fact Sheet of 2006 (AB, Part C, Tab 36, pp 194-198)

91    The appellants at trial and on appeal relied upon another example of prior use going to ownership of each trade mark in CHL consisting of a “fact sheet”, again entitled, “Splendour by the sea … the facts”: see AB p 194 and following. Pages 194 and 195 display the words:

THE SEBEL

HARBOUR LIGHTS

[with a diminished logo]

92    As to this Fact Sheet, it contains at p 195 the text “Opening June 2007”. The document is endorsed at p 195 with “mirvachotels.com” and says: “managed by Mirvac Hotels & Resorts”. It invites reservations by email.

93    Page 196 displays these words:

THE SEBEL

HARBOUR LIGHTS

[with a diminished logo]

CAIRNS

94    The brochure was printed in “late 2006 by Mirvac”: PJ at [153]. The primary judge found that use as described at [91] and [93] of these reasons was use of a “single mark” that lacked substantial identity with either of the trade marks in suit: PJ at [153].

Homepage CHL’s website (AB, Part C, Tab 35, p 192) and findings at [79], [80]-[85] and [90]

95    Finally, the appellants at trial and on appeal, on the issue of prior use, also relied upon their use of the domain names harbourlights.com.au and cairnsharbourlights.com registered in the name of an entity called Skyrail Pty Ltd on 28 January 2004 (although used by CHL to direct or resolve enquiries to its own website which was “live” from early 2004). The appellants also relied upon use of their domain name from early 2005 cairnsharbourlights.com.au. As mentioned, these matters are the subject of factual findings by the primary judge at [79] and [80]. As to these matters, the appellants also rely upon the affidavit evidence of Mr Chapman at paras 37 to 39 of his affidavit affirmed 30 May 2013. Mr Chapman’s evidence was the subject of commentary by the primary judge at [87] to [89]. The appellants also rely upon the finding at [85] that CHL operated a website to promote sales of apartments, from 2004, using the names “Harbour Lights” and “Cairns Harbour Lights” as trade marks in the sale of lots. They also rely upon the finding at [90] that CHL’s website advertised or promoted sales of apartments. At [90], the primary judge also observes that this use of the trade marks was not use in the promotion of leasing, rental or letting of apartments or hotel services. The primary judge also found at [90] that the use of domain names to resolve to CHL’s website was not use in connection with the Class 36 and Class 43 services except in relation to commercial real estate agency services. The appellants also place emphasis upon a document at AB, Pt C, Tab 35 at p 192 which is an extract taken from CHL’s website which bears the words “CAIRNS HARBOUR LIGHTS” and, under that, the words, “Sales and Rentals”, “Hotel Bookings”, “Waterfront Restaurants”.

The relationship between the uses as found and the services the subject of the registration for each trade mark

96    As to the advertisement in The Financial Review of spring 2006 and the “late 2006 fact sheet”, the primary judge did not make a finding that, as to the first, the two uses constituted uses in relation to each of the Class 36 and Class 43 services but simply said that the uses did not establish ownership by prior use because neither use was substantially identical with either trade mark in issue: one was found to be a composite mark and the other, a single mark. As to the late 2006 Fact Sheet, the difficulty for the primary judge was that use of the single mark (as found) was not use probative of prior use of either mark in suit due to the lack of substantial identity. No finding was made as to the scope of the services to which that use related. The primary judge seems to have confined the question to the particular difficulty of a lack of substantial identity thus finding it unnecessary to find whether the use was use in relation to all or just some of the Class 36 and Class 43 services.

97    The primary judge, however, did make such a finding in relation to the realtor advertisement of 17 December 2005 finding that the use was use “in relation to each of the Class 36 and Class 43 services”. Even though the 17 December 2005 advertisement was found to be use of the “composite mark” (as found) and the “single mark” (as found), in connection with each of the Class 36 and Class 43 services, those uses were not probative of ownership by prior use due to the difficulty, as found, of a lack of substantial identity between those marks (as found) and either of the trade marks in suit.

98    The primary judge notes that the appellants did not rely on any other use of either trade mark between 2007 and 21 January 2009 when the “Harbour Lights” application was lodged: PJ at [164]. Accor continued to use “The Sebel Harbour Lights” to promote its management services during this period: PJ at [164]. At [165], the primary judge reaches this finding:

In summary, CHL used “Harbour Lights” and “Cairns Harbour Lights” as trade marks in relation to “commercial real estate agency services” prior to 21 January 2009. It did not use the trade marks as trade marks in respect of any of the other Class 36 and Class 43 services prior to that date.

Ms Bradnam’s use

99    As to Ms Bradnam’s use, the primary judge found that Ms Bradnam purchased an apartment in the Managed Scheme on 5 April 2005. Her partner purchased two apartments in the Residential Scheme at about the same time. Because Mirvac’s management fees (for letting) were thought to be too expensive, Ms Bradnam decided to “start a letting business in respect of apartments at the Harbour Lights complex”: PJ at [167]. On 4 October 2006, Ms Bradnam registered the domain names cairnsharbourlights and harbourlightscairns (.com.au in each case). On 31 October 2006, Ms Bradnam’s website for her letting business went “live” and “began advertising” her apartment and those of her partner “in preparation” for the “commencement of her new business”: PJ at [169].

100    Ms Bradnam registered harbourlightscairns (.com) on 17 January 2007.

101    Each of the domain names “resolved” to Ms Bradnam’s website: PJ at [169]. Any interrogation of those domain names through use of a browser or a direct search would direct the search to Ms Bradnam’s website.

102    Ms Bradnam registered the business name “Harbour Lights Property Management and Sales” on 7 March 2007.

103    The purchase of the three apartments settled on 29 June 2007. From that date, Ms Bradnam had three apartments capable of being rented. She “commenced trading” by “holiday letting” the apartments: PJ at [171]. She “later” also began providing “long-term letting [services] to other lot owners”: PJ at [171]. She made one “sale” while operating the business. She operated her business from her apartment in the Managed Scheme until 1 November 2008 whereupon she relocated the business. By 2009, she was managing approximately 30 apartments across the Managed Scheme and the Residential Scheme: PJ at [172].

104    Ms Bradnam claimed first use of each trade mark in connection with “leasing, letting and rental” services based upon use on her website; her use of domain names; and her use of the business name: PJ at [173] and [174].

105    As to use on her website from 31 October 2006, the homepage (and only versions of this page were in evidence before the primary judge) recited the heading:

hlp Harbour Lights Private Apartments

106    The homepage has text set out by the primary judge at [177] in these terms:

Cairns Luxury Accommodation

Take a stroll through luxury

Cairns most luxurious and absolute waterfront 5 star holiday apartments, Harbour Lights Private, are about to be released.

Located on the most sought after blue ribbon real estate, these architecturally designed apartments offer the most discerning traveller the ultimate in exclusive, private, premier accommodation.

Each apartment boast the utmost in privacy, tranquillity and all showcase the breathtaking beauty of the Coral Sea, hinterland, and harbour lights.

The apartments offer a quality unsurpassed in the prestigious private holiday market.

The spacious apartments provide every item you need for your getaway, from flat screen televisions, to soft and indulgent linen. If you do dare leave, you can take a dip in the swimming pool, have a glass of wine in the private bar, and all the while, gaze over the horizon to the Great Barrier Reef.

While nestled inside the exclusive CityPort marina it is hard to believe how close you are to the bustling city centre, but boutique shopping, fine cuisine, and entertainment are a mere one minute stroll along the beautifully night lit and adjoining jetty.

107    At [178], the primary judge found that the letters “hlp” were distinctive with the result that “hlp Harbour Lights Private Apartments” is not substantially identical to either trade mark in suit. Other uses on the webpage of the words “Harbour Lights Private” were found not to be use of those words as a badge of origin for letting services: PJ at [179]. The primary judge had held at [165] (and affirmed at [173]) that CHL and Accor had not used either trade mark in suit in relation to any of the Class 36 and Class 43 services prior to 21 January 2009 (being the date of the filing of the Harbour Lights trade mark application”) other than “commercial real estate agency services”. The primary judge examined the homepages of Ms Bradnam’s website in the period prior to 21 January 2009 (being the effective date of registration of “Harbour Lights”) and 21 April 2009 (the effective date of registration of “Cairns Harbour Lights”). Having examined those webpages, the primary judge at [184] concluded that:

… Ms Bradnam did not use any mark substantially identical to HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS as a trade mark on her website prior to 21 January 2009 or 21 April 2009.

108    As to the use of the three domain names (see [99]-[101] of these reasons) “resolving” to her website, the primary judge found that use of each domain name directing a search to her website advertising her apartment letting services was “use of the domain name as a trade mark”, that is, “as a badge of origin to indicate a connection between her business and the services it provided”: PJ at [187].

109    Those services were “short-term rental and letting” (PJ at [188]). The letting was advertised as “holiday letting”: PJ at [188]. The primary judge observes at [188] as follows:

… The services advertised are all the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and the hotel services.

110    Ms Bradnam had an “existing intention” from 31 October 2006 to offer the advertised services and from July 2007 she engaged in “actual trade” in those services: PJ at [189]. Moreover, because the word “Cairns” is merely a “geographical reference, not distinctive in its own right” and prefixes and suffixes in domain names are to be disregarded, the “domain names are each substantially identical to ‘HARBOUR LIGHTS’”: PJ at [190]. The primary judge observed that the rearrangement of the words “CAIRNS HARBOUR LIGHTS” in two of the domain names to “harbourlightscairns” did not “substantially affect their identity”. The primary judge then concludes as follows at [190]:

… Therefore, I consider that by the use of the domain names to resolve to her website, Ms Bradnam used trade marks substantially identical to HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS.

111    At [191], the primary judge finds:

The use of the domain names by Ms Bradnam was use as trade marks. She used the domain names in respect of each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and the hotel services. They were so used from 31 October 2006, but even if this is wrong, by no later than July 2007.

112    As to the business name “Harbour Lights Property Management and Sales”, the primary judge examined Ms Bradnam’s “general but unspecified” uses of the business name and her more “specific uses” of it. As to the former, those uses did not operate to distinguish the services she provided from those provided by other traders: PJ at [197]. As to specific uses, the primary judge had particular regard to an agreement made between the owner of an apartment in the complex and “Harbour Lights Property Management & Sales” dated 10 August 2007 by which the apartment owner appoints the business owner as agent to provide “Letting/Leasing of property” and the “Collection of rent”, for permanent and holiday rental. The primary judge said this at [200]:

I accept that the agreement of 10 August 2007 demonstrates use by Ms Bradnam of the name “Harbour Lights Property Management and Sales” in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services” and the hotel services.

113    That use was use of the business name as a trade mark. It distinguished the services provided by her from the services provided by others: PJ at [201]. As to whether use of the business name is use of something substantially identical to either of the trade marks in suit, the primary judge reached this finding at [202]:

… In my opinion, the words “Property Management and Sales” are purely descriptive of the services offered by “Harbour Lights”. Those words are not distinctive in their own right. Therefore, “Harbour Lights Property Management and Sales” is substantially identical to HARBOUR LIGHTS. That business name is not, however, substantially identical to CAIRNS HARBOUR LIGHTS. Even though Cairns is a geographical name which is not distinctive in its own right, “Harbour Lights Property Management and Sales” and CAIRNS HARBOUR LIGHTS when compared side by side are too dissimilar to be substantially identical.

114    And at [203]:

I find that Ms Bradnam used a trade mark substantially identical to HARBOUR LIGHTS as a trade mark in relation to the Class 36 and Class 43 services other than the hotel services in the agreement dated 10 August 2007.

The primary judge’s assessment of the end result on “prior use” or “first use”

115    In the result, the primary judge found at [205], [206], [644] and [645]: first, prior to 21 January 2009, neither CHL nor Accor used either trade mark in suit or any mark substantially identical to those marks, as a trade mark, in connection with the Class 36 and Class 43 services other than commercial real estate agency services: PJ at [205] and [165]; second, CHL is the owner of each trade mark in suit, by prior use, in relation to commercial real estate agency services: PJ at [205]; third, CHL is the owner of each trade mark in suit in relation to hotel services by reason of the act of registration of each trade mark in suit in relation to hotel services from 21 January 2009 and 21 April 2009, there being no prior use of either trade mark concerning those services: PJ at [205] and [59] and [60]; fourth, Ms Bradnam, from 31 October 2006 used domain names substantially identical to each trade mark in suit, as trade marks, linked to her website: PJ at [206] and [187] to [191]; fifth, Ms Bradnam, in the agreement of 10 August 2007, used a business name, as a trade mark, substantially identical to HARBOUR LIGHTS (although not substantially identical to CAIRNS HARBOUR LIGHTS): PJ at [206] and [200] – [203]; sixth, Ms Bradnam is the first user of each trade mark in relation to “leasing, letting and rental” services: PJ at [206]; seventh, it follows that CHL is not the owner of each trade mark in respect of those services mentioned at proposition 6 above: PJ at [206].

Are the trade marks capable of distinguishing the services of the appellants from the services of others?

116    Apart from the s 58 ownership issue, the respondents contended before the primary judge that each trade mark should be removed from the Register pursuant to s 41 of the Act as neither mark is capable of distinguishing the services of the appellants. Although it will be necessary to return to s 41 later in these reasons, the relevant elements of s 41 as that section stood at the date of the applications for registration were as follows.

117    First, if a trade mark is not capable of distinguishing the applicant’s services from the services of others, the application for registration must be rejected: s 41(2).

118    Second, in deciding that question, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated services from the services of others: s 41(3).

119    Third, if, having first considered that matter, the Registrar is still unable to decide the question (framed by s 41(3) and posed by s 41(2)), the Registrar must turn to s 41(5).

120    Fourth, in applying s 41(5), if the Registrar finds that the trade mark is, to some extent, “inherently adapted” to distinguish the designated services from the services of others but the Registrar is unable to decide, on that basis alone that the trade mark is capable of so distinguishing, the Registrar must engage with the statutory sequence set out at s 41(5)(a), (b) and (c) of the Act.

121    Fifth, s 41(5)(a) requires the Registrar to consider whether because of the combined effect of three factors set out at s 41(5)(a), the trade mark does or will distinguish the designated services from the services of others. The three s 41(5)(a) factors are these: the extent to which the trade mark is inherently adapted to distinguish the designated services; the use, or intended use, of the trade mark by the applicant; any other circumstances. Having considered those matters, if the Registrar is then satisfied that the trade mark does or will so distinguish the designated services, the trade mark is taken to be capable of distinguishing the applicant’s services from the services of others: s 41(5)(b).

122    Sixth, if, having considered the s 41(5)(a) factors, the Registrar is not satisfied that the trade mark does or will so distinguish the designated services, the trade mark is taken not to be capable of distinguishing the applicant’s services from the services of others: s 41(5)(c).

123    On the other hand, the alternate postulate of s 41(6) might apply by reason of s 41(4). If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated services from the services of others (rather than “to some extent” as contemplated by s 41(5) which comprehends degrees of extent), two possibilities arise: first, if the applicant establishes that because of the extent of his or her use of the trade mark before the filing date, the trade mark does distinguish the designated services as being those of the applicant, the trade mark is taken to be capable of distinguishing the applicant’s services from those of others (for the purposes of s 41(2)): s 41(6)(a); second, in any other case, the trade mark is taken not to be capable of distinguishing the designated services from the services of others: s 41(6)(b).

124    As to “Harbour Lights”, the primary judge considered, for the purposes of s 41(3), the “ordinary signification” of the trade mark to persons who “will trade in or use the service to which the trade mark is applied”, namely, “[apartment] owners, travel agents and potential guests”: PJ at [227]. The primary judge found that the words do not directly describe a characteristic of accommodation but rather represent a “covert and skilful allusion” to services thus rendering the words prima facie registrable: PJ at [229]. The primary judge found that the words “Harbour Lights” are not “descriptive” of a geographical location connected with the services, even though they reflect the name of the building connected with the services: PJ at [232]. At [232], the primary judge said this:

… The fact that the services are connected with real property and that the services comprise of provision of an entitlement to occupy that real property does not affect the inherent adaptability of the relevant words to distinguish.

125    The primary judge also observed that the registration of “Harbour Lights” does not prevent apartment owners from using the words to describe the location of their apartment: PJ at [237].

126    To the extent that the respondents contended that the words had become “so well known” as the name of the building that the words could not be regarded as inherently adapted to distinguish Accor’s and CHL’s services, the primary judge noted that “Harbour Lights” was conceived and proposed by CHL in 2003 for use in relation to the proposed project buildings. Events since then would not bear upon whether the selected mark was inherently adapted to distinguish: PJ at [238]. Thus, at [239], the primary judge concluded:

In my opinion, the words “Harbour Lights” are inherently adapted to distinguish the services of Accor and CHL. Those words are prima facie registrable as a trade mark.

127    As to the trade mark “Cairns Harbour Lights”, the primary judge observed that those words are “in a different category”: PJ at [240]. Because a person looking at those words for the first time in relation to “leasing, rental or letting services” would understand them to refer to a place (either Cairns or Cairns Harbour), there is thus a “direct and not merely allusive reference to a characteristic of the services”, namely, the location of the accommodation offered: PJ at [241]. As to whether other traders are likely in the ordinary course of their business and without proper motive, to want to use the words “Cairns Harbour Lights” in connection with the provision of their own services, the primary judge at [242] found:

… In my opinion, the answer is that they may well wish to do so. It is not hard to imagine that an accommodation provider may wish to describe their services by incorporating the words “Cairns Harbour”.

[emphasis added]

128    And at [243]:

The inclusion of the word “Lights” does mean that CAIRNS HARBOUR LIGHTS is to some extent inherently adapted to distinguish. However, I am unable to decide, on that basis alone, that the trade mark is capable of distinguishing the services. [That is, each of the Class 36 and Class 43 services.]

129    The primary judge also observes that if the words “Harbour Lights” are read together rather than reading the words “Cairns Harbour” together, those words are inherently adapted to distinguish to some extent and thus “Cairns Harbour Lights” is to some extent inherently adapted to distinguish the services of the appellants, therefore rendering s 41(5) applicable. The primary judge then applied s 41(5). At [248], the primary judge notes the earlier finding that Mirvac used the mark “The Sebel Harbour Lights” in relation to hotel or accommodation letting services rather than the trade mark “Cairns Harbour Lights” until early 2009. Thereafter (from January/February 2009), Mirvac adopted use (until the present) of the trade mark “Cairns Harbour Lights” in connection with those services: PJ at [248]. At [251] and [252], the primary judge made these findings:

251    Taking into account the extent to which CAIRNS HARBOUR LIGHTS is inherently adapted to distinguish and the extent of the [appellants’] use, I do not accept that the trade mark now distinguishes the relevant services as being those of the [appellants], nor that they did so at the date of registration.

252    For these reasons, I find that CAIRNS HARBOUR LIGHTS is not capable of distinguishing the services of CHL and Accor from the services of others.

130    In reaching these conclusions, the primary judge rejected the contention of the respondents that the words “Harbour Lights” are words forming part of the “common heritage” carrying with them the “common right of the public” to make honest use of them for the sake of the signification which they are said to ordinarily possess, namely, identifying the location of lots (apartments) in the complex. The primary judge rejected that contention for a number of reasons: first, the considerations identified at [232] mentioned above at [123] of these reasons; second, because the respondents were relying upon the personal interests of a cohort of apartment owners rather than the “common right of the public” as that term is understood in the authorities; and third, in any event, registration of “Harbour Lights” does not foreclose lot owners or their agents identifying the location of an apartment in the complex: PJ at [233] to [239].

Infringement

131    We will address separately the findings concerning infringement later in these reasons.

The grounds of appeal of Accor and CHL

132    In the course of the hearing of the appeal, the appellants handed up a document entitled “Appellants’ References for Oral Submissions” (the “References document”). In that document, the appellants elected not to press some matters and, in particular, abandoned reliance upon some of the advertisements relied upon before the trial judge in support of first use in the appellants of each trade mark in respect of the relevant services.

133    The grounds of appeal described in these reasons reflects the final position taken by the appellants on the various matters.

134    On the question of ownership by prior user, the appellants contend that the primary judge fell into error in finding that CHL is not the owner of the trade marks “Harbour Lights” and “Cairns Harbour Lights” in relation to “leasing, letting and rental services” and in also finding that grounds subsisted for cancellation of each trade mark registration in respect of those services under s 88(1) of the Act: by cancelling entirely the registration of Cairns Harbour Lights under s 88(1)(a) and by amending the registration of Harbour Lights so as to remove those services from the registration of that trade mark, under s 88(1)(b).

135    In making findings to that effect at [206] and [644] (as to which see [115] of these reasons), the primary judge is said to have erred in the following three respects (subject to the observations at [138]).

136    First, the primary judge erred in finding that CHL’s use of the domain names harbourlights.com.au and cairnsharbourlights.com in and from 2004 constituted use of each trade mark, as a trade mark, only in relation to commercial real estate agency services: PJ at [91] (as to which see [50] and [52] of these reasons): Ground 2(a).

137    Second, the primary judge erred in finding that the following advertisements did not involve use, by the appellants, of each trade mark or a mark substantially identical to each of those trade marks, as trade marks, in respect of the services for which each mark was ultimately registered (Ground 2(b)):

•    the advertisement in The Financial Review of 28 October 2004 (not pressed by the appellants in the References document at para 5);

•    the advertisement in The Sydney Morning Herald of 16 April 2005;

•    the Mirvac Hotel Fact Sheet of May 2005;

•    the advertisement in the Weekend Post realtor of 17 December 2005;

•    the advertisement in The Financial Review of spring 2006;

•    the Mirvac Hotel Fact Sheet of late 2006 (foreshadowing the June 2007 opening); and

•    it should be noted that the appellants no longer rely upon the material discussed at [134], [135], [149] and [154] of the principal judgment.

138    Third, the primary judge erred in finding that the advertisement in The Financial Review of 28 October 2004 did not involve use by the appellants of each trade mark or marks substantially identical to those marks in relation to services other than commercial real estate agency services: Ground 2(c). However, Ground 2(c) is, in effect, not pressed by the appellants as the two recited examples are no longer relied upon as examples of prior use: the References document, para 5.

139    By Ground 3, the appellants contend that the primary judge ought to have found that the appellants’ activities, constituted by use and publication of each of the materials set out at [137], involved use of the trade marks “Harbour Lights” and “Cairns Harbour Lights” in relation to all of the Class 36 and Class 43 services covered by the trade mark registrations or in relation to “the same kind of services” as those services and that thus, CHL is the owner of each trade mark in relation to each of those services.

140    By Ground 4, the appellants say that having found that CHL is the owner of each trade mark in suit in relation to commercial real estate agency services by reason of first use of each trade mark in 2004 (or alternatively by reason of the merits inherent in Grounds 1 to 3), the primary judge fell into error in finding that Ms Bradnam’s use of marks, substantially identical to those trade marks, was capable of establishing, and did establish, that Ms Bradnam (and through her Liv) is the owner of each trade mark in relation to leasing, letting and rental services.

141    By Ground 5, the appellants contend that the primary judge erred in finding that the trade mark “Cairns Harbour Lights” is not capable of distinguishing the services of CHL and Accor within the meaning of s 41(2) of the Act and erred in finding that there were grounds for cancellation of the registration of that trade mark under s 88(1) of the Act.

142    We will address the grounds of appeal in relation to infringement separately.

The grounds of cross-appeal by Ms Patalano

143    By Ground 1, Ms Patalano contends that the primary judge erred in finding that the trade mark “Harbour Lights” is inherently adapted to distinguish the services of Accor and CHL and is able to be registered as a trade mark.

144    By Ground 2, Ms Patalano contends that the primary judge erred in finding that the words “Harbour Lights” are not part of the common heritage. The error is said to arise because they are words, it is said, which the public has the right to make honest use of for the sake of the signification which those words ordinarily possess. They are said to possess that signification because: the words are descriptive of the geographical location connected with the services (contrary to the finding of the primary judge at [232]); the words are associated with the name of the building connected with the services (contrary to the findings of the primary judge at [232]); and the words are directly descriptive of the character of the services provided (contrary to the findings of the primary judge at [229]).

The grounds of cross-appeal by Ms Bradnam and her amended notice of contention

145    As to the cross-appeal, Ms Bradnam asserted precisely the same grounds asserted by Ms Patalano.

146    As to the amended notice of contention, Ms Bradnam seeks to support the findings of the primary judge in relation to each of the examples of prior use relied upon by the appellants on the following basis (Ground 1 of the notice):

(a)    as to [101] of the reasons, the appellants no longer rely upon the advertisement in The Financial Review of 2004, in the References document;

(b)    as to [117] of the reasons which concerns the advertisement in The Sydney Morning Herald of 16 April 2005 ([58] to [69] and Schedule 1 of these reasons), Ms Bradnam says that the advertisement refers to services which are not “the same kind of services” as those offered by her;

(c)    as to [121] of the reasons which concerns the Hotel Fact Sheet created by Mirvac in May 2005 ([64] to [69] of these reasons), Ms Bradnam says the document refers to services which are not “the same kind of services” as those offered by her;

(d)    as to [134] of the reasons, the appellants no longer rely upon the advertisement of October 2005, in the References document;

(e)    as to [135] of the reasons, the appellants no longer rely upon the Mirvac release of December 2005, in the References document;

(f)    as to [140] of the reasons which concerns the advertisement in the realtor of 17 December 2005 ([70] to [82] and Schedule 2 of these reasons), Ms Bradnam says that any use of the domain name harbourlights.com.au was not relied upon by the appellants as trade mark use at the trial. Nevertheless, the respondents do not object to the appellants seeking to “re-characterise” the way in which the domain name is now relied upon by them (T, p 168, ln 32 to T, p 169, ln 18). However, the respondents say that at trial there was no evidence corresponding to the contended re-characterisation of the content of the services said to have been provided by CHL by reference to the domain name and, in any event, the respondents say that domain name use in the advertisement was found to be confined to “commercial real estate agency” services, as a finding of fact: PJ at [91];

(g)    as to [145] of the reasons which concerns the advertisement in The Financial Review of spring 2006 ([83] to [90] of these reasons), Ms Bradnam says that the advertisement refers to services which are not “the same kind of services” as those offered by her and there is no evidence that the advertisement was published prior to Ms Bradnam’s first use as found;

(h)    as to [149] of the reasons concerning a CHL brochure of “late 2006”, the appellants no longer rely upon the brochure, in the References document;

(i)    as to [150] of the reasons which also concerns the CHL brochure of “late 2006”, the appellants no longer rely upon the brochure, in the References document;

(j)    as to [153] of the reasons which concerns the Fact Sheet of 2006 ([91] to [94] of these reasons), Ms Bradnam says that there is no evidence of the date of issue of the document and the finding at [91] is confined to “said to have been printed by Mirvac in late 2006”;

(k)    as to [154] of the reasons which concerns an Abbey Travel brochure of late 2006, the appellants no longer rely upon the document in the References document.

147    By Ground 2 of the notice, Ms Bradnam says that although the appellants contend that the finding that CHL is the owner of each trade mark in suit in relation to “commercial real estate agency” services by reason of first use of each trade mark (or ownership by reason of other matters contended for by the appellants) means that CHL ought to have been found to be the owner of each trade mark in respect of all services nominated in each registration, the findings of the primary judge on this topic may be supported on the following three grounds:

a.    The primary judge found that [CHL] was the first user of the trade marks in respect of “commercial real estate agency services” by reason of being the first to use in connection with the sale of lots (Reasons [61]);

b.    It follows that “commercial real estate agency services” (and services of the same kind) are not the same kind of thing, or essentially the same thing as, “leasing, letting and rental services” but only the sale of real estate;

c.    Further, “hotel accommodation services” (and services of the same kind) are not the same kind of thing, or essentially the same as, “leasing, letting and rental services”.

148    By Ground 3 of the notice, Ms Bradnam contends that the finding of the primary judge that the trade mark “Cairns Harbour Lights” is not inherently adapted to distinguish the appellants’ services may be supported:

… on the grounds that the words “Cairns Harbour Lights” are part of the common heritage in that they are words which the public has the right to make honest use of for the sake of the signification which they ordinarily possess, namely:

a.    The words are descriptive of the geographical location connected with the services;

b.    The words are associated with the name of the building connected with the services;

c.    The words are directly descriptive of the character of the services provided.

Consideration OF THE ISSUES

149    Having regard to the many challenges by the appellants to the findings of fact and conclusions of the primary judge, it is useful to recall the following observations of French CJ, Bell, Keane, Nettle and Gordon JJ in Robinson Helicopter Company Inc v McDermott (“Robinson Helicopter”) (2016) 331 ALR 550 at [43] concerning the role of an intermediate Court of Appeal when conducting an appeal by way of rehearing:

The fact that the judge and the majority of the Court of Appeal came to different conclusions is in itself unremarkable. A court of appeal conducting an appeal by way of rehearing is bound to conduct a “real review” [Fox v Percy (2013) 214 CLR 118 at [25] per Gleeson CJ, Gummow and Kirby JJ] of the evidence given at first instance and of the judge’s reasons for judgment to determine whether the judge has erred in fact or law. If the court of appeal concludes that the judge has erred in fact, it is required to make its own findings of fact and to formulate its own reasoning based on those findings [Devries v Australian National Railways Commission (1993) 177 CLR 472 at 479-81 per Deane and Dawson JJ; Fox at [29] per Gleeson CJ, Gummow and Kirby JJ; Miller & Associates Insurance Broking Pty Ltd (ACN 089 245 465) v BMW Australia Finance Ltd (ACN 007 101 715) (2010) 241 CLR 357 at [76] per Heydon, Crennan and Bell JJ]. But a court of appeal should not interfere with a judge’s findings of fact unless they are demonstrated to be wrong by “incontrovertible facts or uncontested testimony” [Fox at [28] per Gleeson CJ, Gummow and Kirby JJ] or they are “glaringly improbable” or “contrary to compelling inferences” [Fox at [29] and Miller & Associates at [76]). In this case, they were not. The judge’s findings of fact accorded to the weight of lay and expert evidence and to the range of permissible inferences. The majority of the Court of Appeal should not have overturned them.

150    The appellants say that the primary judge properly recognised the guiding principles governing the issue of ownership of a trade mark “but, with respect, misapplied those principles”.

151    The principles, including some of the statutory provisions of the Act, are these.

Onus

152    The respondents bore the onus of proving, on the balance of probabilities, that CHL is not the owner of each trade mark: Lomas v Winton Shire Council [2003] AIPC 91-839 (“Lomas”) per Cooper, Kiefel and Emmett JJ at [36]. To the extent that CHL’s claim of ownership rested upon first use, the respondents had to make good their contention that CHL was not the first user of each mark. That onus rested “squarely” upon the respondents: Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 (“Food Channel”) per Keane CJ, Stone and Jagot JJ at [32] and [34].

153    It should be noted that in Lomas at [36] the Full Court not only concluded that the onus lay upon the opponent but that “on one view” the opponent may be required to establish that the applicant for registration was “clearly” not the owner, that is to say, a “heightened” standard of proof. These proceedings, of course, do not engage an appeal from the primary judge concerning a de novo objection hearing decision but rather orders of the primary judge concerning a cross-claim for cancellation although the ground contemplated by s 88(2)(a) is the s 58 ground of opposition. There is nothing in the text of s 88 or s 58 of the Act to suggest that a higher standard of proof beyond proof on the balance of probabilities is required. In Food Channel, the Full Court found it unnecessary to determine whether a higher standard of proof was required of an objector in deciding those proceedings: Food Channel at [32].

154    There is also some discussion in the authorities on the question of whether, in the context of an opponent’s s 58 contention of non-ownership of a trade mark in the applicant due to the opponent’s own prior use, an evidential onus “shifts” to the applicant for registration once the opponent makes out a “prima facie” case of prior use: see Food Channel at [37] to [40]. This question of a so-called “shifting evidential onus” has arisen most directly in the context of an issue of an applicant’s “lack of intention to use the trade mark”, an issue central to the ground of opposition under s 59 of the Act rather than s 58. In Food Channel at [39], the Full Court found “no evident reason” why a shift in the onus “could arise in proceedings involving a ground of objection under s 58 of the Act”. That follows for the good reason that an opponent or cross-claimant seeking to prove the applicant’s (or registered owner’s) lack of ownership of the trade mark on the ground of the opponent’s (or cross-claimant’s) prior use “either has a case or it does not” and thus it ought to discharge the onus cast upon it, on the balance of probabilities, without the distraction or obfuscation of any notion of a shifting evidential onus: Food Channel at [39].

155    On the special leave application (in which leave was refused) in Television Food Network GP v Food Channel Network Pty Ltd (B33 of 2010, 12 November 2010), French CJ (on the question of whether an onus shifts to the applicant for registration once an opponent makes out a prima facie case of a lack of intention to use) observed as follows at T, p 17, lns 717-721:

Does that [notion] carry with it more magic than the proposition that if the opponent has made out a prima facie case and the applicant either stands silent or does not put anything in which in any way responds to it, the registrar can find that, as a matter of inference, of the necessary factual matters that the ground is established.

156    We consider that in a cross-claim for cancellation of a registered trade mark, the cross-claimant bears the onus of proof; the dispositive standard of proof is on the balance of probabilities; no evidential burden shifts to the registered proprietor; and, if the necessary factual integers are proved up on the body of evidence put before the Court by the cross-claimant, and the registered proprietor chooses to stay silent and not join the evidential controversy, the Court might well find the onus of the cross-claimant discharged to the required standard. Plainly enough, there is no question of the registered proprietor standing silent in this case. The parties joined issue on all aspects of the respondents’ cross-claim. Ultimately, an assessment is made on the basis of all of the evidence, facts proven and inferences properly arising from proven facts. Since the respondents sought removal of each trade mark from the Register, they bore the onus of proving that CHL is not the owner of each trade mark, or put another way, the onus of disproving the claims of the registered owner, CHL: Food Channel at [61].

Some provisions of the Act

157    Section 27 of the Act is in these terms:

27    Application – how made

(1)    A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)    the person claims to be the owner of the trade mark; and

(b)    one of the following applies:

(i)    the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)    the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)    the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Note:    For use see section 7.

[emphasis added]

158    Section 7, relevantly, is in these terms:

7    Use of trade mark

(1)    If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

(2)    To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

(3)    An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

…

(5)    In this Act:

use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

[emphasis added apart from the bold italic emphasis in (5)]

159    Section 8 of the Act is, relevantly, in these terms:

8    Definitions of authorised user and authorised use

(1)    A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2)    The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

160    Subsections 3, 4 and 5 of s 8 address the extent to which the owner of a trade mark exercises quality control over goods and services or financial control over the relevant trading activities of a contended user of the trade mark.

161    Section 17 provides that a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”. The term “sign” is broadly defined and includes any combination of any letter, word, device, heading and 11 other matters of taxonomic description.

162    As to the rights given by registration, s 20 provides that if a trade mark is registered, the registered owner of the trade mark has, subject to Part 3 of the Act, the exclusive rights to use the trade mark and to authorise other persons to use the trade mark, in relation to the goods and/or services in respect of which the mark is registered. The registered owner also has the right to obtain relief under the Act if the trade mark has been infringed: s 20(2). As to infringement, s 120(1) of the Act relevantly provides that a person infringes a registered trade mark if the person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to services in respect of which the trade mark is registered and s 120(2) provides that a person infringes a registered trade mark if the person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to services of the same description as the services in respect of which the trade mark is registered. However, a person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did, is not likely to deceive or cause confusion. It will be necessary to return to ss 41 and 88 and other aspects of the Act in relation to infringement later in these reasons.

Authorship and first use

163    Returning to the Act, it will be recalled that CHL applied for registration of the trade marks in early 2009. It claimed to be the proprietor on the ground of the first use from early 2004 (virtually five years earlier). Ms Bradman’s use commenced on 31 October 2006 (and certainly by no later than July 2007: PJ at [191]). For the purposes of s 27(1) of the Act, CHL claimed to be the owner at the date of application and said that it was using each trade mark in relation to the services for which each mark is registered and that it had authorised another to use each trade mark in respect of those services.

164    Was CHL the owner of each trade mark at the date of application?

165    In Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601 at 627, Dixon J observed that an application to register a trade mark, so far unused, must equally with a trade mark the title to which depends on prior use, be founded on proprietorship. As to marks so far unused, his Honour observed that a basis of a claim to proprietorship has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and applying for registration. At 628, his Honour observed that one aspect of proprietorship is authorship of the trade mark and authorship involves origination of the relevant words or first adoption of them. Here, Mr Chapman was the author of the marks on behalf of CHL. He says CHL first used them from early 2004. As to these principles, the orthodoxy of these observations of Dixon J at 627 and 628 continues to sit conformably with s 27 (and s 58) of the Act which contemplates a claim of ownership based on origination or first adoption coupled with (at the date of application) either actual use or an intention to use the trade mark in relation to the goods or services.

166    In Moorgate Tobacco Co Ltd v Philip Morris Ltd [No. 2] (1984) 156 CLR 414 (“Moorgate Tobacco”), Deane J at 432 (Gibbs CJ, Mason and Wilson JJ agreeing at 421; Dawson J agreeing at 446) observed that prior use of a trade mark coupled with “local authorship” (by which Deane J is taken to mean authorship by “local first adoption” as the case was concerned with contended local first adoption of a foreign mark), sufficient to establish ownership of the trade mark, is “public use in Australia of the mark”, as a trade mark, in relation to goods (or services) “so as to indicate a connexion in the course of trade between the goods [or services] with respect to which the mark is used and that person”: see also Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (“Shell v Esso”) (1963) 109 CLR 407 at 425; Re The Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199.

167    However, as to public use, it is not necessary that there be an “actual dealing” in goods (or services) bearing the trade mark (or in the case of services, use in physical or other relation to the services: s 7(5)). It is sufficient if goods (or services) have been offered for sale under the mark or that the mark has been used “in an advertisement of goods [or services]”, as use in an advertisement is use “in the course of trade”: Shell v Esso at 422, per Kitto J (Dixon CJ, McTiernan, Taylor and Owen JJ agreeing); Moorgate Tobacco at 433-434, per Deane J.

168    An “existing intention to offer or supply goods (or services) bearing the mark in trade” is sufficient to establish use of the mark: Winton Shire Council v Lomas (2002) 119 FCR 416 (“Winton”), per Spender J at [36]. So too are “preparatory steps coupled with an existing intention to offer or supply goods [or services] in trade”: Winton at [38]. Although the use must be use “as a trade mark”, this need only be one purpose or aspect of the use: Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97 at [77] per Heerey, Allsop and Young JJ.

169    Where actual use is relied upon as establishing first use, a very small amount of use will suffice (Winton at [37]) although Deane J in Moorgate Tobacco at 432 thought the notion that “evidence of but slight use” would suffice, was a notion related to protecting a foreign owner (and user) of an overseas mark against someone seeking to appropriate the trade mark under the Act. Jacobs J in Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 600 observed that “any use at all on the Australian market will suffice” to establish first user.

170    Although at least some of these principles have been developed in cases concerned with establishing that evidence of de minimis or “but slight use” in Australia will be sufficient to protect a foreign owner and user of a mark from conduct by which another trader is seeking to appropriate the mark in Australia, by registration, there is no good reason to believe that the same qualitative evidence of first user would not be sufficient to establish prior user in a contest between two Australian based (or entirely local) claimants to ownership based on first use. There is either first use in one of them or not. The Act is not “a Torrens-title” system. It provides for registration of ownership not ownership by registration: PB Foods v Malanda Dairyfoods Ltd (1999) 47 IPR 47 at [78] – [80], per Carr J.

171    If CHL is the author of the words comprising the mark and the first user of each trade mark, as a trade mark, in relation to each of the services, so as to indicate a connection in the course of trade between the services (with respect to which the mark is used) and CHL, it is entitled to registration of each mark as owner in respect of each service.

172    Let an assumption be made that a registered proprietor’s ownership of a trade mark rests upon either first adoption of the trade mark coupled with use or an intention to use, or authorship of the mark similarly coupled with first use or an intention to use but the use or intention to use concerns a particular service. Is the right to registration of the mark confined to only that service?

173    In Colorado Group Ltd v Strandbags Group Pty Ltd (“Colorado”) (2007) 164 FCR 506, Kenny J said this at [6]:

… Ownership by first use is therefore ownership (or proprietorship) in relation to the goods or classes of goods on which the mark has been first used. The owner’s right to registration in this circumstance is not limited to the identical goods or classes of goods but extends to goods or classes of goods “of the same kind”: see Jackson & Company v Napper (1886) 35 Ch D 162 at 178 and Re Hick’s Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636 at 640.

174    See also her Honour’s further observations to this effect at [14].

175    In Colorado at [87], Allsop J (as the Chief Justice then was) identifies a range of authorities in which the notion of ownership for the purposes of the Act has been discussed and observes that few of these cases discuss “what might be said to be the width or scope of the right gained by use by reference to the similarity or closeness of the goods on which the mark was used to other goods” [emphasis added]. Reference is often made to the observations of Holroyd J (speaking for the Full Court) in Re Hick’s Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636 at 640 as the source of the principle that the scope of the right of registration of the trade mark, gained by use, extends to goods, classes of goods, services and classes of services meeting the description “the same kind of thing” as that for which use has been demonstrated. The observations of Stirling J in Jackson & Company v Napper (1886) 35 Ch D 162 are often said to be an illustration of the principle. However, that authority establishes the unsurprising proposition that use of a mark applied to small axes (called “hatchets”) carries with it a right to registration of the relevant mark in respect of larger axes under another name (which are the same kind of thing as hatchets except only bigger).

176    No doubt, for this reason, Allsop J regarded framing the scope of the right of registration of the trade mark by reference to the phrase “the same kind of thing” as carrying with it “a certain difficulty in fixing upon the proper frame of reference for the enquiry” as to the width or scope of the right gained by registration having regard to the similarity or closeness of goods or services: Colorado at [89]. Thus, the “aim of the enquiry” is to identify, “in a practical, common sense way”, the true equivalent kind of thing or article: Colorado at [89]. The proper approach, conformable with s 27 and s 58 of the Act, recognises ownership or proprietorship in the mark beyond the very goods on which the mark is used “to goods though not identical … yet substantially the same” or goods “essentially the same … though they pass under a different name owing to slight variations in shape and size”: Colorado at [89], Allsop J, adopting the observations of the learned text writers acknowledged at [89].

177    Accordingly, if on all the evidence before the primary judge, CHL is the owner of the trade marks “Harbour Lights” and “Cairns Harbour Lights” by reason of authorship of each trade mark in CHL in 2003 (as found) coupled with use of each trade mark as a trade mark, in the course of trade in commercial real estate agency services, as found through use of the two domain names in early 2004 (see PJ at [90] and [91]), CHL also gains a right of registration, through that use, of each trade mark for the true equivalent services of those services in the sense described at [176] of these reasons by Allsop J.

Commercial real estate agency services

178    The appellants contend that the primary judge “misapplied” the governing principles in failing to recognise the “overlap” between commercial real estate agency services and the services for which each registration was obtained. The respondents say that the leasing letting and rental services the subject of the registration are not true equivalents of the commercial real estate agency services the subject of first use by CHL. As to the principal advertisement relied upon by the appellants (the advertisement in the realtor published on 17 December 2005; Schedule 2 to these reasons), the respondents say that the trade marks used by the appellants in respect of each of the Class 36 and Class 43 services (PJ at [143]) are substantially different to each of the registered trade marks (consistent with the finding at PJ [144]).

179    The appellants contend that the primary judge correctly found that CHL is the owner of each trade mark in relation to commercial real estate agency services, through trade mark use of the domain names harbourlights.com and cairnsharbourlights.com resolving to CHL’s website from early 2004. The primary judge also found that from early 2005, CHL also used the domain name cairnsharbourlights.com.au: as to these matters, see PJ at [79]-[91], [165].

180    The primary judge also accepted that CHL is the owner of each trade mark in relation to hotel services by reason of registration of each trade mark in early 2009 (on 21 January 2009 and 21 April 2009 as earlier mentioned).

181    However, the primary judge found that Ms Bradnam was the first user of each trade mark from 31 October 2006 in respect of leasing, letting and rental services.

182    As to the “overlap”, the appellants say that the primary judge’s division of the services yields anomalous results “inconsistent with common sense” because, they say, commercial real estate agency services and leasing, letting and rental services “plainly overlap”. They say that the distinction contended for by the primary judge is “unexplained and unrealistic”.

183    The primary judge observes at [61] of the reasons that there was little or no dispute that CHL was the owner of each trade mark, by first use, in relation to commercial real estate agency services “in connection with the sale of lots”.

184    The primary judge, however, found that a relevant distinction exists at least as a matter of “convenience” for the purposes of the proceeding (see PJ at [66]) between commercial real estate agency services on the one hand and, relevantly so far as the finding about Ms Bradnam’s first use is concerned (as to which see PJ at [206]; and [99] to [115] of these reasons), leasing, letting and rental services, on the other hand.

185    The description leasing, letting and rental services was regarded by the primary judge as an aggregation of the services set out at [35](a) to (h) of these reasons. The primary judge also observes that there was “little evidence and attention directed to what most of those services entail”: PJ at [62]. This lack of evidence concerning the content of each of the services and especially the “width” or “scope” of the services comprehended by the phrase commercial real estate agency services makes it difficult to assess whether services, described by the primary judge as rental and letting services or the wider phrase adopted by his Honour, leasing, letting and rental services (as to which see [36] to [44] of these reasons), represent services that are or could be provided by a person providing commercial real estate agency services so as to enable a conclusion to be reached that either rental and letting services or leasing, letting and rental services are “true equivalents” of commercial real estate agency services. Thus, the appellants are left in a position where, in this appeal, they say that “common sense” dictates that commercial real estate agency services and leasing, letting and rental services “plainly overlap”.

186    The Court may be able to look at the language of a trade mark registration for goods and decide whether, for example, handbags, wallets and purses are (or are not) goods of the same kind as backpacks (one of the questions in issue in Colorado), but the question of whether one service is of the same kind as another or whether some of the component parts of a service are of the same kind as component parts of another service requires an understanding (usually by reference to evidence) of the content of the service in question and ultimately findings about that matter based on the evidence.

187    It should be noted, however, that as a matter of principle at least, the primary judge ought to have made findings about the content of the services described as commercial real estate agency services (for which first use was found in CHL) and have then considered and made findings about the content of each of the other Class 36 services (see [3] of these reasons) and each of the Class 43 services (see [4] of these reasons) for which each trade mark was registered so as to then be in a position to decide and find whether any and if so which of those services are “true equivalents” of commercial real estate agency services.

188    The primary judge did not take that course because his Honour concluded that no distinction existed between a number of the services and thus many of them could be treated as falling within the description rental and letting services and in a wider sense leasing, rental and letting services while others, “commercial real estate agency” services and “hotel” services represented quite different services. That was an evaluative judgement the primary judge made by looking at the descriptive language selected for each service within the Class 36 and Class 43 services doing the best his Honour could in the face of “little evidence” or “attention” directed to the content of each service.

189    It might well be open to conclude, as a matter of language, that no apparent distinction exists between services described as: apartment letting agency services; apartment rental services; rental of accommodation services; rental of apartments services; accommodation letting agency services (holiday apartments); accommodation reservation services and booking services for accommodation. However, it would in any event remain necessary to make findings as to whether those services (or any aspect of the content of those services) are true equivalents of commercial real estate agency services. The primary judge regarded commercial real estate agency services as something quite different from the other categories of services represented by the cluster, leasing, rental and letting services, and hotel services.

190    We do not accept that it is open to conclude as a matter of judicial knowledge, absent any evidence, that the relevant services, in fact, “plainly overlap”. One imagines that there is some degree of overlap between “commercial real estate agency services” and aspects of some of the other services but the degree, boundaries and measure of the overlap are unclear. It seems to us that the resolution of any ambiguity about that matter would necessarily require evidence going to the degree, boundaries and measure of any overlap. Accepting for the moment the primary judge’s finding that CHL’s first use of each trade mark, as a trade mark, was in connection with only the promotion of commercial real estate agency services (for the sale of apartments), we find no basis for disturbing the finding, in effect, that that use did not carry with it a right of registration of each trade mark for each of the other Class 36 and Class 43 services described at [189] of these reasons.

191    The more fundamental matter, however, is whether the primary judge fell into error in finding, as a fact, that CHL’s use of the domain names harbourlights.com.au and cairnsharbourlights.com, in and from early 2004, constitutes use of each mark, as a trade mark, only in relation to the sale of lots rather than each of the services for which each trade mark was ultimately registered in 2009.

192    The primary judge found, as a fact, that Mr Chapman operated a website to promote “sales of apartments” and used each trade mark in respect of the “sales of lots”: PJ at [85]. CHL used the domain names to “resolve to its website” (PJ at [80]), used for the sale of apartments. The primary judge rejected Mr Chapman’s evidence of any wider use: PJ at [86]-[90]. We see no basis for disturbing this finding of express limited use of the domain names. The findings are not demonstrated to be wrong by incontrovertible facts or uncontested testimony or rendered glaringly improbable or contrary to compelling inferences.

193    There is, however, an anterior matter going to intention to use.

194    The appellants say that CHL is the proprietor of each trade mark not just by authorship and first user but because: first, CHL conceived or authored the term “Harbour Lights” in December 2003 (an uncontested matter); second, Mr Chapman held an intention from December 2003 to operate, when built, the Managed scheme as a hotel; third, he held an intention from December 2003 to design the Residential Scheme apartments for use by owners or “longer term tenants”; fourth, he acted on his intention by selling caretaking and letting rights to Mirvac on 21 December 2004 for both Schemes; fifth, he acted upon his intentions by using, from “early 2004”, the two domain names earlier mentioned which “resolved” to CHL’s website from early 2004 (and also used cairnsharbourlights.com.au from “early 2005”).

195    The appellants contend that irrespective of whether actual use of each domain name resolving to CHL’s website was confined to only the sale of lots, authorship in CHL coupled with an intention to use each trade mark (from at least early 2004) in connection with the suite of services to be provided, over time, arising out of the development of the complex (with its sales, rental pool of apartments across both Schemes and hotel services), is sufficient to render CHL the proprietor of each trade mark for each of the services: reliance is placed on Winton. The implementation steps taken by CHL to develop the complex with those planned features and the partial use of each trade mark within the relevant domain name, is, in effect, said to be probative of a subsisting intention from the outset in connection with all services albeit that actual use was confined to use in connection with the sale of lots.

196    However, it seems tolerably clear that the appellants at trial were relying upon actual use as the critical element going to proprietorship coupled with CHL’s authorship of the mark. The appellants at trial relied upon the evidence of Mr Chapman that there was an intention to use the mark more widely and that there had been wider use. However, that evidence was not accepted by the primary judge and thus the case based upon intention to use coupled with authorship was not made good. The appellants rested their case principally upon actual use.

197    As already mentioned, it is clear that there need not be a transaction (an actual dealing in goods or the provision of services) to ground “actual use”. Equally clearly, an offer to provide the services or an advertisement for the services is enough. Use of a domain name incorporating a trade mark taking an inquirer to a service provider’s website is, in the modern world, a more ubiquitous form of advertising goods or services than a traditional “advertisement” of the kind about which Kitto J was speaking in Shell v Esso. However, there must be a relationship between the website offer (using the trade marks in domain names to take the inquirer to the site) and an identified service. Where a trade mark might be used in connection with a range of services within one or more classes of services, the use of the domain names (using the relevant trade marks) taking an inquirer to a website would need to be taking that inquirer to an offer on that site to provide the relevant service (among many not just sales services) to give rise to proprietorship in CHL for that service. Here, the only service “offered” was the sale of lots (as found).

198    In this case, at least, it follows that authorship coupled with a contended intention to use each trade mark in respect of all services coupled with actual use in the form of domain names linked to a website limited to only the sale of lots, on the evidence, does not give rise to proprietorship in all of the contended service uses. The real question as to proprietorship, to the extent that it rests upon use of the domain names linked to CHL’s website in connection with the sale of lots thus constituting an advertisement for the offer of “commercial real estate agency services”, is whether services beyond the sale of lots are “true equivalents” of those services.

199    However, the advertisements are in a different category. The advertisements are said to show use of each trade mark, as a trade mark, in the course of trade in each of the relevant services for which each trade mark is registered.

The realtor advertisement of 17 December 2005

200    At [143], the primary judge accepts that the mark “The Sebel Harbour Lights Cairns” was used as a trade mark in relation to each of the Class 36 and Class 43 services in the advertisement: see [70] to [82] of these reasons and Schedule 2. We see no reason to disturb that finding. The finding is not shown to be wrong by incontrovertible facts or uncontested testimony and nor is the finding glaringly improbable or contrary to compelling inferences: Robinson Helicopter at [43]; [149] of these reasons.

201    At [144], the primary judge observes that the next question is whether “either of the two marks” used in the advertisement is substantially identical to “Harbour Lights” or “Cairns Harbour Lights”. It necessarily follows that although the primary judge does not refer to the composite mark (as found), in [143] of the reasons, the finding at [143] equally applies to the composite mark. That conclusion is reinforced by the primary judge having made the observation at [144] that neither use in the advertisement was substantially identical to “Harbour Lights” or “Cairns Harbour Lights”, because one use was use of a composite mark (as found) and as to “The Sebel Harbour Lights Cairns”, it was substantially different from either registered trade mark for the reasons given by the primary judge at [130]: PJ at [144].

202    As to those reasons at [130], the primary judge found that that use constituted a “single phrase” substantially different from either “Harbour Lights” or “Cairns Harbour Lights”. The words “The Sebel” were found to be “distinctive” and “not merely descriptive”: PJ at [130] and [132].

203    As to the composite mark, the introduction of the device and the words “A New Star Shines” in conjunction with “HARBOUR LIGHTS” was found to be so significant that the composite mark (as found) could not be described as “substantially identical” to either “HARBOUR LIGHTS” or “CAIRNS HARBOUR LIGHTS”: PJ at [144] and [111].

The composite mark (as found) and used in the realtor advertisement

204    Is the depiction shown at [53] of these reasons and shown on Schedules 1, 2 and 3 a “composite mark”?

205    The depiction is comprised of three elements.

206    The first unmistakable component is the trade mark “HARBOUR LIGHTS”. It is presented in large emphatic capital letters. As an element of the arrangement of the three features, it is the dominant cognitive cue. If the viewer is to take away a key feature in connection with the Class 36 and Class 43 services, it is the badge of origin “HARBOUR LIGHTS” because those are the words, or mechanism by which, a person seeking out the services will recognise a way of connecting with the person providing the services in the course of trade.

207    The second feature of the arrangement consists of a line of five stars. The reader might well be invited to think that “HARBOUR LIGHTS” embodies, in relation to the Class 36 and Class 43 services (the subject of the use (as found) of the composite mark (as found)), qualities conventionally or often anecdotally described as “five star”. The stars have a gold colouration and are not insignificant in their size rising from smaller to greater at the centre and then smaller again.

208    The third element is the barely noticeable piece of text, “A New Star Shines” sitting under the words “HARBOUR LIGHTS”. The primary judge described this arrangement of features as a composite mark: see [53] to [57] of these reasons. The reasoning leading to that conclusion was this. The words “HARBOUR LIGHTS” together with the device of the five gold stars and the words “A New Star Shines” formed a composite mark because all three elements were connected (or interconnected): the image of the five stars alluded to the word Lights and the words “A New Star Shines” alluded to the stars device and also the word Lights. Thus, the introduction of the stars device and the words “A New Star Shines” were “distinguishing features” and “not mere descriptors”: PJ at [108].

209    It should be noted that, first, the composite mark (as found) prominently presents the trade mark words themselves “HARBOUR LIGHTS” to the viewer engaging with the arrangement of features and second, the words “A New Star Shines” are presented in the arrangement of features in very diminished text (in the nature of a slogan) under the emphatic capitalised text of the trade mark words “HARBOUR LIGHTS”. The five stars are, plainly enough, more prominent than the text “A New Star Shines” and seem, in some fashion, to herald “HARBOUR LIGHTS” to the eyes of the viewer.

210    In E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 (“Gallo Winery v Lion Nathan”), Gallo was the registered proprietor of the trade mark “BAREFOOT” in respect of wines. Gallo contended at trial that Lion Nathan had infringed its trade mark. In a cross-claim, Lion Nathan sought removal of the trade mark from the Register on the ground of non-use during a relevant three year statutory period. Lion Nathan succeeded on its cross-claim and the Full Court of the Federal Court upheld that finding. The question before the High Court was whether Gallo had demonstrated at trial that it (or its predecessor in title) had used the trade mark in good faith in the three year statutory period. To the extent that there had been use, the labelling under which the wine was offered for sale in Australia showed, in addition to the word “BAREFOOT”, a stylized device of a bare foot: see the depiction at Schedule 4.

211    Their Honours, French CJ, Gummow, Crennan and Bell JJ said this at [67] to [69]:

67    Lion Nathan contended before the primary judge that use of a trade mark consisting of the word BAREFOOT in combination with the device was not use of the registered trade mark, which was the word BAREFOOT simpliciter. The primary judge correctly rejected this submission. The Full Court did not deal with this issue.

68    In support of this contention Lion Nathan relied on [Colorado]. The registered trade mark in that case was for the word “Colorado”, which, by reason of its geographical significance, was not inherently adapted to distinguish the owner’s goods from the goods of other persons as required by s 41(3) of the [Act]. As noted by Gyles J, it was difficult to obtain registration of a geographical name as a trade mark under the [Act] by reason of s 24(1)(d) of that Act. The trade mark for the word “Colorado” had been used in conjunction with a mountain peak device, which reinforced the geographical connotation of the word. Allsop J found that the mark used was a composite mark and that the mountain peak device was not a mere descriptor but a distinguishing feature.

69    This is to be contrasted with the position in this case. The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which “do not substantially affect the identity of the trade mark”. [See [158] of these reasons as to s 7(1) of the Act.] Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).

[emphasis added]

[citations omitted]

212    We respectfully think that the primary judge has fallen into error (at [144] cross-referenced to the reasoning at [111] of the primary judge’s reasons) in the application of the guiding principles derived from Gallo Winery v Lion Nathan.

213    In our view, we strongly doubt whether the five gold stars appearing above the words “Harbour Lights” qualifies as a device. In any event, even if the adoption of the five gold stars constitutes a device, the device does not substantially affect the identity of the trade mark in the words alone. The device is simply an addition to the registered trade mark with the result that use of the trade mark with the five gold stars nevertheless constitutes use of the registered trade mark for the purposes of s 7(1) of the Act. We respectfully disagree with the primary judge that the addition of the five gold stars in combination with the de minimis words “A New Star Shines” gives rise to such a degree of interconnection and allusion, one to the other, as to substantially affect the identity of the trade mark in the words alone.

214    It follows by reason of the primary judge’s findings at [141] to [143] that CHL is the first user of the trade mark “Harbour Lights” in the course of trade in respect of each of the Class 36 and Class 43 services and is thus the owner of the trade mark “Harbour Lights” in respect of each of the Class 36 and Class 43 services.

215    The realtor advertisement also incorporates the following boxed image (see Schedule 2):

216    The advertisement also refers to the website address harbourlights.com.au.

217    The appellants also emphasise that the advertisement at its centre point says in bold type:

The Sebel Harbour Lights Cairns is the star performer in luxurious waterfront managed apartment investments.

218    They also emphasise the words depicted in the advertisement:

Developed by Cairns Harbour Lights Pty Ltd

219    The appellants say that the use of the name “Cairns Harbour Lights Pty Ltd” identifies the source or origin of the Class 36 and Class 43 services offered by the advertisement (as found) and that that name is substantially identical with the trade mark “Cairns Harbour Lights”.

220    Is the use of the image at [215] of these reasons use of a mark substantially identical to the trade mark “Harbour Lights”?

221    The primary judge thought not for the reasons mentioned at [67], [68] and [94] of these reasons. In reaching that conclusion, the primary judge relied upon the observations of Gummow J in Carnival v Sitmar 120 ALR 495 at 513; 31 IPR 375 at 391. In that case, Carnival contended that Sitmar was not the proprietor of a series of trade marks the subject of Carnival’s opposition (for example, two of the marks were “Sitmar’s Funship” and “Fairstar The Funship”), on the ground (among others) that Sitmar could not be the “proprietor” by first use as the trade mark used was substantially different to either of the above two trade marks. Gummow J observed that “on a question of proprietorship” while no material distinction could be drawn between use of “Funship” and “Fun Ship” (or the addition of the definite article or the use of the plural), prior use of “Fun Ship” is, “for this purpose, a substantially different trade mark to ‘Sitmar’s Funship’ and ‘Fairstar The Funship’”.

222    The primary judge concluded that the words “The Sebel Harbour Lights” is a “single sign” to be viewed as a “single phrase” with the words “The Sebel” adding distinctiveness to the single phrase which represented use of a substantially different trade mark to “Harbour Lights” or “Cairns Harbour Lights”: PJ at [130] and [132].

223    If the question before the primary judge had simply been a discrete one of whether prior use of “The Sebel Harbour Lights” was use of something substantially different to the trade mark “Harbour Lights”, that would be one thing and the observations of Gummow J in Carnival v Sitmar would, on a question of proprietorship in that circumstance, be persuasive. In this case, however, the prior use was contained in an advertisement that contained a number of features. First, the advertisement displayed “HARBOUR LIGHTS” in another place within the advertisement although in a different format (which we consider not to be a composite mark). Nevertheless, the viewer is drawn to the words “HARBOUR LIGHTS” as a cognitive cue in the advertisement by other means as well. Second, the format adopted at [215] of these reasons separates out the words “THE SEBEL” and underneath those words, the words “HARBOUR LIGHTS” appear. In the format adopted, “HARBOUR LIGHTS” is another cognitive cue. Again, the viewer’s attention is drawn to the mark “HARBOUR LIGHTS” although, at this point in the advertisement, it is positioned in association with the hotel operator’s own trade mark “THE SEBEL”. The presentation of the two marks (as described by the primary judge at [124] and [125], although in the context of the May 2005 brochure), “THE SEBEL” and “HARBOUR LIGHTS” in that way is not simply a single continuous phrase of text or a composite or compound expression relevantly analogous to a substantial lack of identicality found in the comparison between words such as “Funship” and “Sitmar’s Funship” or “Funship” and “Fairstar The Funship”. Third, the advertisement also contains a reference to the words “Cairns Harbour Lights Pty Ltd” as the name of the developer not “The Sebel Cairns Harbour Lights Pty Ltd”.

224    The primary judge accepted that it was not uncommon in some industries for two trade marks to be used in conjunction with goods or services. Sometimes one mark is applied to, for example, the packaging for all goods emanating from a particular manufacturer or seller together with use of a product specific mark on packaging. Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH (2001) 190 ALR 185 is an example of a case where the trade mark for the cereal-based product was “Cheezy Twists” with another Aldi (house) mark, “Chazoos” sitting above the product specific mark. Hill J and Lindgren J each applied the test of whether, having regard to the way in which “Cheezy Twists” was displayed on the packaging, “Cheezy Twists” was used as a badge of origin on the product and at [26], per Hill J, while:

… [i]t is no doubt true to say that the word “Chazoos”, with or without logo, is used as a trade mark, the present is a case where two trade marks are used, one a generic word used over a product range and the other used as a badge of origin in respect of a particular product.

225    In the context of the advertisement overall, we would not regard the presence of the mark “The Sebel” in the depiction at [215] of these reasons as conveying use of a trade mark which is not substantially identical to the mark “Harbour Lights”. The advertisement uses the words of the trade mark and although those words are immediately below the mark “The Sebel” (the mark of an accommodation operator), the use of that mark simply tells the viewer that there is a relationship between the services badged “Harbour Lights” in the advertisement, the developer and, in some way or other, an accommodation operator described by reference to the operator’s trade mark “The Sebel”.

226    Has there been use of the trade mark “CAIRNS HARBOUR LIGHTS”?

227    As to the realtor advertisement, the appellants rely upon use of the company name which, deprived of the suffix “Pty Ltd”, reveals “Cairns Harbour Lights” in connection with the development itself. The findings of the primary judge are confined to an acceptance of use by CHL of the so-called composite mark and the image at [215] of these reasons, as trade marks, in connection with each of the Class 36 and Class 43 services (although those uses are said to be substantially different to either trade mark). There is no finding that use of the company name was use of the trade mark “Cairns Harbour Lights” in connection with each of the Class 36 and Class 43 services. We are invited to conclude (against the submissions of the respondents) that the company name was used as a trade mark in that advertisement and thus used in the course of trade in connection with each of the services (as found) and that its substantial identicality with the words of the trade mark “Cairns Harbour Lights” constitutes first use, as a trade mark, of that mark.

228    As to the question of whether there has been use of the mark, the Full Court said this in Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97 at [77], per Heerey, Allsop and Young JJ:

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin. …

[emphasis added]

229    Their Honours then cite a range of well-known authorities which plainly enough support that proposition.

230    The question then is whether the reference in the advertisement to “Developed by Cairns Harbour Lights Pty Ltd” is a use of “Cairns Harbour Lights” as a trade mark. The reference to the company name may simply describe and identify an entity responsible for developing the complex albeit that its name adopts, for all practical purposes, the words of the trade mark. That advertisement may be simply conveying that the services to which the advertisement refers (as found) are provided in connection with the trade mark “HARBOUR LIGHTS” and that the developer of the complex is a particular entity.

231    If it is correct to disregard the suffix “Pty Ltd”, can it be said, objectively viewed, that one aspect of the presence of the words “Developed by Cairns Harbour Lights” in the advertisement immediately beneath (for all practical purposes) the mark “HARBOUR LIGHTS”, is to distinguish, in the course of trade, the services (so advertised) from the services of others also by reference to the mark “Cairns Harbour Lights”?. Are the words, objectively viewed, operating as a badge of origin? We think not. We do not regard use of the company name as anything other than a statement that the entity which developed the complex is a company called “Cairns Harbour Lights Pty Ltd”. The point of distinction conveyed by the advertisement is that the services of the entity CHL are distinguished from those of others in the course of trade by use of the trade mark “HARBOUR LIGHTS”. The company name, even deprived of the suffix, is not operating as a badge of origin. The badge of origin conveying the relevant degree of differentiation in the course of trade is “HARBOUR LIGHTS”.

232    As to the other advertisements and brochures relied upon by the appellants, none of the material contains a reference to the use of the words “Cairns Harbour Lights” as a trade mark in the course of trade to distinguish the services of CHL. There is simply no clear example of such use, of those words, as a badge of origin except in relation to the following matter. First use of the words “Cairns Harbour Lights” does arise in CHL in connection with the sale of lots or apartments (commercial real estate agency services) from early 2004 by use of the domain name cairnsharbourlights.com and, from early 2005, by use of the domain name cairnsharbourlights.com.au. There was no contest that CHL is the owner of each mark in connection with hotel services. From early 2009, Mirvac/Accor began to use the mark “Cairns Harbour Lights”.

233    The primary judge accepted that Ms Bradnam’s use of the domain names cairnsharbourlights.com.au, harbourlightscairns.com.au and harbourlightscairns.com in connection with the services she advertised on her website from 31 October 2006 (or by no later than July 2007) was use of domain names substantially identical with “Harbour Lights” and “Cairns Harbour Lights”. That followed because, disregarding prefixes and suffixes in each domain name, each domain name was substantially identical with “Harbour Lights” as the word “Cairns” is merely a geographical reference adding no distinctiveness to the distinctive words “Harbour Lights” and one domain name used “Cairns Harbour Lights” in any event and another two simply moved the word “Cairns” in the arrangement of the words of the domain name: PJ at [189] and [190]. The use was in respect of each of the Class 36 and Class 43 services except for “commercial real estate agency services”; “agency services for the leasing of real estate properties”; and “hotel services”: PJ at [191]; that is, the use was in connection with letting and rental services. However, from 10 August 2007, Ms Bradnam otherwise used the mark “HARBOUR LIGHTS” in connection with leasing, letting and rental services: PJ at [200] and [206]. These remarks at [226] to [232] of these reasons are directed to the question of first express use of the words “CAIRNS HARBOUR LIGHTS” as a trade mark in the course of trade in particular services. The observations of the primary judge in relation to the role of the word “Cairns” in the domain names (as noted above) raises, in a different context, whether CHL is to be regarded as the first user of the mark “CAIRNS HARBOUR LIGHTS”, not on the footing of express use of the configuration of those three words, but rather on the footing that “Cairns” is merely a geographical reference and that “CAIRNS HARBOUR LIGHTS” is substantially identical with “HARBOUR LIGHTS”. It seems to us that the position is this. The use of the words “HARBOUR LIGHTS”, as a badge of origin in the course of trade by the appellants in each of the Class 36 and Class 43 services, pre-dates by means of the realtor advertisement of 17 December 2005 (at the latest), use by Ms Bradnam of her domain names (linked to her website) in relation to letting and rental services. Is use by the appellants of “HARBOUR LIGHTS” in respect of each of the Class 36 and Class 43 services (at least from December 2005) to be regarded as use of the trade mark “CAIRNS HARBOUR LIGHTS” on the footing that “CAIRNS HARBOUR LIGHTS” is substantially identical with “HARBOUR LIGHTS”? The answer to that question turns upon whether a total impression of similarity emerges from a comparison between the two marks having regard to the principles discussed earlier in these reasons. We think that use of the mark “HARBOUR LIGHTS” is use of a mark substantially identical with “CAIRNS HARBOUR LIGHTS” so as to render CHL the owner or proprietor of the trade mark “CAIRNS HARBOUR LIGHTS”. Thus, a claim to proprietorship of “HARBOUR LIGHTS”, as a matter of principle, extends to ownership of “CAIRNS HARBOUR LIGHTS”: Carnival v Sitmar 120 ALR 495 at 513. In the next session in these reasons we discuss the question of whether each mark is capable of distinguishing the services of the applicant for registration. We note that the mark “HARBOUR LIGHTS” is inherently adapted to distinguish the registered services of the appellants from the services of others and that “CAIRNS HARBOUR LIGHTS” is so adapted due to the presence of “HARBOUR LIGHTS” within the conjunction of those three words. Although the question of proprietorship, having regard to the authorities discussed earlier and the observations of Gummow J in Carnival v Sitmar, is determined having regard to questions of substantial identity between two marks and, on this question, capacity to distinguish is not the question in issue, we nevertheless note that “HARBOUR LIGHTS” is inherently adapted to distinguish and so too is “CAIRNS HARBOUR LIGHTS”. Having regard to our findings concerning the realtor advertisement, it is not necessary to consider the various contentions concerning the remaining examples of prior use by reference to the other nominated advertisements.

Is either trade mark capable of distinguishing the services of the applicant for registration?

234    The next question is whether either mark has the capacity to distinguish the services of the applicant from the goods or services of other persons for the purposes of s 41 of the Act. As already mentioned, the primary judge began the analysis of that question by examining the ordinary signification of the words “Harbour Lights” to persons who will use or trade in the services to which the trade mark is applied and that group, in his Honour’s view, consisted of lot owners, travel agents and potential guests: PJ at [227].

235    It is convenient to now set out s 41(1) to (4) of the Act:

41    Trade mark not distinguishing applicant’s goods or services

(1)    For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

(2)    An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (“designated goods or services”) from the goods or services of other persons.

(3)    In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)    Then, if the Registrar is still unable to decide the question, the following provisions apply.

236    On the question of whether a trade mark (relevantly here, a word or words) is capable of distinguishing an applicant’s services in respect of which the mark is registered from the goods or services of other persons, we apply the following principles:

(1)    In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2)    In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) (1964) 111 CLR 511 per Kitto J at 514.

(3)    The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4)    Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5)    The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6)    In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

(7)    In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8)    Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

(9)    Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10)    In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11)    Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12)    The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].

237    The primary judge considered that the words “Harbour Lights”, as a matter of ordinary signification, when used in connection with accommodation services, do not directly describe a characteristic of those services. Rather, they make a “covert and skilful allusion” to the services. Thus, viewed from the perspective of Liv and Accor as traders, the words “Harbour Lights” are not descriptive of the services traders would wish to provide: PJ at [229]. In that sense, the primary judge was applying the test from the perspective of honest traders and seeking to determine any possible impairment of their rights: see [236] (3), (6) and (7) of these reasons.

238    The primary judge rejected the notion that because “Harbour Lights” is also the name of the building and the titles scheme, it is descriptive of either a geographical name or a geographical location. The primary judge reasoned that the circumstance that the services are connected with real property (a building complex) and involve the provision of a right to occupy, does not affect the inherent adaptability of the words to distinguish. The primary judge also rejected a contended application of the principle identified by Kitto J at 514 in Clark Equipment (see [236](3) of these reasons) to the effect that “Harbour Lights” is not inherently adapted to distinguish the services of the appellants because there is a likelihood that other traders would want to use the words “Harbour Lights” in connection with similar services in the exercise of the “common right of the public” to make “honest use” of those words, forming part, it was said, of “the common heritage” for the sake of the signification the words ordinarily possess. The primary judge reasoned that Kitto J’s reference to “words forming part of the common heritage” honestly used for the sake of the signification which “the words ordinarily possess”, contemplates words forming part of the common heritage of the public at large such as the name of a city or town or other broader geographical locations and also commonly used descriptive words rather than the personal interests of a small section of the community drawn together because they enjoy particular rights concerning a single discrete project: PJ at [235] and [236].

239    The primary judge also notes that registration of the trade mark “Harbour Lights” does not prevent lot owners from using the words to describe the physical location of their apartment should they wish to let the apartment: PJ at [237]. Thus, the primary judge concluded that “Harbour Lights” is inherently adapted to distinguish the services of the appellants.

240    Each of these arguments was put to us in the course of the appeal by the respondents.

241    We see no error in the reasoning of the primary judge. The reasoning is consistent with the application of the principles set out at [236] of these reasons. In addition, we note that in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 the Full Court considered the question of whether the name applied to a 42 storey building in central Sydney called “The Chifley Tower” privately owned by MID and located in an area of land called “Chifley Square” would be regarded as an analogue of a geographical name of a town, suburb, district, region or State, for the purpose of determining whether relevant traders could invoke the qualification described by Kitto J in Clark Equipment noted at [236](3) of these reasons. The Full Court, Burchett, Sackville and Lehane JJ said this at pp 250 and 251:

We rather doubt that any indication is to be found in the judgment of Kitto J in Clark Equipment that he would have regarded a large privately owned office building as analogous to a large and important industrial town or district or to a smaller town or district which is a seat of manufacture of goods of a particular kind. To say that is not conclusively to answer Touraust’s submission. But it does suggest that it may not be so simple a matter as to say that, as in a large town, so in a large office building, there will be found numerous traders who may wish to describe their goods or services by reference to their place of business.

MID acquired a building approaching completion and chose a name for it; at about the same time MID applied for the first of its registered marks in relation to property management services intending, no doubt, to provide those services, principally if not exclusively, in relation to the building. The Chifley Tower is not part of the common heritage in the sense that a town, suburb or municipality is. Chifley Plaza perhaps might answer that description, but the registered trade mark does not incorporate that expression. There is no public policy against MID restricting those who have come to occupy space within its building as to the way in which they use its name in connection with goods they produce or services they provide. That being so, it is not easy to see, in our view, why any separate public policy, of the kind identified by Kitto J, should apply so as to deprive the name selected by MID of a capacity to distinguish, in circumstances where there could be no legitimate reason for persons other than those carrying on business within The Chifley Tower to use its name in connection with their goods or services.

As to traders operating from The Chiefly Tower itself, they would not infringe MID’s registered trade mark if they used the name “Chifley Tower” in good faith as the name of their place of business: see s 122(1)(a)(i) of the Act. Moreover, it cannot be said that it is likely that a trader operating from The Chifley Tower will, without impropriety, wish to use the name “Chifley Tower” in relation to property management services (other than as the trader’s place of business). The position is different from that of the town, suburb or municipality, since it could reasonably be expected that traders might wish to use the names of those geographic locations in connection with their services.

242    Thus, the attack on MID’s registration of its trade marks failed.

243    In our view, the underlying principle reflected in the reasoning quoted above applies to the circumstances of the present case. Apartment owners enjoy the right to describe the location of their apartment by reference to the words “Harbour Lights” and they enjoy the right to let their apartment so described at that place. Neither they, nor any third parties, enjoy the right to provide the registered services from the building or from any other place by reference to the words “Harbour Lights” based on any notion of invoking, in good faith, the use of the words on the footing that, because the complex is called “Harbour Lights”, the words form part of the common heritage in the nature of a town, suburb or municipality.

244    The words are, of course, the name of a particular building complex configured in the way earlier described and thus the words necessarily identify (like all names attached to a particular building) a place on the planet as distinct from other places but that does not mean that the words thus become part of the “common heritage” giving rise to a “likelihood” that other traders would want to make honest use of the words in connection with similar services as an expression of the exercise of a “common right of the public”. The primary judge correctly concluded that the trade mark is inherently adapted to distinguish the designated services of the owner from the services of others.

245    As to the trade mark “Cairns Harbour Lights”, the primary judge regarded those words as being in “a different category” to the trade mark “Harbour Lights” and approached the matter in the following way.

246    Although the words “Harbour Lights” make a “covert and skilful allusive reference” to the registered services, a person looking at the words “Cairns Harbour Lights” for the first time, in relation to accommodation leasing, rental or letting services, would understand those words to refer to a place being either the “city of Cairns” or “Cairns Harbour”: PJ at [241]. Such a person would understand that the accommodation being offered is either in the “area” of the Cairns Harbour or in the city of Cairns: PJ at [241]. Thus, the primary judge concluded that there is a “direct” and “not merely allusive” reference to a “characteristic” of the relevant services, namely, the “location” of the accommodation offered: PJ at [241]. That being so, the primary judge then considered the application of (a variant of) the principle identified by Kitto J in Clark Equipment as described at [236](3) of these reasons. The primary judge asked the question: are other traders, in the ordinary course of their business and without any improper motive, likely to use a mark resembling “Cairns Harbour Lights” in connection with their own services?: PJ at [242].

247    The primary judge concluded that other traders “may well wish to do so”: PJ at [242]. The primary judge observed that it is “not hard to imagine that an accommodation provider may wish to describe their services by incorporating the words ‘Cairns Harbour’”: PJ at [242].

248    The primary judge concluded that the inclusion of the word “Lights” means that the words “Cairns Harbour Lights” are, to some extent, inherently adapted to distinguish the designated services from the services of others. In other words, the primary judge, in deciding the question of whether or not “Cairns Harbour Lights” is capable of distinguishing the designated services from the services of others, first took into account the “extent” to which the trade mark is inherently adapted to distinguish the designated services: the s 41(3) requirement. As contemplated by s 41(4), the primary judge was unable to decide the question posed by s 41(3) and concluded that the trade mark is, however, “to some extent” inherently adapted to distinguish the designated services from the services of others by reason of the addition of the word “Lights” to the conjunction “Cairns Harbour” so as to bring about the words “Cairns Harbour Lights”. That conclusion engaged s 41(5) of the Act: PJ at [244].

249    It is convenient to now set out s 41(5) and (6) of the Act:

(5)    If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)    the Registrar is to consider whether, because of the combined effect of the following:

(i)    the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)    the use, or intended use, of the trade mark by the applicant;

(iii)    any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)    if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)    if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

(6)    If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)    if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)    in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

[emphasis added]

250    The primary judge concluded that although the word “Cairns” and the words “Cairns Harbour” indicate the geographical location at which the Class 36 and Class 43 services are provided, the word “Lights” does not indicate geographical location: PJ at [244]. The primary judge also observed that if the words “Harbour Lights” are read together (rather than focusing upon the words “Cairns Harbour” in the conjunction “Cairns Harbour Lights”), those words are inherently adapted to distinguish the services to some extent because of the inclusion of the word “Lights”: PJ at [244] and [243]. Thus, it followed for the primary judge that “Cairns Harbour Lights” is to some extent inherently adapted to distinguish the services of the appellants.

251    The primary judge then considered the combined effect of the s 41(5)(a) factors so as to determine whether “Cairns Harbour Lights” does or will distinguish the designated services as those of the appellants. The primary judge accepted at [247] that the appellants sought to make good their claim that “Cairns Harbour Lights” “does distinguish” the designated services as those of the appellants, based on the combined effect of the extent to which “Cairns Harbour Lights” is inherently adapted to distinguish their services from others; and, their use of the trade mark. As to use, the primary judge found at [165] and [248] that it was not until early 2009 (January or February) that Mirvac began using the mark “Cairns Harbour Lights” in connection with hotel or accommodation letting services in place of the words “The Sebel Harbour Lights”.

252    The primary judge at [249] quotes the observations of Kenny J at [30] and Gyles J at [41] in Colorado to the effect that “concurrent use” by a competitor is a circumstance which falls within the description “other circumstances” in s 41(5)(a) of the Act for the purposes of determining whether (in combination with other factors) the trade mark “Cairns Harbour Lights” does or will distinguish the designated services as those of the appellants. As to concurrent use, the primary judge found that Ms Bradnam had used the domain names cairnsharbourlights.com.au, harbourlightscairns.com.au and harbourlightscairns.com to “resolve to” her website and that each of those domain names was used as a trade mark. The primary judge also found that those domain names, so resolving to the website, incorporated a mark substantially identical to “Cairns Harbour Lights”: PJ at [187] – [191], [249]. At [249], the primary judge finds that the use of those three domain names continued to the date of trial. At [250], the primary judge finds that in view of the concurrent use of “Cairns Harbour Lights” by Ms Bradnam, his Honour could not accept that the appellants had “developed the only reputation in the words” [emphasis added]. At [251], the primary judge observes as follows:

Taking into account the extent to which CAIRNS HARBOUR LIGHTS is inherently adapted to distinguish and the extent of the use [by CHL and Accor], I do not accept that the trade mark now distinguishes the relevant services as being those of [CHL and Accor], nor that they did so at the date of registration.

253    Having regard to those findings, it followed for the primary judge that “Cairns Harbour Lights” is not capable of distinguishing the services of CHL and Accor from those of others for the purposes of s 41(2) having regard to s 41(5).

254    We respectfully depart from the reasoning of the primary judge in the following respects.

255    First, it is clear that although the appellants’ use of the domain names cairnsharbourlights.com and harbourlights.com from early 2004 and cairnsharbourlights.com.au from early 2005 was confined to the sale of apartments, the appellants were nevertheless, so far as questions of reputation are concerned, using those domain names in connection with the complex from those dates.

256    Second, from at least 17 December 2005, the appellants were using “HARBOUR LIGHTS” as a trade mark, in the course of trade, in connection with each of the Class 36 and Class 43 services.

257    Third, the primary judge found the trade mark “HARBOUR LIGHTS” is inherently adapted to distinguish the designated services of the appellants from the services of others for the purposes of s 41(3) of the Act.

258    Fourth, the appellants had been using the trade mark “HARBOUR LIGHTS” as the dominant cognitive cue in connection with each of the Class 36 and Class 43 services for a period of at least three years prior to Mirvac/Accor commencing to use the words “CAIRNS HARBOUR LIGHTS” in connection with the Class 36 and Class 43 services in early 2009.

259    Fifth, the inherent adaption of “HARBOUR LIGHTS” to distinguish the services of the appellants from others renders the trade mark “CAIRNS HARBOUR LIGHTS” inherently adapted to distinguish the Class 36 and Class 43 services of the appellants because the dominant cognitive cue in the trade mark is “HARBOUR LIGHTS” and the addition of the word “CAIRNS” whilst also conveying an association of a geographical place, does not render the trade mark “CAIRNS HARBOUR LIGHTS” incapable of distinguishing the services of the appellants once it is recognised that the dominant cognitive cue “HARBOUR LIGHTS” is inherently adapted to distinguish the designated services of the appellants from the services of others.

260    Sixth, having regard to the use of the trade mark “HARBOUR LIGHTS” from early 2004 (in connection with the sale of lots) and especially from December 2005 in connection with each of the Class 36 and Class 43 services, it seems to us artificial to regard the words “CAIRNS HARBOUR LIGHTS” as being perceived as a reference to a geographical place called “CAIRNS HARBOUR” with the addition of the word “LIGHTS” contributing inherent adaption to distinguish to some extent. The more natural meaning and cognitive reaction to the phrase is one in which the viewer would recognise the cognitive cue “HARBOUR LIGHTS” and by reason of the association with the words “CAIRNS”, understand that “CAIRNS HARBOUR LIGHTS” is a trade mark used, in the course of trade, in connection with the Class 36 and Class 43 services in relation to services necessarily having a connection with a property in Cairns, also called the Harbour Lights building or complex.

261    If the word “Cairns” truly played such a dominant associative differentiating role as a link to the word “Harbour” so as to naturally conjure up “Cairns Harbour” as a place or area, with the word “Lights” lending, to some extent only, a degree of inherent adaption to distinguish, rather than the word “Cairns” operating as a single word in conjunction with the dominant cognitive cue “Harbour Lights” (inherently adapted to distinguish the services of the applicants from others (as found)), Ms Bradnam would presumably have been loath to separate the word “Cairns” from the word “Harbour” so as to avoid diluting the associative role the word “Cairns” plays in the cognitive reference to place in the “Cairns Harbour” conjunction. However, in two of her domain name registrations, Ms Bradman moved the word “Cairns” to the end of the domain name separating it from the word “Harbour”: harbourlightscairns.com and harbourlightscairns.com.au.

262    It follows for the reasons earlier indicated that we do not accept that the words “Cairns Harbour Lights” are part of the “common heritage” giving rise to a right in the public to make honest use of them for the sake of a contended signification in the manner contended for by the respondents in Ground 3: [148] of these reasons.

263    Thus, in our view, “CAIRNS HARBOUR LIGHTS” is also inherently adapted to distinguish the designated Class 36 and Class 43 services of the appellants from the services of others.

Infringement

264    Before examining the contentions on the appeal going to infringement, we note these matters.

265    First, CHL is the owner, by authorship and first user, of the trade mark “HARBOUR LIGHTS” in connection with each of the registered services.

266    Second, the trade mark “HARBOUR LIGHTS” is inherently adapted to distinguish the registered services of the appellants from the services of others.

267    Third, the trade mark “CAIRNS HARBOUR LIGHTS” is also inherently adapted to distinguish the registered services of the appellants from the services of others as the dominant cognitive cue in the conjunction of words making up the trade mark is “HARBOUR LIGHTS”. The word “CAIRNS” constitutes a point of physical reference to or location of the accommodation in Cairns in respect of which leasing, letting and rental services are provided by reference to the dominant cognitive cue, “HARBOUR LIGHTS” inherently adapted to distinguish the services of the appellants from the services of others, within that conjunction “CAIRNS HARBOUR LIGHTS”.

268    Fourth, on the question of proprietorship, use of the trade mark “HARBOUR LIGHTS” gives rise to proprietorship in the trade mark “CAIRNS HARBOUR LIGHTS”.

269    We now address the position in relation to infringement.

270    Having regard to our conclusions concerning first use of the trade mark “HARBOUR LIGHTS” in the appellants and our further conclusions of first use of the mark “CAIRNS HARBOUR LIGHTS” in the appellants as earlier described, we approach the contentions of infringement afresh, ourselves, although we take into account the findings of the primary judge on infringement and the further findings made by the primary judge for the purpose of assisting a Full Court on the contentions of infringement on the assumption that the primary judge’s conclusions on other questions might be found to be wrong: PJ at [283].

271    Apart from questions going to ss 41, 42, 43 and 58 of the Act, the primary judge notes at [286] the respondents’ contentions at trial as follows.

272    First, they had not used either trade mark as a trade mark (that is, as a badge of origin) and thus, an essential integer of s 120(1) and s 120(2) was not made good by the appellants.

273    Second, the respondents said that their use of each trade mark was “not likely to deceive or cause confusion” and thus if the respondents were wrong about use of either trade mark as a badge of origin in relation to their services (assuming they are services of the same description), the respondents are taken, by the Act, not to have infringed either trade mark: s 120(2).

274    Third, Ms Bradnam contended that she had continuously used the words comprising each trade mark in relation to her services of “residential apartment letting” both before the appellants used either mark in relation to residential apartment letting services and before the date of registration of each trade mark (by which she must have meant the effective date for each mark, 21 January 2009, [1] of these reasons; 21 April 2009 [5] of these reasons). On that footing, Ms Bradnam contended that s 124(1) of the Act was engaged and thus her use of an unregistered trade mark substantially identical with or deceptively similar to either of the registered trade marks does not constitute infringement of either trade mark.

275    Fourth, the respondents contended that they had used the words comprising each trade mark in good faith to indicate the geographical origin or some other characteristic of their services and thus s 122(1)(b) was engaged.

276    Section 20 of the Act provides that the registered owner of a trade mark has the exclusive right, subject to the Act, to use the trade mark and authorise others to use the mark: s 20(1). The registered owner also has the right to obtain relief under the Act for infringement: s 20(2). The rights arising under s 20(1) and (2) are taken to have accrued from the date of registration of the trade mark: that is to say, the date from which the trade mark is taken to have had effect, under the Act: s 6. Section 120 of the Act, relevantly, provides as follows:

120    When is a registered trade mark infringed?

(1)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

(2)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

…

(c)    services of the same description as that of services (registered services) in respect of which the trade mark is registered; or

…

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

277    Section 10 of the Act is in these terms:

10    Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

278    Section 122 of the Act, relevantly, provides as follows:

122    When is a trade mark not infringed?

(1)    In spite of section 120, a person does not infringe a registered trade mark when:

…

(b)    the person uses a sign in good faith to indicate:

(i)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services;

…

279    At [290], the primary judge framed the specific issues going to s 120 in this way:

290    The issues in dispute concerning s 120 are:

(a)    whether the respondents used the words “Harbour Lights” and “Cairns Harbour Lights” or variations of those words “as a trade mark”;

(b)    whether the words used were substantially identical or deceptively similar to the trade marks;

(c)    for s 120(2), whether the respondents have established that using the signs as they did is not likely to deceive or cause confusion; and

(d)    whether the use was in relation to services in respect of which the trade marks are registered, or in respect of services of the same description as, or closely related to, the services in respect of which the trade marks are registered.

280    As to the test to be applied in determining whether a respondent has used, as a trade mark, a sign that is substantially identical with the registered trade mark, each mark is to be compared side by side. The point of the comparison is to identify similarities in the marks and the differences between them for the purpose of enabling an assessment to be made of the importance of those things having regard to the “essential features” of the registered trade mark and the “total impression of resemblance or dissimilarity that emerges from the comparison”: Shell v Esso, Windeyer J at 414.

281    As to whether the impugned mark is deceptively similar to the registered trade mark, s 10 of the Act fixes upon whether one mark so nearly resembles the other that use of the impugned mark is “likely to deceive or cause confusion” and as to that, the question is one of “deceptive similarity”. Determining whether deceptive similarity arises engages a comparison between, on the one hand, the impression based on recollection of the registered owner’s trade mark that persons of ordinary intelligence and memory would have, and on the other hand, the impressions such persons would get from the respondent’s mark. That comparison, plainly enough, does not engage looking at the marks “side by side”: Shell v Esso, Windeyer J at 415.

282    As to the findings of the primary judge, the primary judge considered each of the examples of contended infringement in the context of the following observations at [302]:

302    I consider that “Cairns Harbour Lights” is both substantially identical and deceptively similar to “Harbour Lights”. They are substantially identical because “Cairns” is not distinctive, merely being the name of a geographical location. They are deceptively similar because, from the perspective of persons of ordinary intelligence and memory, they so nearly resemble each other that they are likely to deceive or cause confusion. Therefore, where I conclude that the elements of s 120(1) are satisfied by the use of either “Harbour Lights” or “Cairns Harbour Lights”, those elements are satisfied in relation to both trade marks.

[emphasis added]

283    At [303], the primary judge notes that Ms Bradnam entered into a contract to sell her business to Liv on 31 August 2009. Settlement occurred on 17 May 2010. Ms Bradnam continued to conduct the business until 17 May 2010 and thereafter it was conducted by Liv. However, Ms Bradnam continues to be the registered owner of two domain names that resolve to Liv’s website: PJ at [303]. The appellants complained of infringement from 21 January 2009, the effective date for the trade mark, “Harbour Lights”. It is now necessary to consider each example of contended infringement by Ms Bradnam and Liv. The first part of that consideration in substance is whether Ms Bradnam used particular words as a trade mark and if so, in relation to which services. The same questions arise concerning the contended infringements by Liv. We will first examine the findings of the primary judge concerning each contended example of infringement by Ms Bradnam and Liv; then consider the contended error on the part of the primary judge in not having regard to s 120(2) of the Act; and then consider the contentions of the respondents. It is necessary for the Full Court to consider each example of contended infringement relied upon by the appellants in their written submissions including each of the matters at Part B (12) to (16) of the written submissions and Part D of the document entitled “Appellants’ References for Oral Submissions” (and the oral submissions themselves). By these documents, the appellants rely upon the following paragraphs of the primary judge’s reasons (which, of course, need to be contextualised by reference to the other paragraphs of the principal judgment which explain the reasoning leading to the findings at the nominated paragraphs): [315], [323], [326], [329], [332], [335], [339], [345], [346], [348], [350], [351], [356], [357], [371], [375], [379], [380], [390], [407], [409]-[411], [414], [420], [421], [428], [430], [436] and [448]. Reliance upon some of these paragraphs for the purposes of the appeal only becomes necessary if the appellants are successful on their contentions as to ownership of each mark and their contentions as to the overlaps in the services (the division of services). Both of these issues are Part B issues in the appellants’ References document. The question, however, of the relationship or symmetry between the registered services and some other services also arises in relation to questions concerning s 120(2) of the Act. We return to that matter later in these reasons. In addressing each of the examples of infringement, we identify the paragraphs of the principal judgment relevant to the topic.

The issue of use by Ms Bradnam of particular words as a trade mark

The domain names: [315] to [329]; Bradnam Example 1 (B1)

284    Relevantly for the purposes of the appeal, the appellants contended that use by Ms Bradnam (and Liv) of cairnsharbourlights.com.au; harbourlightscairns.com.au; and harbourlightscairns.com, infringed each trade mark. Each of these domain names directed an inquirer to Ms Bradnam’s website in the period 21 January 2009 to 17 May 2010. As to that period, the primary judge examined whether use of the domain names in this way involved use of “Harbour Lights” and “Cairns Harbour Lights” as a “badge of origin”. For the primary judge, that depended in part on the content of Ms Bradnam’s website, and thus the conjunction of the domain names and the use of the website would be likely to determine, in the primary judge’s view, whether use of the domain names amounted to use of each trade mark “as a trade mark”. There may, however, be two issues here. The first is whether Ms Bradnam was, by the domain names, using each trade mark as a badge of origin to take an inquirer to her website and second, if the website has no relevant connection to any of the registered services, is it use of a sign in relation to services in respect of which the trade mark is registered, even though the trade mark might have been used as a badge of origin (leaving aside any question arising under s 120(2))? The primary judge reached the following conclusions having examined the home page of Ms Bradnam’s website at 20 and 21 February 2009 and during a period from 6 March 2009.

285    First, the use of the phrase on the website “hlp Harbour Lights Luxury Apartments” constitutes use of that phrase in connection with the “business of letting apartments” so as to indicate a connection in the course of trade between the user of that phrase and the services: PJ at [321]. That phrase is deceptively similar to “HARBOUR LIGHTS”: PJ at [322]. The words “Luxury Apartments” are “descriptive only”: PJ at [322]. The primary judge finds that such use is use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [323].

286    Second, as to the home page on 6 March 2009 and thereafter, the website adopted the heading “harbour lights cairns – the luxury collection”. The use of that title or name “clearly indicated” a connection in the course of trade between Ms Bradnam and the provision by her of accommodation rental and letting services in a building called “Harbour Lights”: PJ at [324]. Use of the title or phrase is deceptively similar to “HARBOUR LIGHTS” and after 21 April 2009, deceptively similar to “CAIRNS HARBOUR LIGHTS”: PJ at [325]. The primary judge finds that such use is use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [326]. The use of the trade mark is not use in relation to “hotel services” because Ms Bradnam’s website advertised “apartments” and not “hotel rooms”: PJ at [326].

287    Third, Ms Bradnam used each domain name to direct inquirers to her services of accommodation rental and letting services in respect of apartments: PJ at [327]. Each domain name is substantially identical with the trade marks “HARBOUR LIGHTS” and “CAIRNS HARBOUR LIGHTS”: PJ at [328]. The domain names are deceptively similar to both trade marks in suit: PJ at [328]. The primary judge observes that the circumstance that the word “cairns” appears after “harbour lights” in two of the domain names does not prevent the domain names from being substantially identical with or deceptively similar to each of the trade marks in suit: PJ at [328]. The primary judge finds that such use is use in connection with each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [329].

The Google advertisements revealed by Google searches: [330] to [337]; Bradnam Example 2 (B2)

288    Next, the appellants contended that Ms Bradnam had used Google advertisements to promote her services. They contended that Google searches were undertaken by Mr Chapman in 2009 using the search terms “Cairns Harbour Lights” and “Sebel Harbour Lights”. Mr Chapman’s evidence was that those searches drew him to harbourlightscairns.com.au either at the top of the search or as a “sponsored link”. The primary judge drew an inference that in referring to harbourlightscairns.com.au Mr Chapman was referring to Ms Bradnam’s website: PJ at [331]. The first result of the search showed a sponsored link in this way:

Cairns Harbour Lights

www.HarbourLightsCairns.com.au     Stay at Harbour

Lights from $99 Water Views, in CBD. Book Now!

289    Later, on the search page, the following result appears:

The Sebel Harbour Lights Cairns

www.harbourlightscairns.com.au

1 Spence St

Cairns, QLD 4870

1800 076 703

Get directions

290    The primary judge finds at [334] that use of the sponsored link “Cairns Harbour Lights” (that is, a link sponsored by Ms Bradnam, [334]) is a reference to the name of a business and use of the domain name harbourlightscairns.com.au is use of the trade mark as a trade mark. The primary judge also found that “Harbour Lights Cairns” is substantially identical with and deceptively similar to each registered trade mark in suit: PJ at [334]. The primary judge concludes that the sponsored link is use of a mark in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [335]. In other words, the use is in connection with Ms Bradnam’s accommodation letting and rental services. The appellants contend that this use amounts to use of each registered trade mark in relation to services of the “same description” as hotel services and other registered services, by operation of s 120(2) of the Act. We address these contentions later in these reasons. Similar contentions are made in relation to other examples of infringement relied upon by the appellants.

The Statement of Account and use of the email address in the Statement of Account: [338] to [345]; Bradnam Example 3 (B3)

291    Next, the appellants contended that a Statement of Account produced by Ms Bradnam in February 2009 for a client setting out rental income and expenses for the letting of the client’s apartment in the Harbour Lights building for that month contained the following matters:

Harbour Lights Cairns

1 Marlin Parade

CAIRNS QLD 4870

Phone:    07 4041 5637    Fax: 07 4041 5837

Email:    info@harbourlightscairns.com.au

Website:    www.harbourlightscairns.com.au

292    The primary judge concluded that the use of the words “Harbour Lights Cairns” do not refer only to the name of the building. That followed in part because of the reference to the telephone number, the email address and the website address. Those references belonged “to a business” and the impression given by the matters recited on the Statement of Account is that “Harbour Lights Cairns” refers to the business providing the “letting services”: PJ at [341]. However, the primary judge observed that in objectively determining whether Ms Bradnam’s use of “Harbour Lights Cairns” in a Statement of Account as set out at [291] of these reasons constitutes use of the words as a trade mark, the state of knowledge of the reader needs to be taken into account. The primary judge observes that the apartment owner had engaged the services of Ms Bradnam, with Ms Bradnam operating under a particular business name. Ms Bradnam’s client “must have known of the services of Accor”: PJ at [344]. The apartment owner also knew that the building was called “Harbour Lights” or “Harbour Lights Cairns”: PJ at [344]. The client would have understood the words “Harbour Lights Cairns” to refer to the building and not words operating as a badge of origin of Ms Bradnam’s services as a means of distinguishing those services from the services of Accor: PJ at [344].

293    Nevertheless, the primary judge accepted that the use of the email address info@harbourlightscairns.com.au as shown at [291] of these reasons, sent by Ms Bradnam to an owner who must be taken to know that Ms Bradnam was conducting a letting and rental business independently of Accor, was use of an email address as a trade mark and thus a badge of origin of her business: PJ at [345]. The primary judge finds that such use is use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [345]. The primary judge observes that the “elements of s 120(1) are satisfied by the use of the email address” and by that reference we assume that the primary judge is satisfied that the email address uses a mark, as a trade mark, which is substantially identical with and deceptively similar to each of the registered trade marks in suit. The appellants again say that s 120(2) is engaged such that Ms Bradnam’s use is use of a mark in relation to services of the same description as the registered services. We return to that matter later in these reasons.

The booking confirmation of 28 January 2009: [346] to [348]; Bradnam Example 4 (B4)

294    Next, the appellants contended that Ms Bradnam issued a booking confirmation document dated 28 January 2009 in the course of her business to a guest who had booked accommodation. The document was sent from the email address info@harbourlightscairns.com.au and it said:

Please call us on 4041 5637 when you arrive at Cairns airport so we can organise someone to meet you at the front of the Harbour Lights complex.

Please do not hesitate to contact me if you have any further questions. We look forward to welcoming you soon to Harbour Lights Cairns.

295    The primary judge finds that issuing the document is a business communication for the reasons identified by the primary judge at [347] and use of the email is use of a sign substantially identical with and deceptively similar to each of the registered trade marks in suit: PJ at [347]. The primary judge finds that such use is use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [348].

A further feature of the booking confirmation: [349] to [351]; Bradnam Example 5 (B5)

296    Next, the appellants rely upon another feature of the booking confirmation document of 21 January 2009 to this effect. Under the heading “Payments” the following endorsement appears:

To avoid the credit card fees deposits and final payments can be transferred into Harbour Light’s trust account:

Harbour Lights Property Management & Sales

Suncorp

BSB 484 799

Account number 600864609

297    Payments were to be made into the “Harbour Light’s trust account” as a business transaction of Ms Bradnam under the business name “Harbour Lights Property Management & Sales”. The primary judge finds at [350] that use of the business name and the business trust account name operated to distinguish her business and its services from those of others providing rental and letting services and that the use of the business name is use of a sign substantially identical with and deceptively similar to each of the trade marks in suit: PJ at [350]. These uses were found to be uses in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [351].

Ms Bradnam’s undated letter: [352] to [356]; Bradnam Example 6 (B6)

298    Next, the appellants relied upon an undated letter written by Ms Bradnam to “Body Corporate Services” sent by her on or about 16 June 2009: PJ at [352]. The letter was written by her as owner of a lot (apartment) and also on behalf of 35 apartment owners whose apartments she was managing. The letter was written to a business providing management services to the body corporate for each of the Managed and Residential Schemes. The letterhead recites these details:

Harbour Lights Cairns Licence: 3187070

ABN no: 89201897087

1 Marlin Parade

CAIRNS QLD 4870

Phone:     07 4041 5637

Fax:     07 4041 5837

Email:     info@harbourlightscairns.com.au

Website:     www.harbourlightscairns.com.au

299    The primary judge found that had the letterhead simply referred to “Harbour Lights Cairns” the recipient would probably assume that the author’s use of those words was simply descriptive of the building. However, the reference to the licence number and ABN was a reference to a business described as “Harbour Lights Cairns” and such use was reinforced by use of the email address and website address on the letterhead: PJ at [353]. The letter represented, to the body corporate manager, that “Harbour Lights Cairns” is a business that manages at least 35 apartments and the words were used to distinguish Ms Bradnam’s business from the services of others: PJ at [354]. Again, the primary judge finds that Ms Bradnam used words substantially identical with and deceptively similar to each of the registered trade marks in suit and such use is use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [355] and [356].

The sign on the park bench: [357] to [361]; Bradnam Example 7 (B7)

300    Next, the appellants rely upon Ms Bradnam’s use of a sign installed on a park bench opposite her office. The primary judge made no finding as to the date of its installation but found that it remained in place until January 2011. It seems that Ms Bradnam had responsibility for the park bench sign until 17 May 2010 and thereafter Liv assumed responsibility for it. The sign bears the words at the top in large writing “HARBOUR LIGHTS hlp”. Under that, the words “Accommodation & Sales” appear. Under that, a telephone number appears: 40415637. The primary judge finds that the primary use of the words “HARBOUR LIGHTS hlp” together with the telephone number was use as the name of a business advertising the services of accommodation (which the primary judge found to mean short-term rentals) and sales: PJ at [358] and [360]. The primary judge finds that the words are deceptively similar to each of the registered trade marks in suit and that the use of “HARBOUR LIGHTS” is use in relation to each of the Class 36 and Class 43 services other than “agency services for the leasing of real estate properties” and “hotel services”. However, because the sign referred to sales, use of the words was found to be also use in relation to “commercial real estate agency services”: PJ at [360].

The undated advertising flyer: [362] to [365]; Bradnam Example 8 (B8)

301    Next, the appellants rely upon an undated “advertising flyer” published by Ms Bradnam headed “hlc” with the words “Harbour Lights Cairns” immediately underneath. Then the words “Harbour Lights Cairns The Luxury Collection” appear. The flyer has photographs of the exterior of the building and interiors of some apartments. The words “Apartments for sale” appear with prices. An office telephone number and mobile number then appear. The primary judge finds that the words “Harbour Lights Cairns” in combination with “hlc” are used as a trade mark and so too are the words “Harbour Lights Cairns The Luxury Collection” used as a badge of origin (which was also a business name of Ms Bradnam apart from a missing hyphen): PJ at [363]. In each case, the words “Harbour Lights” were found to indicate a connection between the business using the mark and the services provided by the owner: PJ at [363]. The words used are deceptively similar to each trade mark in suit: PJ at [363]. The primary judge finds that the flyer advertises the sale of apartments rather than apartment rental and letting services and thus the use is use in relation to “commercial real estate agency services” in Class 36 but not otherwise: PJ at [364]

The issue of use by Liv of particular words as a trade mark

302    The sale of Ms Bradnam’s business to Liv settled on 17 May 2010 which included the transfer of the following business names to Liv: “Harbour Lights Cairns – The Luxury Collection”; “Harbour Lights Prestige Apartments”; and “Harbour Lights Property Management & Sales”: PJ at [368]. As to the last two business names, Liv did not use them in the conduct of its business and those names were deregistered in December 2010: PJ at [370]. The following domain names were also sold to Liv: cairnsharbourlights.com.au; harbourlightscairns.com.au; and harbourlightscairns.com: PJ at [369].

Liv’s use of “Harbour Lights Cairns – The Luxury Collection”: [371] to [375]; Liv Example 1 (L1)

303    The first example of use relied upon by the appellants is Liv’s use of the business name “Harbour Lights Cairns – The Luxury Collection” as a trade mark. On 30 June 2010, Liv was operating the website which contained a heading on the home page “harbour lights cairns – the luxury collection”. It was a prominent heading that appeared on each page of the website: PJ at [373]. The use of the business name indicated a connection between Liv and services Liv was promoting on the website: PJ at [374]. Although there were other uses of words such as “Harbour Lights Penthouse” and “Harbour Lights Gymnasium” which were references to the complex itself, the business name was used as a badge of origin to distinguish Liv’s business services from those of others: PJ at [374]. At [375], the primary judge concludes that use of “Harbour Lights Cairns” satisfies the elements of s 120(1) of the Act. Having regard to [302] of the primary judge’s reasons, that finding means that use of “Harbour Lights Cairns” was substantially identical with and deceptively similar to each of the trade marks in suit. The use by Liv is use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [375].

Liv’s use of domain names: [376] to [380]; Liv Example 2 (L2)

304    Next, the appellants rely upon Ms Patalano’s (Liv’s) use of domain names to direct customers to Liv’s website. The new name adopted by Liv for the business was “Cairns Luxury Apartments”. Liv obtained registration of that business name on 28 January 2010 and registration of the domain name cairnsluxuryapartments.com.au on 3 December 2009: PJ at [376]. The existing domain names acquired from Ms Bradnam would now resolve to Liv’s new website: PJ at [376]. Liv’s website enables customers to make accommodation bookings in the apartments in the Harbour Lights complex, other buildings and bookings for tours and activities. The website promotes the advantages of the apartments offered in the Harbour Lights complex by reference to location, price and luxuriousness: PJ at [377]. Liv uses the domain names cairnsharbourlights.com.au and harbourlightscairns.com.au to direct customers to its website. A person using a browser searching for those domain names takes the inquirer to Liv’s website: PJ at [378]. The primary judge finds at [379] that Liv’s use of the domain names to direct customers to its website is use of the domain names as a trade mark. Such use is use of marks substantially identical with or deceptively similar to each registered trade mark in suit: PJ at [380]. The use by Liv is use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services” and “agency services for the leasing of real estate properties”: PJ at [380]. The primary judge finds that such use does not satisfy the requirements of s 120(1) in relation to “hotel services” with one exception. That exception was found to be that Liv’s website in the form it took at 30 June 2010 advertised hotel services: PJ at [380].

Google advertisements by Liv: [381] to [384]; Liv Example 3 (L3)

305    Next, the appellants rely upon the use of Google advertisements by Liv which used the term “Harbour Lights” to promote Liv’s apartment letting business. The search result relied upon is in these terms:

Cairns Luxury Accommodation – Waterfront Apartments – Harbour…

www.cairnsluxuryapartments.com.au/

Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short term rental.

Apartments – For Sale – Contact - Specials

306    The primary judge finds that the use of “Harbour Lights Apartments” suggests that a business of that name is offering accommodation and thus Liv is using the words as a trade mark: PJ at [383]. The primary judge finds that the words are deceptively similar to the trade mark “HARBOUR LIGHTS”. The use is use in relation to each of the Class 36 and Class 43 services other than “agency services for the leasing of real estate properties” and “hotel services”: PJ at [384]. The primary judge finds that such use includes use in relation to “commercial real estate agency services”: PJ at [384].

Another aspect of Liv’s website at 30 June 2010: [390] and [391]; Liv Example 4 (L4)

307    Next, the appellants rely upon another aspect of Liv’s website at 30 June 2010 concerning a page headed “Booking Form”. It allows the start date for an accommodation booking and the number of nights sought, to be entered. The page provides descriptions of the apartments offered, available dates and prices. Underneath that information the following text appears:

Harbour Lights Cairns

Completed in June 2007, the award-winning Cairns Harbour Lights is a truly unique contemporary hotel combining the comfort of serviced hotel accommodation with the freedom of self contained apartments. The hotel is centrally located on the Cairns waterfront next to the Reef Fleet terminal, and offers views unlike anywhere else in Cairns. The hotel is walking distance from the Esplanade, Casino, convention centre and shopping precincts and offers a level of sophistication and comfort that cannot be matched.

Address:     1 Marlin Parade

        CAIRNS

        QLD

        AUSTRALIA

308    The primary judge makes the following findings at [391]:

391    The references to “Harbour Lights Cairns” and “Cairns Harbour Lights” on this webpage were references to the name of the complex in which the apartments are located. That is plain from the words “completed in June 2007” and the description of the location of the “hotel”, including its address. The words were not used as a badge of origin. I find that they were not used as a trade mark.

309    The appellants contend that by this use of the website linked to the domain names, Liv is using each trade mark as a bad of origin in relation to the registered services or services of the same description. We will return to these contentions later in these reasons.

The “contact” link page on the website as at 30 June 2010: [392] to [396]; Liv Example 5 (L5)

310    Next, the appellants rely upon a page on the website reached by clicking the “contact” link on the website. By doing so, the viewer reaches a page which commences with the following information:

Contact Harbour Lights Cairns

Please contact us for any enquiries or further information about our luxury apartments right on the Cairns waterfront.

Harbour Lights Cairns – The Luxury Collection

AAA rated 5 Stars

1 Marlin Parade

CAIRNS, QLD, 4870, AUSTRALIA

Administration Office

Shop 1, 34 The Esplanade

CAIRNS, QLD, 4870, AUSTRALIA

311    Under that information, further information appears concerning the office/reception hours, the administration hours, a licence number, telephone numbers and an email address info@harbourlightscairns.com.au. At [394], the primary judge finds that the words “Harbour Lights Cairns” in the heading are used as a description of the business offering the advertised services. The primary judge finds that the heading invites the viewer to contact “Harbour Lights Cairns” and invites the viewer to contact “us” for further information about “our” luxury apartments. The primary judge finds that the luxury apartments in question are those offered “by the business known as ‘Harbour Lights Cairns’”. Thus, the use of the words “Harbour Lights Cairns” in the heading indicates a connection between Liv’s business and the services offered thus distinguishing Liv’s services from the services of others and thus constituting use as a trade mark: PJ at [394] and [395]. The primary judge finds that the use of “Harbour Lights Cairns” satisfies “the elements of s 120(1)” of the Act and does so in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services” and “agency services for the leasing of real estate properties”: PJ at [396]. The primary judge finds that Liv’s use was use in respect of “hotel services” because the booking form described it as a “hotel”: PJ at [396].

The “guest comments” page on Liv’s website as at 6 September 2011: [404] to [407]; Liv Example 6 (L6)

312    Next, the appellants rely upon a page on Liv’s website as at 6 September 2011 with the heading “guest comments”. One of the comments is:

Dear Ladies at Harbour Lights, back home in Austria I want to thank you for the wonderful stay at Harbour Lights! The apartment was superb and everything just perfect. We enjoyed every minute of our stay in Cairns und hopefully we will be able to visit this wonderful place once again in our life. This was the most beautiful accommodation we ever had on holidays. Thank you so much for everything und best regards!

313    The primary judge assumed that the word “Ladies” referred to in the comment is a reference to members of Liv’s staff: PJ at [405]. The primary judge finds that the first reference to “Harbour Lights” suggests that Liv is operating a business called “Harbour Lights” which is the origin of the services provided by Liv: PJ at [405]. The primary judge observes that Liv’s staff is not “at” the Harbour Lights building and concludes that this use of “Harbour Lights” as a retained guest comment constitutes use by Liv of those words as a trade mark: PJ at [405]. The primary judge rejected the contention of the respondents that use of guest testimonials is not within their control. The primary judge finds that the evidence shows that Liv caused the website to be constructed and changed from time to time and thus the content of the website was under Liv’s control: PJ at [406]. The primary judge finds that this use of “Harbour Lights” satisfies the elements of s 120(1) of the Act and it does so in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [407].

A page from Liv’s website at 30 June 2010: [409] to [413]; Liv Example 7 (L7)

314    Next, the appellants rely upon a page from Liv’s website cairnsaccommodation.com at 30 June 2010. It contains a heading “Cairns Hotels” followed by text in the following terms:

Cairns Harbour Lights

Cairns Harbour Lights luxury apartments are brilliantly positioned on Cairns stunning waterfront, and the contemporary and stylish apartment hotel offers guests stunning views of the Marina, City and rainforest clad mountains that envelop Cairns. Cairns Harbour Lights is a five star holiday apartment complex that offers a selection of hotel rooms, one, two and three bedroom fully self-contained holiday apartments. Cairns Harbour Lights is a fresh and contemporary five star apartment complex nestled in the chic Pier district of Cairns CBD, offering easy access to all that makes the tropical city of Cairns unforgettable – the exquisite eateries, boutique shopping, vibrant nightlife, and eclectic markets.

We Guarantee To Match The Lowest Rates.

Book Now and Automatically Receive Free Dining Vouchers And Receive Bonus Discounts On Tours

315    This text is followed by a number of links, followed by a description of the facilities, information about check-in and check-out times, reception hours and accommodation features at Cairns Harbour Lights. After that information the following text appears:

Room Descriptions

Cairns Harbour Lights Hotel Rooms – the hotel rooms at Cairns Harbour Lights exude a fresh and contemporary feel, and ideally suited for couples on an overnight stay or those on a short business trip. The five star hotel rooms at Cairns Harbour Lights boast a range of features including air-conditioning, cable television, broadband internet access, large balconies with views of the boat Harbour or parklands (all rooms except two), en suite rooms with shower facilities only, mini bar and tea and coffee making facilities. Each hotel room at Cairns Harbour Lights features a comfortable queen bed, and has a maximum capacity for two guests. Couples and business travellers will enjoy the fresh style and unbelievable views of the ocean and beyond in the Cairns Harbour Lights hotel rooms.

Cairns Harbour Lights Apartments – the spacious one, two and three bedrooms fully self-contained holiday apartments at Cairns Harbour Lights are sure to impress the most discerning traveller. Cairns Harbour Lights apartments are ideal for longer vacations, couples seeking a romantic inner city holiday sanctuary, families who prefer to self cater and business travellers who appreciate the space and privacy offered by apartment accommodation.

316    The primary judge finds that the words “Cairns Harbour Lights” where they first appear on the webpage are a reference to the apartments rather than a reference to “a business of providing accommodation” and even though the words “We Guarantee To Match The Lowest Rates” appear after the text, those words are not a reference to the accommodation provider. Thus, the webpage, in the primary judge’s opinion, does not distinguish Liv’s services from those offered by others and therefore the words are not operating as a badge of origin: PJ at [412] and [413]. The words are “purely descriptive” of rooms in the Cairns Harbour Lights building: PJ at [413].

A listing on the Roamfree website: [414] to [417]; Liv Example 8 (L8)

317    Next, the appellants rely upon a listing on a website called Roamfree.com.au. On 30 June 2010, that website contained a page headed “HARBOUR LIGHTS CAIRNS – the luxury collection”. Those words (in substance) are a business name of Liv: PJ at [415]. The name by which the apartments offered under this business name are known is “Harbour Lights Private Apartments”: PJ at [415]. The page in question on the Roamfree website has a reference to the types of apartments available, the dates on which they are available and the prices. Later, on the page, the following words appear:

Harbour Lights Private Apartments are superb five-star self-catering holiday apartments located in one of the most sought after absolute waterfront properties in Cairns.

318    The primary judge finds that Liv’s use on the Roamfree website page of the words “HARBOUR LIGHTS CAIRNS – the luxury collection” is use of the words as a mark to distinguish its services of letting accommodation in the apartment complex: PJ at [415]. The mark is at least deceptively similar to HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS: PJ at [416]. The words are used as a mark in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [417].

The listing on Booktoday.com: [420] and [421]; Liv Example 9 (L9)

319    Next, the appellants rely upon a listing as at 30 June 2010 on a website called “Booktoday.com” which contains a page bearing the heading “Cairns Harbour Lights – The Luxury Collection”. Underneath the heading, these words appear:

“Harbour Lights Cairns – The Luxury Collection” apartments are individually chosen within the Harbour Lights Cairns complex and are rated 5 star.

320    The primary judge finds that the heading is used as a badge of origin to distinguish Liv’s services from others. The primary judge rejected the contention of the respondents that the addition of the words “The Luxury Collection” means that use of the words “Cairns Harbour Lights – The Luxury Collection” is not deceptively similar to “CAIRNS HARBOUR LIGHTS”: PJ at [421]. The primary judge finds that such use is use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [421].

Website keywords: [429] to [436]; Liv Example 10 (L10)

321    Next, the appellants rely upon the contended use by the respondents of website keywords. The evidence before the primary judge included a document (printout) of “source data” for the website: cairnsluxuryapartments.com.au. The source data includes a “meta-tag” which is “Harbour Lights”. The meta-tag is not displayed on the screen but is used by a search engine (such as Google) to determine the search results to be listed before the person doing the search. The primary judge describes aspects of the source data in this way at [430]:

430    The source data includes the title “Cairns Luxury Accommodation – Waterfront Apartments – Harbour Lights – Cairns Queensland”. Under that are “keywords”. The first of those is indecipherable in the printed document put into evidence, but the second is “Harbour Lights”. The source data also includes the words “content: = Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short-term rental”. The applicants allege that the use of those words in the source code infringes their trade marks.

322    The respondents contended before the primary judge that there was no evidence that use of website keywords of this kind were within their control. The primary judge accepted the evidence of Mr Mezzatesta that on 28 May 2013 he looked at the source data for the website cairnsluxuryapartments.com.au using his browser and caused a printout of it to be made: PJ at [432]. The primary judge finds that the source data Mr Mezzatesta located was visible to those who know what to look for; it underlies Liv’s website; and it influences search results: PJ at [432]. The primary judge accepts that there is no direct evidence that the source data for the website was so placed by someone acting on behalf of Liv. However, the primary judge accepts and finds that Liv had engaged an IT consultant to create the website; Liv operates the website; Liv has changed the content from time to time; and Liv controls the website including the source data for the website. As a matter of inference, the primary judge finds that the words comprising the source data must have been included to optimise the search results for Liv’s benefit. In the absence of any other explanation, the primary judge infers that the IT consultant for Liv must have included the words in the source data for the website with Liv’s acquiescence: PJ at [433]. Thus, the words were used by Liv: PJ at [433].

323    The title used in the source data is “Cairns Luxury Accommodation – Waterfront Apartments – Harbour Lights – Cairns Queensland”. The primary judge finds that the use of the words “Harbour Lights” in that title appears to be merely a description of the waterfront apartments referred to in the title: PJ at [434]. As to the use of the keyword “Harbour Lights” (as described by the primary judge at [430] and quoted above), the primary judge regarded that use as also a reference to the apartments as those words appeared in the context of surrounding words such as “Cairns apartments”, “waterfront, luxury apartment” and “harbourside”. Thus, the words were not used as a badge of origin: PJ at [434].

324    The other words used in the source data as recited at [430] by the primary judge are these:

“content: = Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short-term rental”.

325    As to those words, the primary judge finds that the use of the words “Harbour Lights Apartments” in that phrase was, effectively, use as a business name for a business which offers “accommodation for letting and short-term rental” thus operating as a badge of origin to distinguish Liv’s services from others: PJ at [435]. Such use is use of a mark substantially identical with and deceptively similar to each of the registered trade marks in suit. It is use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”: PJ at [436].

Use of a heading on the Asiarooms.com website on 6 September 2011: [448]; Liv Example 11 (L11)

326    Finally, the appellants rely upon a heading on a webpage at the website Asiarooms.com as at 6 September 2011. The page has the heading “Harbour lights cairns Hotels”. It recites a statement that “Cairns Luxury Apartments are individually chosen and managed & are located in the Harbour Lights complex and are rated 5 star”.

327    The primary judge makes these observations at [448]:

… A viewer would be given the impression that the business “Cairns Luxury Apartments” offered apartments or hotel rooms located in the Harbour Lights complex. In my opinion, a viewer would not think that the service was being offered by “Harbour lights cairns hotel” or “Harbour Lights complex”. Those words were not used as a badge of origin and were not used as a trade mark.

328    Each of the findings discussed at [284] to [327] can be summarised in this way:

TMU = Trade Mark Use; HL = “Harbour Lights”; CHL = “Cairns Harbour Lights”; creas = commercial real estate agency services; aslrep = agency service for the leasing of real estate properties; hs = hotel services; s.i. = substantially identical with; d.s. = deceptively similar to.

329    In each of these examples of contended infringement, the primary judge finds whether (or not) use of the relevant words involved use of those words as a trade mark. The primary judge then finds, if the words were used as a trade mark, whether the words used are either substantially identical with or deceptively similar to either of the trade marks in suit (or both). As to that matter, the primary judge’s observations at [302] need to be kept in mind and against that background the primary judge often finds that the “elements” of s 120(1) of the Act are satisfied. In those examples where the primary judge finds use of words by either Ms Bradnam or Liv constitute use as a trade mark and involves a use of words which are either substantially identical with or deceptively similar to either or both of the trade marks in suit, the primary judge then identifies the services of Ms Bradnam or Liv in respect of which that use occurred and whether those services are one or more of the services for which each trade mark in suit is registered.

330    It is apparent from this review of the findings that the primary judge addressed each of these questions in the context of whether the contended conduct fell within s 120(1) of the Act. The primary judge adopted that approach because his Honour finds that the relevant use was use in relation to one or more services in respect of which each trade mark is registered and thus only s 120(1) was engaged. Often, the primary judge describes the services in respect of which use has occurred as use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”. In some cases, an example of use engages the sale of apartments which engages use in relation to “commercial real estate agency services” and in another case, the use engages use in relation to “hotel services”.

331    The appellants contend that the primary judge fell into error in failing to consider the application of s 120(2)(c) of the Act on the footing, it seems, that once the primary judge was satisfied that either Ms Bradnam or Liv had used, as a trade mark, a sign substantially identical with or deceptively similar to either or both of the trade marks in suit (the mark used), in relation to any of the registered services, Ms Bradnam and Liv would also infringe either or both of the registered trade marks, by using the mark used, in relation to services of the “same description” as that of the registered services and thus infringement is not simply confined to the symmetry of use of the “registered services” but includes use in relation to any services of the same description as the registered services. Alternatively, the services in respect of which the mark is used are simply said to be properly understood as services “of the same description” as the registered services.

332    At one level, this notion harks back to the propositions advanced by the appellants concerning the essential “overlap” between the registered services. That notion has already been examined in relation to issues of prior use and whether one or more of the registered services could properly be described as a “true equivalent” of a service for which prior use was demonstrated. In the context of infringement, however, use by a contended infringer in relation to services “of the same description” is a wider notion than the principle of “true equivalents” in the context of prior user.

333    The starting point in determining the scope of the phrase “services of the same description as that of [the registered services]” in s 120(2)(c) is the statement of principle in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ (notwithstanding that the question involved consideration of whether goods were goods of the same description), in these terms:

There may be many matters to be considered apart from the inherent character of the goods [or services] in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application. Romer J. thought it necessary to look beyond the nature of the goods [or services] in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question where bought and sold. Shortly after the decision in Jellinek’s Case the Assistant-Comptroller elaborated on the observations Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods [or services], their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”.

334    Dixon J had said much the same thing in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94 when his Honour observed:

What forms the same description of goods [or services] must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments.

335    There is no good reason to believe that these statements of principle do not apply in relation to services for the purposes of s 120(2)(c) and, in fact, they have been found to so apply: MID Sydney Pty Ltd v Australian Tourism Co Ltd, supra at [241], Burchett, Sackville and Lehane JJ at 243 and 244. Plainly enough, the calculus of factors may alter when the question becomes one of applying the principles to services. By way of illustration, the Full Court at 242 and 244, supra at [241] of these reasons, concluded that the services involved in conducting “an hotel business” including the accommodation of guests, the operation of restaurants and bars and the provision of conference and business facilities and other services normally offered by hoteliers (the impugned services), had different characteristics from services described as “property management services” (the registered services) and thus, those services could not be described as services of the same description as property management services. Those conclusions were reached by the Full Court by construing the words “property management services” and taking into account the evidence given by service providers as to the features of the various services.

336    As a question of statutory construction and statutory purpose concerning s 120(2)(c), the centrality of s 20 of the Act must be kept in mind in conjunction with s 120(2)(c).

337    Section 20 confers on the registered owner of the trade mark the exclusive right to use (and authorise others to use) the trade mark and the right to obtain relief for infringement. The scope of the monopoly grant (subject to the Act) is conditioned not only by a corresponding right to seek relief to stop others from using, as a trade mark, a sign substantially identical with or deceptively similar to the registered trade mark in relation to, relevantly here, the registered services, but also in relation to services of the same description as the registered services. Determining whether services are services of the same description as the registered services involves examining the essential characteristics of each.

338    In the written and oral submissions the appellants again place reliance, on this issue, on the notion that the registered services of the appellants “plainly overlap”. Thus, it is said that the features of the services provided by the respondents, the subject of the findings, are necessarily features of the same description as the features of the registered services. We have already taken a different view about the extent to which it can be said that the registered services “plainly overlap”.

339    As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:

(1)    The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?

(2)    To whom are the services offered?

(3)    How are they provided?

(4)    How are they used?

(5)    What is their purpose?

(6)    Are they bundled together with other services?

(7)    Are they differentiated by the functional level at which they are provided: wholesale or retail?

(8)    Where do they originate?

(9)    What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

(10)    How closely contestable are the services in substance: are they in the same market or trade?

(11)    How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]-[73].

340    In this appeal, the appellants contend that the primary judge erred by finding (in those examples in the schedule), no trade mark use and by not finding, more generally, that the use of the domain names by Ms Bradnam and Liv constituted trade mark use (rather than the particular findings based on domain name use linked to specific examples of website pages). They also say, of course, that s 120(2)(c) is engaged by each example of use of a substantially identical or deceptively similar sign by the respondents in relation to any of the services offered by the respondents as services of the same description as the registered services.

341    Subject to one matter in relation to the use of domain names, we see no reason to disturb any of the findings reflected in the discussion at [284] to [327] and set out in the schedule at [328] of these reasons.

342    In reaching the findings, the primary judge considered the services offered or provided by Ms Bradnam and Liv in relation to each example and concluded that the respondents had used a sign substantially identical with or deceptively similar to the trade marks in suit in relation to their services, and finds that those services are services in respect of which each trade mark is registered: that is to say, not all of the registered services but some of them. The primary judge, as a matter of method, looked at the services of the respondents, identified the content of the services, example by example, and then determined whether those services are services in respect of which each trade mark in suit is registered.

343    Having decided that question, a second question might well have arisen in this way: if the respondents are using a sign substantially identical with or deceptively similar to either or both of the registered trade marks in relation to, for example, “apartment rental and letting services” which fall within “letting and rental services” for which each trade mark is registered, are those services, services of the same description as “commercial real estate agency services”, for example, such that the use of the former engages infringement in respect of the latter under a broader s 120(2)(c) test?

344    That secondary consideration did not arise before the primary judge because of the lack of evidence and a lack of attention to the content of the various services, which led to the finding that “commercial real estate agency services” are concerned with only sales and thus those services cannot be regarded as services of the same description as “letting and rental services”. Nor can “hotel services”, having regard to findings as to the content of those services be regarded as services of the same description as “letting or rental services” or “commercial real estate agency services” or “agency services for the leasing of real estate properties”. Accordingly, no such secondary question arose on the evidence. More fundamentally, however, the primary judge found that the respondents used marks substantially identical with or deceptively similar to (or both) each of the registered trade marks in suit in relation to particular services for which each trade mark is actually registered. The claims were found to fall expressly within s 120(1) and not otherwise and thus questions which might have arisen under s 120(2)(c) did not arise. We see no reason to depart from those findings.

345    The respondents rely principally on three overarching considerations.

346    First, they say that the use of “Harbour Lights” was use in connection with the broader names, references or contextual sentences and phrases such as “Cairns Luxury Accommodation – Holiday Apartments” and “Cairns Luxury Apartments” or other such references with the result that the use of the words could not be described as trade mark use and not described as the use of words substantially identical with or, more relevantly, deceptively similar to, either of the registered trade marks in suit and in any event, the use was directed to fixing the viewer’s attention on the physical location of the apartments being offered for rental accommodation. They say that contextually there could be no confusion between their service offerings and those of the appellants.

347    The examples of use and the broader findings of the primary judge demonstrate that that contention has no force.

348    Secondly, the respondents say that neither respondent infringed either trade mark because each respondent used the relevant sign in good faith to indicate the geographical origin of the services or the characteristics of the services for the purposes of s 122(1)(b): [278] of these reasons.

349    There can be no doubt that both Ms Bradnam and Liv, in the many examples given, used a mark substantially identical with or deceptively similar to each of the registered trade marks in suit, as a badge of origin, to distinguish, at the relevant moments in time, their services provided as part of their business, in the course of trade, from others. In particular, they used domain names adopting marks substantially identical with and deceptively similar to each of the trade marks in suit to take, at the threshold, inquirers for apartment letting services, to their websites. The relevant services were accommodation rental and letting services and, from time to time, by reference to particular examples, the sale of apartments. To suggest otherwise is a form of sophistry.

350    The respondents could have selected a name, badge or title which operated to differentiate their “business services”, as a badge of origin, from the appellants’ services without any use of, or connection with, the invented words “Harbour Lights” or “Cairns Harbour Lights” authored and adopted by the appellants. They could have coined, authored or adopted their own distinctive badge of origin in their own terms and have used such terms as part of their electronic calling card in the form of domain names. However, they did not do so. They chose to use, as a badge of origin, a badge of origin of another’s services. This is especially so in using domain names to take inquirers to a website offering accommodation rental and letting services and the services of the sale of luxury apartments.

351    Once the respondents elected to use marks substantially identical with or deceptively similar to the trade marks in suit, in domain names, for the purpose of capturing inquirers and taking such persons to their website offering accommodation letting and rental services (and the sale of apartments), the respondents were using the registered trade marks, in the course of trade, in connection with the services they were providing which, to the extent already identified, fell within some of the services for which each trade mark is registered.

352    It may be that from time to time pages of the relevant websites to which an inquirer was taken gave emphasis to the physical location of the particular complex called “Harbour Lights” and its relationship to the harbour and the amenity of Cairns. However, that circumstance does not mean that by using the domain names incorporating marks substantially identical with or deceptively similar to the trade marks in suit, so as to capture inquirers at the threshold, is use of the domain names to indicate geographical origin of the services or geographical characteristics. It is use of the domain names to indicate a connection, in the course of trade, between services and the provider of the services.

353    The respondents say that properly understood all references they have used to “Harbour Lights” or “Cairns Harbour Lights” or “Harbour Lights Cairns” are good faith references to the geographical location and character of the apartments offered for letting or rental (or sale) in the Harbour Lights complex in Cairns. In the examples in evidence, there are, of course, references to and some emphasis upon location, Cairns and the complex and some of its characteristics. However, those references do not explain the use of a mark substantially identical with or deceptively similar to each of the trade marks in suit as a badge of origin of the business services of each respondent in respect of some (at least) of the services for which each trade mark is registered. The marks used by the respondents were not used “to indicate” the “geographical origin” of “the services”. The marks were used to identify a connection, in the course of trade, between the operator of the business providing the services and the services. As it happened, the services were concerned with the rental and letting (and, from to time, sale) of apartments that, of course, necessarily are located in a physical place.

354    We are not satisfied that the respondents have made good the s 122(1)(b) defence.

355    We see no reason to disturb the findings of the primary judge concerning the matters summarised in the schedule.

356    Thirdly, the respondents rely upon s 124(1) of the Act.

357    Section 124(1) of the Act, relevantly, is in these terms:

124    Prior use of identical trade mark etc.

(1)    A person does not infringe a registered trade mark by using an unregistered trade mark that is substantially identical with, or deceptively similar to, the registered trade mark in relation to:

(a)    goods similar to goods (registered goods) in respect of which the trade mark is registered; or

(b)    services closely related to registered goods; or

(c)    services similar to services (registered services) in respect of which the trade mark is registered; or

(d)    goods closely related to registered services;

if the person, or the person and the person’s predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before:

(e)    the date of registration of the registered trade mark; or

(f)    the registered owner of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Act, first used the trade mark;

whichever is earlier.

…

[emphasis adopted in the Act]

358    It will be recalled that the trade mark “Harbour Lights” was registered with effect from 21 January 2009 (being relevantly the “date of registration”; s 6 of the Act) and the trade mark “Cairns Harbour Lights” was registered with effect from 21 April 2009. It will also be recalled that the registered owner used each of the registered marks from, at the latest, 17 December 2005.

359    It follows, that in order for each of the respondents to make good a defence under s 124(1) each of them need to make good that they (and in the case of Liv, Liv’s predecessor in title in the form of Ms Bradnam) used, in the course of trade, an unregistered trade mark (substantially identical with or deceptively similar to each of the registered trade marks) in relation to any one or more of the registered services, continuously, from a time before 17 December 2005 (that date being the earlier of the two dates contemplated by s 124(1)(e) and (f)). That is not so. The registered owner was the first user of each registered trade mark and the unregistered marks used by Ms Bradnam and later by Liv were not used from a date before 17 December 2005. Thus, the defence under s 124(1) fails.

360    As to the qualification mentioned at [341] of these reasons, we regard use of the domain names to take inquirers to the website of the respondents, from time to time, as in a different category. The appellants have made good a significant number of examples of use by the respondents of marks which are substantially identical with or deceptively similar to (or both) each of the registered trade marks in respect of particular categories of services. We take the view that that evidence is sufficient to warrant the grant of an injunction in relation to the use of either mark in relation to all of the registered services on the footing that the appellants have made good trade mark infringement for the purposes of s 120(1) in relation to a significant number of the services falling within the Class 36 and Class 43 services. That case has been found to have been made good in relation to all of the Class 36 and Class 43 services other than “agency services for the leasing of real estate properties” and, in the main, “commercial real estate agency services” (except to the extent where there are findings of the service of sales) and “hotel services” (except in those examples where the primary judge has found use in relation to the sale of apartments and hotel services). Nevertheless, there are examples in each category other than “agency services for the leasing of real estate properties”. We also note that there was no contest on the part of the respondents before the primary judge as to ownership of each mark in relation to “commercial real estate agency services” and “hotel services”, in any event. In our view, the injunction ought to run in relation to all the registered services, in respect of use of the domain names.

361    In the result, we conclude as follows:

(1)    The appellants have made good their contentions of ownership of the trade mark “Harbour Lights” and the trade mark “Cairns Harbour Lights”.

(2)    Ms Bradnam and Liv have used words or a mark substantially identical with or deceptively similar to each of the trade marks, as a trade mark in relation to services in respect of which each trade mark is registered, as found by the primary judge.

(3)    The schedule at [328] sets out a summary of the examples of trade mark infringement.

(4)    There is no reason to disturb any aspect of those findings and although we are urged to reverse the findings in relation to L4 and L7 we see no basis for disturbing those conclusions of the primary judge.

(5)    The order cancelling the registration of the trade mark “Cairns Harbour Lights” is to be set aside.

(6)    The orders amending the registration of “Harbour Lights” in relation to the Class 36 and Class 43 services are to be set aside.

(7)    The defence under s 124(1) fails.

(8)    The defence under s 122(1)(b) fails.

(9)    As to Order 5 of the orders of 21 July 2015, that order is to be amended so as to provide after the matters recited at (a) to (d), the following words “as a trade mark to promote or advertise any hotel accommodation services in Australia including via websites; from using “Harbour Lights Apartments” as a trade mark to promote or advertise any commercial real estate agency services in Australia (including via websites); and from using any of the descriptions recited at (a) to (d) as a trade mark in relation to any of the services in respect of which “Harbour Lights” is registered as a trade mark or “Cairns Harbour Lights” is registered as a trade mark.

(10)    Order 7 of the orders of 21 July 2015 is to be set aside.

(11)    The appeal is to be upheld.

(12)    The cross-appeal is to be dismissed.

362    Consequential orders may be necessary to give effect to these reasons. The appellants are directed to submit proposed orders within 21 days.

363    The parties are directed to put on written submissions as to costs within 21 days, limited to five pages.

Associate:

Dated:    7 April 2017

SCHEDULE 1

SCHEDULE 2

SCHEDULE 3

SCHEDULE 4

SCHEDULE OF PARTIES