Federal Court of Australia

Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328

ORDERS

THE COURT ORDERS THAT:

1.    The Applicant’s application be dismissed.

2.    The First Respondent’s application by cross-claim be dismissed in so far as it concerns registered trade mark number 1388154 (for “CORNER HOTEL”) and registered trade mark number 1623364 (for “CORNER PRESENTS”).

3.    Within 14 days, the First Respondent is to file and serve a notice stating whether it maintains its application by cross-claim in so far as it concerns registered trade mark number 1442211 (for “CORNER”) and registered trade mark number 1669900 for (“THE CORNER”).

4.    Within 21 days, the parties are to file and serve an agreed timetable for the resolution of:

(a)    the First Respondent’s application by cross-claim (if maintained by the First Respondent); and

(b)    the costs of the proceeding,

or, in the absence of agreement, the timetable proposed by each party.

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

REASONS FOR JUDGMENT

O’BRYAN J:

A.    Introduction

1    This proceeding concerns two live music venues located in Melbourne, one in the inner city suburb of Richmond and the other in the central business district of Melbourne, and the right to use trade marks which include the words “corner” and “corner hotel”.

2    Since 1995, the applicant (Swancom) has been the owner and operator of a live music and hospitality venue located at 57 Swan Street, Richmond, Victoria. It consists of the usual facilities associated with a public hotel (a front bar, a rooftop bar and restaurant and a number of other function rooms and other areas) as well as a live music area, known as the "bandroom", which can accommodate 750 to 800 patrons. The venue occupies a block that fronts (on three sides) each of Swan Street, Stewart Street and Botherambo Street and thus sits at the junction of two street corners. The venue has been called the Corner Hotel for a long time (and prior to its ownership by Swancom).

3    Swancom applied for and received registration for the following trade marks (collectively, the Swancom marks):

(a)    trade mark number 1388154 for “CORNER HOTEL” (with a filing date of 11 October 2010) registered in respect of the following services:

Class 41: Organising, conducting, providing and providing information in relation to entertainment and cultural activities, being live music performances; providing facilities for live music performances; ticket booking and reservation services for entertainment and cultural activities being live music performances; publication services relating to these services; provision of all such services over a global computer network;

Class 43: Provision of food and drink; cocktail lounge, bar, cafe, snack bar and restaurant services; catering services; hospitality services

(b)    trade mark number 1442211 for “CORNER” (with a filing date of 10 August 2011) registered in respect of the following services:

Class 41: Organising, conducting, providing and providing information in relation to entertainment, recreation, sporting and cultural activities, including live music performances; amusement services; entertainment services; providing facilities for entertainment, recreation, sporting and cultural activities, including live music performances; ticket booking and reservation services for entertainment, recreation, sporting and cultural activities; publication services relating to these services; provision of all such services over a global computer network;

Class 43: Provision of food and drink; cocktail lounge, bar, cafe, snack bar and restaurant services; catering services; hospitality services

(c)    trade mark number 1623364 for “CORNER PRESENTS” (with a filing date of 16 May 2014) registered in respect of the following services:

Class 41: Music and entertainment booking services, including providing information about music and entertainment booking services; and

(d)    trade mark number 1669900 for “THE CORNER” (with a filing date of 20 January 2015) registered in respect of the following services:

Class 41: Organising, conducting, providing and providing information in relation to entertainment, recreation, sporting and cultural activities, including live music performances; amusement services; entertainment services; providing facilities for entertainment, recreation, sporting and cultural activities, including live music performances; ticket booking and reservation services for entertainment, recreation, sporting and cultural activities; publication services relating to these services; provision of all such services over a global computer network.

Class 43: Provision of food and drink; cocktail lounge, bar, cafe, snack bar and restaurant services; catering services; hospitality services

4    In evidence and submissions, Swancom consistently referred to the hotel in Swan Street, Richmond from which it conducts its business as “The Corner Hotel” (i.e. including the definite article as part of the business name). However, as can be seen, the registered trade mark for CORNER HOTEL does not include the definite article as part of the mark. The evidence shows that Swancom has been inconsistent in its use of the definite article as part of the name of the hotel and business. As referred to below, the domain name for the business website and the name of the business Instagram account do not include the definite article, whereas the name of the business Facebook account does include the definite article. In these reasons, I will refer to the hotel and business as the “Corner Hotel”, consistently with the registered trade mark. However, nothing turns on this usage given that there is little difference visually or phonetically in referring to the Corner Hotel or The Corner Hotel.

5    Each of the first respondent, The Jazz Corner Hotel Pty Ltd (JCHPL), the second respondent, Bird’s Basement Pty Ltd (BBPL), and the third respondent, Saint Thomas Pty Ltd (STPL), conduct business from premises within a tall building that occupies the block at 330-360 William Street, Melbourne. That building is next door to a smaller building that is on the north-east corner of the intersection of William and La Trobe Streets. Thus, the building at 330-360 William Street (which I will refer to as the William Street building) is close to the corner of William and La Trobe Streets, but not actually on the corner. There are other business occupants of the William Street building, including particularly Oaks Apartments.

6    The first to third respondents conduct three distinct but related businesses within the William Street building:

(a)    JCHPL conducts a hotel business called “The Jazz Corner Hotel”, which has the street address 352 William Street, Melbourne;

(b)    BBPL operates a jazz music venue called “Bird’s Basement” which is located in the basement of the building and which has its primary street entrance at 11 Singers Lane, Melbourne, which is at the rear of the building; and

(c)    STPL operates a café business called the “The Jazz Corner Café” within the building.

7    The first to third respondents are described in the evidence given on behalf of the respondents as “part of” a group of companies referred to as the “Ubertas Group”. The Ubertas Group is described in the evidence as a “property development company” operating in real estate, accommodation, hospitality, technology and the entertainment industry in Australia. The evidence did not descend to details of the corporate ownership structure or the identity of the ultimate parent company of the group. Nevertheless, the evidence given on behalf of the respondents proceeded on the basis that the first to third respondents have common (ultimate) ownership, management and control under the Ubertas Group. The fourth respondent, Albert Dadon, is the Executive Chairman of the Ubertas Group and is also the sole director of each of the first to third respondents. The Development Director of the Ubertas Group, Simon Barr, deposed that he has day-to-day involvement in the operation of each of the businesses conducted by the first to third respondents, including overseeing the budget and marketing, managing staff and directing the operations of these businesses, and that the General Managers of each of the three businesses report to him on a daily basis on their day-to-day operations.

8    The fifth respondent, Ubertas Operations Pty Ltd (UOPL), also part of the Ubertas Group, owns the following registered trade marks:

(a)    trade mark number 1825739 (Registered Jazz Corner Hotel device mark) for the mark

(with the filing date 14 February 2017) for the following services in class 43:

Accommodation bureaux (hotels, boarding houses); Rental of temporary accommodation; Hotels; Hotel reservations; Snack-bars; Bar services; Café services; Catering services; Club services for the provision of food and drink; Cocktail lounge services; Night club services (provision of food and drink); Preparation of food and drink; Providing food and drink; Restaurant services;

(b)    trade mark number 1839135 for “JAZZ CORNER” (Registered Jazz Corner accommodation word mark) (with the filing date 19 April 2017) for the following services in class 43:

Accommodation bureaux (hotels, boarding houses); Rental or temporary accommodation.

9    Since it commenced business, JCHPL has used the UOPL marks under licence from UOPL, first using the unregistered marks and, from the relevant date of registration of each mark, the registered marks. The licence arrangement was formally documented by way of a licence agreement in or around May 2019.

10    STPL owns the following two registered trade marks:

(a)    trade mark number 1893220 for “JAZZ CORNER” (Registered Jazz Corner café word mark) (with the filing date 8 December 2017) in relation to the following services in class 43:

Snack-bars; Café services; Providing food and drink; Restaurant services;

(b)    trade mark number 1906026 for the mark

(Registered Jazz Corner Café device mark) (with a filing date of 9 February 2018) in relation to the same services as trade mark number 1893220.

11    I will refer to the registered trade marks owned by UOPL and STPL as the “Registered Jazz Corner marks”.

12    The evidence shows that STPL consistently refers to its business (in signage and promotional material) as “The Jazz Corner Café” (i.e. using the definite article as part of the name). JCHPL most frequently refers to its business (in signage and promotional material) as the “The Jazz Corner Hotel”, although on occasions it uses “Jazz Corner Hotel” (i.e. without the definite article). I will refer to it as The Jazz Corner Hotel to reflect the most common usage.

13    By its amended statement of claim, Swancom alleges that each of JCHPL, BBPL and STPL has infringed the Swancom marks by using, without the licence or authority of Swancom, the following trade marks (which I will collectively refer to as the “Jazz Corner marks”):

(a)    THE JAZZ CORNER OF MELBOURNE and JAZZ CORNER OF MELBOURNE (Jazz Corner of Melbourne marks);

(b)    THE JAZZ CORNER OF THE WORLD and JAZZ CORNER OF THE WORLD (Jazz Corner of the World marks);

(c)    THE JAZZ CORNER HOTEL, JAZZ CORNER HOTEL and JAZZCORNERHOTEL (Jazz Corner Hotel marks); and

(d)    THE JAZZ CORNER CAFÉ, JAZZ CORNER CAFÉ and THEJAZZCNRCAFE (Jazz Corner Café marks),

in Australia in relation to the following services (relevant services):

(e)    services of organising, conducting, providing and providing information in relation to live music performances (live music services); and

(f)    ticket booking and reservation services for live music performances (booking services).

14    In its closing submissions, Swancom placed sole reliance on s 120(1) of the Trade Marks Act 1995 (Cth) (TMA) and abandoned reliance on s 120(2) (which had been pleaded). Swancom also confined itself to an allegation that the Jazz Corner marks are deceptively similar to the Swancom marks and abandoned the allegation that the marks are substantially identical (which had been pleaded).

15    Swancom also alleges that:

(a)    JCHPL, BBPL and STPL have engaged in a concerted and agreed common action being a joint marketing campaign to promote the services offered and provided by each of them including the live music services provided by BBPL and the booking services provided by JCHPL; and

(b)    in furtherance of the concerted and agreed common action, one or more of JCHPL, BBPL and STPL has used, without the licence or authority of Swancom, the Jazz Corner marks in relation to the music venue services provided by BBPL and the booking services provided by JCHPL,

and that each of JCHPL, BBPL and STPL are joint tortfeasors in the trade mark infringements committed by the others in furtherance of the concerted and agreed common action.

16    Swancom further alleges that Mr Dadon is a joint tortfeasor in the trade mark infringements committed by each of JCHPL, BBPL and STPL on the basis that he has:

(a)    directed or procured the infringing conduct of JCHPL, BBPL and STPL;

(b)    been involved in invading Swancom's rights;

(c)    had a close personal involvement in the infringing acts of JCHPL, BBPL and STPL;

(d)    made the torts of JCHPL, BBPL and STPL his own; and/or

(e)    used JCHPL, BBPL and STPL as an instrument of his own wrong.

17    Swancom seeks a range of remedies for the alleged infringing conduct including declaratory relief, injunctive relief, corrective advertising and an order for damages pursuant to section 126(1) of the TMA and an order for additional damages pursuant to sections 126(2) of the TMA or, at Swancom's election, an account of profits.

18    Finally, Swancom also seeks the cancellation or amendment of the Registered Jazz Corner marks under s 88(2)(a) of the TMA on the basis that they could have been opposed under ss 57 and 44(2) for being substantially identical with or deceptively similar to one or more of the Swancom marks which have been registered from an earlier priority date in respect of the same or similar services.

19    By their second further amended defence, the respondents deny infringement of the Swancom marks on the following bases:

(a)    first, the respondents deny that they have used the Jazz Corner marks in relation to the services in respect of which the Swancom marks are registered;

(b)    second, the respondents deny that the Jazz Corner marks are deceptively similar to the Swancom marks;

(c)    third, the respondents deny that they have used the Jazz Corner of Melbourne marks or the Jazz Corner of the World marks as trade marks;

(d)    fourth, the respondents contend that any use of the terms “Jazz Corner of the World” and “Jazz Corner of Melbourne” is use in good faith to indicate a characteristic of the services each provides, namely that the vicinity of the building from which each of JCHPL, BBPL and STPL operates is a pre-eminent centre for jazz music and culture associated with jazz music, and thereby satisfies s 122(1)(b)(i) of the TMA;

(e)    fifth, the respondents contend that they would be entitled to obtain registration of the terms “Jazz Corner of Melbourne” and “Jazz Corner of the World” and the use of those terms thereby satisfies s 122(1)(fa) of the TMA; and

(f)    sixth, the respondents contend that their use of the Registered Jazz Corner marks is the exercise of rights granted to them under the TMA and thereby satisfies s 122(1)(e) of the TMA.

20    Mr Dadon denies that he is a joint tortfeasor.

21    The respondents further deny that the Registered Jazz Corner marks are liable to be cancelled or amended under s 88(2)(a) and also place reliance on the matters in s 44(3)(a) and (b) of the TMA, namely that because of honest concurrent use of the marks or because of some other circumstance, those marks ought not be cancelled or amended.

22    JCHPL has also brought a cross-claim against Swancom under s 88(1)(a) of the TMA seeking rectification of the Register by cancellation of the Swancom marks in respect of the registered services in class 41. JCHPL relies on two principal grounds:

(a)    first, relying on ss 88(2)(a) and 41 of the TMA, JCHPL alleges that the Swancom marks are not capable of distinguishing Swancom’s services; and

(b)    second, relying on s 88(2)(c) of the TMA, JCHPL alleges that the use of the Swancom marks is likely to deceive or cause confusion.

23    Swancom denies those allegations and, in the alternative, contends that the Court should not cancel the Swancom marks in the exercise of the Court’s discretion.

24    The trial was limited to issues of trade mark validity, infringement, injunctive relief and declaratory relief, with the issue of pecuniary relief to be heard and determined separately. Evidence was heard on 16 and 17 March 2020. On 26 March 2020, I made various evidentiary rulings: Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2020] FCA 396; 153 IPR 1. The parties agreed to rely on written closing submissions, the last of which were filed on 3 April 2020.

25    For the reasons that follow, I dismiss Swancom’s application, including its application for cancellation or amendment of the Registered Jazz Corner marks. In relation to JCHPL’s cross-claim for cancellation of the Swancom marks in respect of the registered services in class 41, I dismiss the claim in respect of the CORNER HOTEL and the CORNER PRESENTS marks. In relation to the CORNER and THE CORNER marks, the parties will be afforded an opportunity to make further submissions on the question whether the registration of those marks in respect of services in class 41 should be amended, or a condition or limitation should be entered on the registration, to preserve the freedom of hotels, cafés, bars and restaurants, who may provide ancillary entertainment services (for example, free live music or sporting events shown on large screens) to use the word “corner” in their trading name.

B.    OVERVIEW OF EVIDENCE

26    Evidence in the proceeding was given primarily by way of affidavit with relatively confined cross-examination. No challenge was made to the credit of any of the witnesses who were cross-examined, and no material challenge was made to their reliability. Documentary evidence was largely exhibited to the affidavits, and a small number of additional documents were tendered.

27    During the course of the applicant's opening submissions, senior counsel for the applicant, aided by a solicitor for the applicant, presented to the Court a live scroll-through view of certain pages of the website appearing at www.jazzcornerhotel.com (The Jazz Corner Hotel website). Screenshots were made of the pages of the website that the Court was taken to and, with the agreement of the respondents, those screenshots were exhibited to an affidavit of Anthony Watson (a partner at the firm of K&L Gates, solicitors for the applicant) affirmed 19 March 2020.

28    In addition, on the application of the respondents and pursuant to rule 14.03 of the Federal Court Rules 2011 (Cth), the Court conducted a view of the businesses conducted by each of the first to third respondents at the William Street building on the morning of 17 March 2020. A video recording of the view was made by Mr Watson and was exhibited to his affidavit of 19 March 2020. A video recording was also made by Havva Celik, a legal representative of the respondents, and was exhibited to her affidavit sworn 19 March 2020.

29    Swancom adduced evidence from the following witnesses:

(a)    Timothy Northeast is the managing director of Swancom. Mr Northeast affirmed two affidavits dated 11 December 2019 and 26 February 2020. He gave evidence about the history of the Corner Hotel, its acquisition by Swancom, its operations under the ownership of Swancom and the use of the Swancom marks. Mr Northeast also gave evidence about bands and musicians that have performed at both the Corner Hotel and Bird’s Basement in Melbourne. Mr Northeast was cross-examined.

(b)    Fiona Duncan has worked in the Australian music industry for over 32 years, primarily as a general manager for various bands and musicians, including Spiderbait, The Breadmakers, Spazzys and The Puritans. Ms Duncan affirmed an affidavit dated 21 November 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Ms Duncan was cross-examined.

(c)    Richard Moffat has worked in the Australian music industry for over 30 years, primarily working as a “Booker”, booking live music venues in Melbourne for artists to perform at and, since 2000, as a “Festival Programmer”, which involves booking artists to perform at live music festivals around Australia. Mr Moffatt affirmed an affidavit dated 26 November 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Mr Moffat was cross-examined.

(d)    James Young has worked in the Australian music industry for over 35 years, principally as an owner/operator of live music venues, but also as a breakfast show presenter for Melbourne community station Triple R from 1990 to 1995, and later as a programmer for that station from 1995 to 1998, a booking agent for artists to perform at third party venues and a manager for various bands and artists. Mr Young affirmed an affidavit dated 4 December 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Mr Young was cross-examined.

(e)    Leigh Treweek is a publisher with over 24 years' experience in the music industry. Since 2015, Mr Treweek has operated a music management business called "Handshake Management", working with a number of artists. Since 2018, Mr Treweek has also owned and worked in a business called "Handshake Media", which publishes one of Australia's largest music media publications called "The Music" and which has over 2.2 million subscribers. Prior to that, Mr Treweek was a director of Street Press Australia which owned Impress Magazine, which also included a comprehensive Victorian gig guide. Mr Treweek affirmed an affidavit dated 12 December 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Mr Treweek was not cross-examined.

(f)    Michael Thomas has been a professional musician for over 40 years perhaps most famously as the lead singer and lead guitarist of the band Weddings Parties Anything, a multi-award winning band that received four Australian Recording Industry Association Music Awards, and as a solo performer after the band's break-up in 1999. Mr Thomas has also been a part-owner in three hotels and live music venues over various periods from 1998, being the Merri Creek Tavern in Melbourne, the Yarra Hotel in Abbottsford and the Oxford Hotel in Perth. Mr Thomas estimated that he had performed at the Corner Hotel at least 25 times from late 1986 to 2008. Mr Thomas affirmed an affidavit dated 12 December 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Mr Thomas was cross-examined.

(g)    Daniel Rogers is a music promoter with over 18 years' experience in that role in Australia and overseas. He owns and works in the following businesses which operate within the music industry in Australia: Lunatic Entertainment (a music management company which has been operating for 18 years and provides services to artists that include the organisation of tours and other live music events); Laneway Presents (a music touring company which has been operating for eight years and provides services to artists that includes promotion and touring in small live music venues through to arena and outdoor field concerts); St Jerome’s Laneway Festival (an annual music festival which has been operating for 16 years and is currently held in six cities across Australia and New Zealand); and Fairgrounds Festival (an annual music festival which has been operating for four years). Mr Rogers affirmed an affidavit dated 13 December 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Mr Rogers was not cross-examined.

(h)    Shane Homan has been an Associate Professor in Media and Cultural Studies in the School of Media, Film and Journalism at Monash University since 2008, where he is also a member of the Culture, Media, Economy research group. He has been researching Australian music venues since 1994. Mr Homan affirmed an affidavit dated 12 December 2019, giving opinion evidence about venues for live music in Melbourne and the role and reputation of the Corner Hotel in the live music industry. I admitted Mr Homan’s affidavit while reserving the assessment of the weight to be given to his evidence. As discussed further below, in my view Mr Homan’s evidence has limited significance to the issues to be determined in this proceeding. Mr Homan was cross-examined.

(i)    Leonard Hickey is a solicitor employed by the law firm K&L Gates, the solicitors for Swancom in the proceeding. Mr Hickey affirmed an affidavit dated 25 October 2019. Mr Hickey adduced evidence relating to the businesses conducted by the respondents including photographs of building signage, brochures and webpage screenshots. Mr Hickey was not cross-examined.

(j)    Timothy Appleby is a solicitor employed by the law firm K&L Gates, the solicitors for Swancom in the proceeding. Mr Appleby affirmed an affidavit dated 26 February 2020. Mr Appleby gave evidence about the jazz club in New York which trades as "Birdland" and its use of the phrase "Jazz Corner of the World". Mr Appleby also gave evidence about Australian trade mark applications and registered trade marks that include the word "corner" or the words "the corner". Mr Appleby was not cross-examined.

30    The respondents adduced evidence from the following witnesses:

(a)    Albert Dadon is director of each of the respondents, and describes himself as a businessman and musician. As Executive Chairman of Ubertas Group for over 17 years, he has been involved in property management and development including operating hotels and clubs. Under his stage name "Albare", Mr Dadon is a jazz guitarist and composer. He has recorded a number of albums including Midnight Blues (2007), After the Rain (2009), Travel Diary (2010), Long Way (2012), The Road Ahead (2013), 2 Decades of Jazz (2014), Only Human (2015) and Dream Time (2016). In 2002, Mr Dadon became Chair of the Melbourne International Jazz Festival and, in 2003, he founded the annual Australian Jazz Bell Awards. In 2008, Mr Dadon received an Order of Australia (AM) for service to the arts. Mr Dadon affirmed three affidavits dated 25 October 2019, 28 January 2020 and 17 February 2020. Mr Dadon gave evidence concerning the businesses conducted by the respondents. A considerable part of Mr Dadon’s evidence was directed to the reasons that he chose the trading names incorporating the use of the words “Jazz Corner” and “Bird’s Basement” in relation to the businesses conducted by the first to third respondents. Mr Dadon was cross-examined.

(b)    Simon Barr has been the Development Director of the Ubertas Group for 9 years. As part of his role, Mr Barr has day-to-day involvement in the operation of the businesses of each of the first to third respondents. Mr Barr affirmed an affidavit dated 13 December 2019, giving evidence concerning the physical signage and online marketing material used by the first to third respondents and their marketing expenditure. Mr Barr was not cross-examined.

(c)    Jane Good is a legal representative of the respondents. Ms Good affirmed three affidavits dated 25 October 2019, 9 December 2019 and 20 February 2020. Amongst other things, Ms Good gave evidence concerning the use of the words “corner” and “corner hotel” in the course of trade. Ms Good was not cross-examined.

(d)    Havva Celik is also a legal representative of the respondents. In addition to her affidavit sworn 19 March 2020 (referred to above), Ms Celik swore an affidavit dated 20 February 2020, giving evidence about her attendance at, and visual observations about, the business named "The Corner Hotel Alexandra" at 65 Grant Street, Alexandra in Victoria. Ms Celik was not cross-examined.

(e)    Matthew Lagamba is a legal assistant in the casual employ of the solicitors for the respondents. Mr Lagamba affirmed an affidavit dated 20 February 2020, giving evidence about his attendance at, and visual observations about, various businesses trading under a name that included the word “corner”. Mr Lagamba was not cross-examined.

C.    FINDINGS OF FACT

C.1    The Corner Hotel

31    Prior to its acquisition by Swancom, the Corner Hotel had a long history as a live music venue. The venue was owned and operated by the Gale family and partners from the mid-1980s through to the mid-1990s. Live music was a strong focus of the business throughout this period, which included performances by notable artists including Mick Jagger and Dave Gilmour. Between 1993 and 1994, the business was briefly owned by Michael Geoghagen. Live music continued throughout this time. However, the business failed and the building came onto the market through a realisation sale in 1995. Swancom purchased the Corner Hotel business (principally goodwill) from the previous operator and took on a lease of the premises (the building was sold to another person).

32    As stated earlier, the Corner Hotel premises include the usual facilities associated with a public hotel (a front bar, a rooftop bar and restaurant and a number of other function rooms and other areas) as well as a live music area, known as the "bandroom", which can accommodate 750 to 800 patrons. The bandroom also has a bar serving drinks to customers during performances. However, the Corner Hotel does not provide accommodation services.

33    Under Swancom’s control, the Corner Hotel has attracted some of the best known Australian and international musical talent from a wide variety of genres. In his evidence, Mr Northeast listed some 68 well-known Australian and international acts that have performed at the Corner Hotel since 1995, including (as a sample): Ben Harper, Crowded House, Powderfinger, Weddings Parties Anything, Paul Kelly, Black Sorrows, Rene Geyer, Midnight Oil, The Living End, The Waifs, The White Stripes, John Butler Trio, You Am I, Dizzee Rascal, Killing Heidi, Hoodoo Gurus and Kasey Chambers. Many musicians have recorded live performances at the Corner Hotel for national and international releases on CD, DVD and digital albums. For example, Colin Hay, the lead singer from Men at Work, recorded a video of his performance at the Corner Hotel in 2010 and released a DVD of that recording entitled "LIVE at The Corner". Other artists that have released CDs titled “Live at the Corner Hotel” are Ash Grunwald and The Clutch in 2006, Jeff Martin and Something for Kate in 2008 and Bob Evans in 2009.

34    Further, since Swancom took over its operation in 1995, many noteworthy performances and events have happened at the Corner Hotel including:

(a)    U2 recorded the film clip for their "Window in the Skies" single at the Corner Hotel in 2006;

(b)    Crowded House chose the Corner Hotel as the venue for their final Melbourne shows in 1996 (a few days before the band played their televised goodbye show to the world on the steps of the Sydney Opera House) which was recorded and released as a DVD titled “Crowded House Live at The Corner”;

(c)    Jack White of The White Stripes wrote the riff to the song "Seven Nation Army", which went on to become a number one hit in many countries, during a soundcheck at the Corner Hotel in 2002.

35    The Corner Hotel has won multiple industry awards including:

(a)    Music Victoria Best Venue - 2013, 2014, 2015, 2016, 2017, 2018;

(b)    National Live Music Awards Best Venue - 2016, 2019;

(c)    AHA National Awards for Excellence Best Entertainment Venue - 2019; and

(d)    AHA Victorian State Awards for Excellence Best Entertainment Venue - 2017, 2018, 2019.

36    Swancom previously operated a box office at the Corner Hotel for selling tickets to performances at the venue. Mr Northeast gave evidence that the box office also sold tickets to performances at another venue, the Northcote Social Club, of which he was also a part owner. However, as at the time of trial, Swancom no longer operated the physical box office. Tickets to performances at the Corner Hotel are now sold online through a third party ticketing service called Eventbrite, with the ticket being emailed to the customer. In the purchase transaction, the customer is diverted from the Corner Hotel website to the Eventbrite website to complete the sale and ticketing, and Swancom pays Eventbrite a commission on the sale for their services.

37    Swancom has for many years advertised the services it provides at and in relation to the Corner Hotel through a wide range of media including festival programs, radio, newspapers, magazines and posters. This advertising and promotion includes both the live music events at the Corner Hotel and the hospitality offering at the Corner Hotel. Mr Northeast’s affidavit exhibited a large sample of such advertising and promotional material. By reason of the challenge to the validity of the Swancom marks (which have different filing dates), it is necessary to have regard to the periods in which the Swancom marks have been used as trade marks and the manner and extent of their use.

38    The manner of Swancom’s use of the Swancom marks has not been consistent over time. As illustrated below, Swancom has used a graphic in conjunction with the CORNER mark, it has used a stylised version of the CORNER mark, and it has often added the word “Richmond” after the CORNER HOTEL mark. However, it has also used the Swancom marks on their own.

39    The Corner Hotel premises has a faded painted sign on its exterior stating CORNER HOTEL. Until about 2017, a prominent sign outside the hotel’s main entrance appeared as follows:

40    Mr Northeast said in cross-examination that the graphic displayed on the sign was in use before Swancom acquired the business and he did not know its origin or meaning. The evidence shows that both the graphic and the stylised rendering of the word “corner” were used by Swancom on signage, marketing material and business cards until at least 2017. However, the evidence shows that Swancom also used the words “corner” and “hotel” in plain text forms in marketing material.

41    Swancom has advertised the Corner Hotel on a national level in programs for The Big Day Out and Falls Festival. Mr Northeast exhibited a program for each of those festivals from 2010. The programs from that year show that Swancom used the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above.

42    Swancom has also advertised the Corner Hotel in Melbourne newspapers The Age and the Herald Sun as well as smaller local newspapers. Mr Northeast exhibited copies of such newspaper advertisements placed by Swancom in the period from June 1997 to September 2011. In those advertisements, Swancom used the CORNER, CORNER HOTEL and THE CORNER marks, sometimes followed by the word “Richmond”.

43    Swancom has produced posters and flyers to promote events and services offered at the Corner Hotel. Mr Northeast exhibited copies of such posters and flyers that Swancom has displayed at and distributed from the Corner Hotel. The earliest poster was used in 2009, with the other posters having been used in the period 2010 to 2014. The majority of the posters through to 2012 used the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above. The later posters (after 2012) typically used the CORNER mark in plain text form.

44    Swancom has placed advertisements promoting the Corner Hotel in various magazines, including: “Beat” which is a magazine that has a primary focus on Melbourne's live music scene; “InPress” which was a weekly street press that was published in Melbourne for many years until about 2013; “Rhythms” and “Time Out” (about which no evidence was given). Mr Northeast exhibited copies of such advertisements that have appeared in those magazine dating from 1996 through to 2013. In the advertisements in the 1990s, Swancom used the CORNER, CORNER HOTEL and THE CORNER marks in plain text form, sometimes followed by the word “Richmond”. In the mid-2000s, Swancom used the CORNER mark in stylised form, sometimes in conjunction with the graphic in similar manner to the signage depicted above. In the advertisements in the period from the late 2000s to 2013, Swancom used the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above.

45    Since at least 2005, Swancom has also sold merchandise, such as t-shirts, caps and stubby holders, to promote the Corner Hotel. Mr Northeast exhibited pictures of merchandise sold in the period 1996 to 2000 which bear the CORNER HOTEL mark, sometimes with the word “Richmond” added.

46    Tickets to events at the Corner Hotel have always included a reference to at least one of the Swancom marks. Similarly, menus for the food and drinks offerings at the Corner Hotel bear the name “Corner” (generally in the stylised form, and sometimes with the graphic added).

47    Since at least 2001, Swancom has operated a website with the domain name www.cornerhotel.com to promote the Corner Hotel and the services Swancom provides at and in relation to the Corner Hotel (the Corner Hotel website). Among other things, the Corner Hotel website includes information about the entertainment and live music performances held at the Corner Hotel, the food and drinks offering available, copies of marketing materials and links to merchandise which is available for purchase. Mr Northeast exhibited screenshots of pages of the website from 2011. The screenshots depict the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above.

48    Swancom has an email subscription list of over 100,000 subscribers which includes a significant number of interstate and international subscribers. Swancom sends regular newsletter emails to these subscribers to promote events and services at the Corner Hotel. Mr Northeast exhibited copies of such promotional banners and material which had been sent between 2011 and 2014. The copies showed that, on some occasions, Swancom used the CORNER mark in plain text format and, on other occasions, Swancom used the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above.

49    Since at least 2008, Swancom has operated a Facebook page for the Corner Hotel. In or around 2012, the name of this page was changed to “Corner Presents” and continued as www.facebook.com/cornerpresents until in or around 2016. The page was primarily designed to promote music performances at the Corner Hotel and at venues operated by related and non-related companies of Swancom. Mr Northeast gave evidence that that business ceased in about 2016 and that the CORNER PRESENTS mark has not been used since that time.

50    Since about late 2013, Swancom has also operated a separate Facebook page for the Corner Hotel at www.facebook.com/thecornerhotel. The Corner Hotel Facebook page promotes the services provided at the Corner Hotel generally and includes sections which display the Corner Hotel's food menu and beer list. Mr Northeast exhibited screenshots of Facebook pages in the period 2011 to 2014. The screenshots from 2011 show that Swancom displayed the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above. The screenshots from 2013 and 2014 show that Swancom displayed the CORNER HOTEL mark in conjunction with a new device as follows:

51    Since 11 May 2011, Swancom has operated an Instagram page at www.instagram.com/cornerhotel which has over 19,000 "followers". Mr Northeast exhibited screenshots of Instagram pages in the period 2013 to 2018. The screenshots show that Swancom displayed the CORNER HOTEL mark in conjunction with the new device depicted above.

52    From between 2008 and 2016, Swancom also operated a Twitter page which, as at around 2011, had nearly 3,000 "followers". Mr Northeast exhibited a screenshot of a Twitter page taken in 2011. The screenshot shows that Swancom displayed the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above.

53    In his evidence, Mr Northeast also referred to the use of tour posters, displayed in public areas, to promote upcoming performances by touring artists. Tour posters for national tours by local and international artists often state all of the venues at which the artists will be playing in Australia as part of their tour. Mr Northeast exhibited a number of such tour posters in the period 2000 to 2013 which listed the Corner Hotel as one of the venues at which the artist was to perform.

54    Over the years, the Corner Hotel has regularly been the subject of articles published in the mainstream and music media. Mr Northeast exhibited articles published from 2005 to 2018 in a range of publications including The Age and Herald Sun Melbourne newspapers, the Sydney Morning Herald newspaper and various music and entertainment publications including Beat, Inpress, Weekend Notes, Music Feeds and Broadsheet magazine. In these articles, the Corner Hotel is usually referred to as the “Corner Hotel". On some occasions it is referred to as “Melbourne’s Corner Hotel” or “Richmond’s Corner Hotel” (or grammatical variations of such phrases).

55    Mr Northeast gave confidential evidence of Swancom’s marketing expenditure from the 2006 financial year to the 2018 financial year. It is unnecessary to refer to the precise figures, but the expenditure is a substantial sum.

56    Each of the music industry witnesses, Ms Duncan, Mr Moffat, Mr Young, Mr Treweek, Mr Thomas and Mr Rogers gave consistent evidence about the reputation of the Corner Hotel. Their evidence was that the Corner Hotel has a very strong brand and reputation as one of the best and most well-known medium-to-large size live music venues in Australia. Mr Moffat added that the Corner Hotel balances the atmosphere of a pub (meaning a venue with a public bar) with a highly professional and sophisticated music performance venue. Mr Rogers and Mr Treweek both deposed that, because of its reputation as one of the best live music venues in Australia, the Corner Hotel has been one of the first venues considered by them when booking shows for an act that can draw a crowd of approximately 1,000 people in Melbourne and, if an artist has played at the Corner Hotel, they would use that in the promotion of the artist as it is indicative of that artist's success. Each of those witnesses gave evidence that, in the years in which they have worked in the live music industry, they have never heard of or become aware of another venue or business providing live or recorded music trading under the names "The Corner", "The Corner Hotel" or a name incorporating the word "corner".

57    Each of the music industry witnesses has extensive experience in the live music industry as musicians, managers, booking agents and promoters. I accept their evidence as indicative of the reputation of the Corner Hotel within the live music industry. While their evidence was given from their perspective as persons working within the live music industry, necessarily their perspective is reflective of the reputation of the Corner Hotel to that section of the public who attend live music performances of the kind typically staged at the Corner Hotel.

58    Mr Northeast and other witnesses called on behalf of the applicant were cross-examined about the styles or genres of musical acts that typically performed at the Corner Hotel and for which the Corner Hotel had gained a reputation. The witnesses referred to genres such as rock, punk, grunge, metal, roots and folk, and many variations on those genres, and provided broad descriptions of the typical characteristics of those genres. It is not necessary to dwell on the differences between those genres. It is sufficient to observe that the evidence showed that a reasonably wide variety of genres of bands and solo artists have performed at the Corner Hotel. Mr Northeast resisted the suggestion that the Corner Hotel is identified as a rock venue, and said that the Corner Hotel positions itself in the market as a live music venue catering to all genres of music. In my view, that is going too far. The evidence showed that the Corner Hotel has a reputation as a live music venue for bands and solo artists within the wide spectrum of popular musical genres that emerged from the twentieth century, from the roots of folk, blues and jazz music through to rock music in all its forms, variants and offshoots. In respect of jazz, Mr Northeast referred to a number of jazz bands or musicians that have performed at the Corner Hotel including The Necks, Marceo Parker, Trombone Shorty and Virgil Donati.

59    Mr Homan is an Associate Professor in Media and Cultural Studies in the School of Media, Film and Journalism at Monash University and gave expert evidence about the reputation of the Corner Hotel and its role in the music industry “infrastructure” in Melbourne. Mr Homan said that the Corner Hotel enjoyed a reputation as a music “incubator”, providing local Melbourne bands with visibility in local music pub circuits, a venue for fans of different musical genres or sub-genres and a venue for international acts. Mr Homan gave lengthy and somewhat esoteric descriptions of the “incubator” role of music venues and different music “scenes”. He also recited the music awards received by the Corner Hotel and its reference in Government and music industry reports. Mr Homan’s evidence generally confirmed the opinions expressed by the music industry witnesses, but did not take that evidence much further.

60    Mr Homan agreed in cross-examination that the Corner Hotel venue is closely associated with Richmond and is identified by music fans as being located in Richmond. A number of publications in evidence, including press articles, referred to the “Corner Hotel in Richmond”. Mr Homan also agreed that other similar live music venues in Melbourne are also associated with particular suburbs of Melbourne, including the Hotel Espy (a colloquial abbreviation for the Hotel Esplanade) in St Kilda and the Northcote Social Club in Northcote. Mr Northeast agreed in evidence that the Corner Hotel has, from time to time, advertised itself as being “The Corner Hotel Richmond” and a number of such advertisements were adduced in evidence. However, Mr Northeast did not accept that the hotel was closely associated with Richmond. He said that many people would associate the hotel with Richmond but others would not know its location.

61    Overall, I am satisfied on the evidence that the Corner Hotel has a strong reputation in Melbourne and beyond as a venue for professional live music performances with the following characteristics:

(a)    the venue is located in Richmond;

(b)    the venue is medium size (for about 800 people);

(c)    the venue is in a hotel setting where patrons usually stand to watch and listen to the performance and alcoholic drinks can be purchased during the performance; and

(d)    the styles of music performed at the venue are within the wide spectrum of popular musical genres that emerged from the twentieth century, from the roots of folk, blues and jazz music through to rock music in all its forms.

62    I am satisfied that that reputation existed as at the filing date for the earliest Swancom mark, but also that the reputation has continued to grow in the years subsequent to the filing date.

63    The following business activities are intrinsic to the conduct of a business providing a venue for professional live music performances: booking bands and artists to perform on specific dates; marketing and promoting the performance of the bands and artists on the given dates; selling tickets to the performances; and operating the venue for the performances, including providing all necessary sound equipment and personnel, safety and security personnel, bar staff and cleaning staff.

64    I consider below the question whether and to what extent the Swancom marks are inherently adapted to distinguish the services in respect of which the marks are registered and whether, as at their respective filing dates, the marks did distinguish or would become capable of distinguishing those services through use or other circumstances.

C.2    Use of the word “corner” in connection with hotels, bars and cafés

65    I take judicial notice of the fact that, in Australia, hotels or, more colloquially, “pubs” (a business licensed to serve alcoholic drinks on the premises) are often located on street corners. An article published in the online publication “Commercial Real Estate” on 4 March 2018 by Melissa Howard claimed that “69 per cent of our pubs are still on corner blocks”. The source of the figure was not provided and I place no reliance on the accuracy of that figure. Nevertheless, I accept as a fact that hotels often occupy a street corner. The respondents submitted that the reasons for that phenomenon included the business desire for prominence and visibility, as well as historical planning rules that required hotel premises to have a front or principal entrance that was separate from and in addition to the entrance to the bottle shop (in that respect, the respondents referred to s 30 of the Act to consolidate and amend the Laws relating to the Licensing of Public Houses and the Sale of Fermented and Spirituous Liquors of 1876 in Victoria). The submission involved speculation and it is unnecessary to make any determination as to the reasons that hotels in Australia are often located on street corners.

66    It is therefore unsurprising that the evidence showed that the word “corner” has been applied to hotels as a business name in Australia since the 19th century. In addition to the Corner Hotel located in Richmond which is operated by Swancom, the evidence included reference to the following hotels operating (at least) as at the following dates (listed in chronological order):

67    The evidence concerning the above hotels was limited and incomplete, particularly as to the period in which each of the hotels has been in existence and the use of different business names over time.

68    The evidence also shows that the word “corner” is commonly used in connection with hotels as a descriptive term, both by hotel businesses and by journalists writing about hotel businesses for the interest of consumers. The following examples of such uses were referred to in the evidence:

(a)    On 6 January 2015, Jeni Wilson published an article in the online publication “Weekend Notes” titled “Iconic Rejuvenated Historic Corner Pubs in Melbourne”. The article recommended various hotels to visit, commencing with the following description:

You can easily imagine these corner pubs in their infancy. In the good old days when a Holden was the car to buy and a twenty was enough to shout all your mates, these iconic hotels would have been in their glory. Now these corner pubs have been rejuvenated with love, and have broad appeal and possibilities. Steeped with history, stories to tell and varied entertainment, these pubs are much more than a stop on the way home. Reviewed in no particular order, these pubs are well and truly worth a visit.

(b)    In an article published in The Age newspaper in Melbourne on 31 March 2017, Clay Lucas wrote that:

Almost 30 of Melbourne's most historic corner pubs have closed in the last five years, as the city's property boom sweeps all before it.

Developers are increasingly targeting corner pub sites for apartment projects, particularly in the inner city, a special report by The Age has found, with 27 pubs going since 2013 - most of them on busy intersections.

(c)    On 5 September 2019, Andrea McGinniss published an article in the Melbourne-focussed online publication “Good Food” titled “Five of the best classic corner pubs to watch the footy in”. The article commented that most of the teams in the AFL finals that year were “interstate teams” (i.e. non-Victorian) and asked:

So where are you going to watch it? Nervously from behind a cushion on the couch with a six pack and some dips and chips? Or at a classic corner Melbourne pub, over parmas and beers where you can cheer (or jeer) at the screen with your flock?

(d)    In a similar vein, the website for the Market Hotel, located on the corner of Clarendon and Market Streets in South Melbourne, Victoria, describes itself as “a classic corner pub with a lot of heart”.

69    I also take judicial notice of the fact that, in Australia, hotels often provide entertainment to patrons, including viewing of live sporting events and live music. Mr Homan agreed in cross-examination that “pubs” or public hotels often provide live music as part of the services of the business. However, I also accept the evidence given by Mr Northeast that there is a significant difference between a hotel providing entertainment to patrons in the form of a solo artist playing the guitar or piano, which entertainment is typically provided free of charge to patrons to attract their custom (for food and beverages), and a hotel conducting a professional live music venue where patrons attend to view the musical performance and must purchase a ticket to attend. An example of the former that was referred to in the evidence was The Corner Hotel in Alexandra, Victoria. Ms Celik deposed that, on 16 February 2020, she attended that hotel and observed that: the hotel is located on the corner of Grant Street and Goulburn Valley Highway in Alexandra; the hotel comprises a bar, restaurant and hotel; there were signs outside the hotel that state "The Corner Hotel" and "The Corner Hotel Alexandra”; there was a sign outside the hotel that states it offers live music, referred to on the sign as "Saturday Night Live"; and inside the hotel was a bar with a stage set up where live music can be performed. Ms Celik exhibited photographs of her observations. The photograph of the “stage” shows that it was a small raised platform suitable for a solo artist only. The Corner Hotel operated by Swancom is an example of the latter. Mr Homan and Mr Northeast agreed in cross-examination that there are other very well-known hotel venues around suburban Melbourne which provided similar music to the Corner Hotel, including the Hotel Espy in St Kilda, the Prince of Wales hotel in St Kilda and the Northcote Social Club in Northcote.

70    The evidence also showed that the word “corner” has been used in Melbourne in the name of bars and cafés that also provide entertainment. However, the evidence was very limited as to the nature of those businesses. The extent of the evidence was as follows:

(a)    As at February 2020, a café and bar located in Kingston in the ACT named "Charlie's Corner Café and Bar" advertised, on a sign displayed at the premises, "Live music from 5pm" on "G& T Tuesdays".

(b)    As at February 2020, a café located in Mentone in Victoria named "The Corner Store" offered a function room for events.

(c)    As at February 2020, a café and bar located in Port Melbourne in Victoria named “The Corner Stone" advertised, on signs and flyers inside and outside the building, live music performances on Friday nights and every Saturday. A photograph inside the premises showed a small stage suitable for a solo artist.

C.3    Bird’s Basement, The Jazz Corner Hotel and The Jazz Corner Café

Bird’s Basement

71    As noted earlier, Mr Dadon is a businessman and musician. As Executive Chairman of Ubertas Group he has been involved in property management and development and he is also a jazz guitarist and composer.

72    Mr Dadon gave evidence that, as part of his experience in the entertainment industry, and as a jazz musician, he has a great deal of knowledge and experience of the jazz club in New York called Birdland, which is named after the famous jazz saxophonist Charlie Parker (who had the nickname “Bird”). Birdland in New York is well known in music circles around the world. Mr Dadon has performed at Birdland twice and has formed a business and personal relationship with Gianni Valenti, the owner of Birdland.

73    BBPL was incorporated in August 2015. At the date of incorporation, it had the name The Blue Basement Pty Ltd, but the name was changed to Bird’s Basement Pty Ltd on 19 January 2016. BBPL opened its jazz club called “Bird’s Basement” in the basement of the William Street building on 1 March 2016. It hosts local and international artists with an emphasis on jazz performance.

74    In an article published in the Financial Review on 23 October 2015, the reporter interviewed Albert Dadon and Gianni Valenti about the proposed jazz club then called “Blue Basement”. They explained that the Melbourne jazz club would have a “sister club” relationship with Birdland. Mr Dadon said that the club was a long-held dream of his and would fill a gap in Melbourne’s need for a good food and jazz venue. Screenshots of the Birdland website also show that Birdland has referred to Bird's Basement as “our Sister Club Down Under", displaying the logo of Bird's Basement. The venues have also exchanged jazz musicians to perform at both venues. Mr Dadon gave evidence that Bird's Basement seeks to be associated with the history and world-renowned reputation of Birdland.

75    BBPL is the owner of registered trade mark 1745565 (Bird’s Basement device mark) for the following mark:

(with a filing date of 11 January 2016) for services in class 41 (amongst other things, live music) and class 43 (amongst other things, provision of food and drink). The Bird’s Basement device mark is used prominently on signage and promotional material for Bird’s Basement jazz club, including brochures, website and social media accounts.

76    BBPL operates a website with the address www.birdsbasement.com (Bird’s Basement website) and also has Facebook, Twitter, Instagram and LinkedIn pages.

77    Mr Northeast reviewed Bird's Basement's Facebook events page, which provides a list of the bands and musicians that have performed, and are to perform, at Bird's Basement. Mr Northeast identified some 15 bands and musicians on the list that have also performed, or were to perform, at the Corner Hotel. Some of the performances at the Corner Hotel were many years ago (one dating back to 2001). Nevertheless, I accept Mr Northeast’s evidence that there is likely to be some competition between Swancom and BBPL in booking bands and musicians for their respective live music venues.

The Jazz Corner Hotel

78    JCHPL was incorporated on 5 October 2016. At the date of incorporation, it had the name The Charlie Parker Hotel Pty Ltd, but the name was changed to The Jazz Corner Hotel Pty Ltd on 30 January 2017. Mr Dadon gave evidence that the name “The Charlie Parker Hotel” was only a code name for the hotel he intended to establish in the William Street building and that he never intended to use that name as a trading name. That evidence is somewhat inconsistent with the fact that, on 6 October 2016, JCHPL (then called The Charlie Parker Hotel Pty Ltd) and UOPL filed an application to register the trade mark “The Charlie Parker Hotel” in class 43 (for accommodation services). An adverse report was generated on 16 January 2017 and, on 20 January 2017, UOPL filed an application to register “Jazz Corner Hotel” as a mark in class 43 (for accommodation services). As referred to below, that application was not accepted for registration (although the “Jazz Corner” word mark was subsequently filed and accepted). Also on 20 January 2017, the domain name www.jazzcornerhotel.com was registered to be used for the proposed hotel website and the hotel logo was created (which is part of the Registered Jazz Corner Hotel device mark). As already noted, on 30 January 2017, JCHPL changed its name to The Jazz Corner Hotel. Mr Dadon did not recall the application for the trade mark “The Charlie Parker Hotel”. Despite Mr Dadon’s evidence, it seems probable that, for a short period, he or other persons within the Ubertas Group contemplated calling the hotel “The Charlie Parker Hotel”.

79    In or around February 2017, JCHPL created a Twitter page (twitter.com/jazzcornerhotel) and a Facebook page (www.facebook/pg/TheJazzCornerHotel) for marketing and promotional purposes. On 14 February 2017, UOPL filed an application to register The Jazz Corner Hotel device mark. In late February 2017, a “fact sheet” was disseminated to promote the opening of the hotel on 9 March 2017. The sheet stated, amongst other things:

Situated in Melbourne CBD opposite Flagstaff Gardens and in the corporate & legal precinct, The Jazz Corner Hotel is within walking distance of fabulous shopping, cosmopolitan food markets, sophisticated restaurants, specialist roaster cafes and of course, the world class live music space, Birds' Basement.

80    As can be seen, from its opening The Jazz Corner Hotel has cross-promoted Bird’s Basement jazz club. This is a central aspect of the applicant’s trade mark infringement case. BBPL has also cross-promoted the accommodation services provided at The Jazz Corner Hotel.

81    In his evidence, which I accept, Mr Dadon explained why he chose the name “Jazz Corner Hotel”. He choose the word “jazz” because he is passionate about jazz music, which is defined in Grove Music Online, a specialist dictionary published by Oxford University Press, as:

1) a musical tradition rooted in performing conventions that were introduced and developed early in the 20th century by African Americans; 2) a set of attitudes and assumptions brought to music-making, chief among them the notion of performance as a fluid creative process involving improvisation; and 3) a style characterized by syncopation, melodic and harmonic elements derived from the blues, cyclical formal structures and a supple rhythmic approach to phrasing known as swing.

82    Having opened Bird’s Basement, Mr Dadon wanted to combine his passion for jazz with a further business venture, namely a hotel with a jazz theme. He wanted to establish a particular identity for the hotel around the theme of jazz and the history of jazz and, in particular, in its associations with the jazz scene in New York. The word "jazz" was intended to convey to people what the focus of the hotel would be and Mr Dadon wanted the hotel to attract the same type of people that are attracted to listening to or watching live performances of jazz (at places such as Bird's Basement).

83    Mr Dadon chose the word "corner" for its two meanings. The first meaning was to identify a geographic attribute of the business, that it is located at, or near, a street corner. The second meaning was to provide a colloquial or localising feel to the operation of the business as one might associate with the idea of a "corner store", being a trading location which is friendly, accessible and familiar. Mr Dadon explained:

I believe the use of the term "corner" is a natural and obvious fit for JCHPL's businesses which trade from, or near, a street corner location, and in particular which are endeavouring to convey a sense of accessibility, and is well suited to the hospitality and entertainment businesses in question. The jazz form has an identity of informality and improvisation which readily connects with ideas of accessibility, which also accord with the friendly and engaging "corner'' image or description which JCHPL means to convey. It is simple and agreeable way to describe a business which trades from a corner, and which, in the case of the businesses of JCHPL, has a welcoming and engaging feel.

84    Mr Dadon also explained that the Birdland jazz club in New York has long referred to itself by the epithet “Jazz Corner of the World”. Birdland has a sign at the entrance to the club reading "Birdland, The Jazz Corner of the World” and the phrase also appears on the website for Birdland. The name “Jazz Corner Hotel” references that epithet. As discussed further below, the first to third respondents have also adopted the phrases "Jazz Corner of the World" and "Jazz Corner of Melbourne" to refer to the locality of their businesses as a means of referencing the connection and relationship with Birdland. Mr Dadon explained that the phrase is used to highlight that the William Street building from which the first to third respondents operate is a pre-eminent centre in Melbourne for jazz music (being Bird's Basement) and culture associated with jazz music (in particular, The Jazz Corner Hotel).

85    On 30 March 2017, IP Australia issued an examination report in respect of UOPL’s application to register the word mark “Jazz Corner Hotel” in class 43. The report cited two issues. The first, under s 41, concerned the descriptive nature of the words. The second, under s 44, concerned potential conflict with the applicant’s registered mark 1388154 for “CORNER HOTEL”. The report stated that UOPL’s proposed mark closely resembled the applicant’s registered mark and that the class 43 services for which UOPL sought registration were the same or similar to the class 43 services for which the applicant’s mark was registered. Shortly thereafter, on 19 April 2017, UOPL applied to register the word mark “Jazz Corner” in class 43 (for accommodation services), which mark became registered. The earlier application for “Jazz Corner Hotel” was allowed to lapse.

86    Mr Dadon deposed that he had no knowledge of the examiner’s report in respect of the application for “Jazz Corner Hotel” until this proceeding was commenced. Mr Dadon was challenged about that evidence in cross-examination. He agreed that, as at January 2017 when the application was filed, he had long experience as a director of companies applying for registration of trade marks and that it was common for his lawyers to undertake searches of the Trade Mark Register. Mr Dadon also accepted that there was no reason to doubt that his legal advisors brought the adverse examiner’s report to his attention when it was issued. I accept that it is likely that Mr Dadon was made aware of the adverse examiner’s report when it was issued, but that he had subsequently forgotten about it. It was put to Mr Dadon in cross-examination that he was so committed to using the name Jazz Corner Hotel to reference the Birdland jazz club that he did not care whether the name infringed the prior registration of “CORNER HOTEL”. Mr Dadon disagreed. He explained that he believed that the services being provided by The Jazz Corner Hotel, principally accommodation services, were in a different category to the services being provided by the Corner Hotel. Mr Dadon also deposed that he did not consider or intend that The Jazz Corner Hotel would have any connection or association with the Corner Hotel by reason of the use of the word "corner'' or by use of the word "hotel". I accept Mr Dadon’s evidence as to his beliefs and state of mind.

The Jazz Corner Café

87    STPL was incorporated on 18 May 2016. It operated a café called The Brother Thomas Café which was located on the street level of the William Street building with the street address 330 William Street. Since 26 September 2019, the café has been located on the mezzanine level of The Jazz Corner Hotel.

88    In December 2017 and January 2018, The Brother Thomas Café changed its name to The Jazz Corner Café. On 8 December 2017, the domain name “thejazzcornercafe.com” was registered to be used for the café website. On 15 January 2018, the Jazz Corner Café device mark was created. On 18 January 2018, the business name "The Jazz Corner Café" was registered. In or about March and April 2018, the STPL Facebook, Twitter and Instagram pages were rebranded from Brother Thomas Café to The Jazz Corner Café.

C.4    View of the business premises at the William Street building

89    As noted earlier, on 17 March 2020 a view was conducted of the business premises of each of the first to third respondents at the Williams Street building. Video recordings were taken of the view and adduced in evidence. The following signage and features of the businesses were observed during the view.

90    At the street front on William Street, the hotel displays numerous and prominent signage using the Registered Jazz Corner Hotel device mark. There is also signage using the Registered Jazz Corner Café device mark and the coffee cup device from that mark. Adjacent to the William Street building, as well as at the side and at the rear of the building, is prominent signage displaying the Bird’s Basement device mark with a statement “The Jazz Corner of the World now extends to Melbourne”. As stated earlier, the principal patron’s entrance to Bird’s Basement jazz club is at the rear of the building in Singer’s Lane. The jazz club has a band stage and tables for patrons to be seated as they watch a musical performance. There is a lift for access to the jazz club from the ground floor of the hotel. The evidence indicated that the lift was used for hotel guests attending the jazz club who had restricted mobility.

91    Various walls of The Jazz Corner Hotel are decorated with a mosaic of jazz album covers. The Registered Jazz Corner Hotel device mark is displayed prominently in the hotel reception area. A ground floor café adjacent to the hotel reception has video screens showing recorded musical performances from Bird’s Basement. The Jazz Corner Café is located on the first floor or mezzanine level of the hotel. Again, sections of the walls of the café are adorned with a mosaic of jazz album covers.

92    A hotel room that was viewed had artwork and furnishings that referenced jazz music, including a mosaic of jazz album covers on the wall and on the bed spread and a framed saxophone as artwork. The bed head depicted a stylised version of the Bird’s Basement device mark and a chair cushion depicted the bird device from the Bird’s Basement device mark.

C.5    Use of the Jazz Corner marks by JCHPL

93    From February 2017, JCHPL began marketing and promoting The Jazz Corner Hotel, The Jazz Corner Café and Bird’s Basement.

94    The Jazz Corner Hotel website prominently depicts the Registered Jazz Corner Hotel device mark. The home page contains pictures of a hotel room and the hotel reception and contains the following description of the hotel under the heading “Stay in the heart of Melbourne”:

"Calling all finger-snapping, horn-blowing hepcats looking for a comfortable crash pad where they can stretch, luxuriate, play and stay in the heart of Melbourne. There is a new boutique apartment hotel in town. Drum roll, please ... Welcome to The Jazz Corner Hotel.

If you like to be close to the action, with the birds flying high and the sun in the sky - yeah, we know how you feel (thank you Nina Simone) - The Jazz Corner Hotel is the scene for you.

Situated in the heart of Australia's hippest city and opposite Flagstaff Gardens, The Jazz Corner Hotel is within walking distance of fabulous shopping, cosmopolitan food markets, sophisticated restaurants, the iconic MCG and Etihad, specialist roaster cafes and, of course, the world-class live music space, Bird's Basement.

95    The website principally offers rooms at the hotel, as well as ancillary services such as breakfast. The website also offers accommodation packages that include a show at Bird’s Basement. The website also separately promotes activities in Melbourne (for example, a visit to the Queen Victoria market which is a short walk from the hotel) as well as performances at Bird’s Basement. In respect of the latter, the website states:

No stay at The Jazz Corner Hotel is complete without an evening listening to the best international and local jazz musicians at the acclaimed bird’s BASEMENT.

A partner venue to New York’s Birdland, the famous club inspired by Charlie ‘Bird’ Parker – he was also the original headliner – bird’s BASEMENT is the ultimate place to see live music down under.

bird’s BASEMENT is our acclaimed 200-seat live jazz venue. Find out who’s playing during your stay and ‘doo-bop’ on down for a drink or dinner and a show at bird’s BASEMENT. Just make sure you book – the tickets can be charged to your room account.

96    The website home page also has a link at the top of the page titled “Bird’s Basement” which takes the viewer to the Bird’s Basement website. A link at the top of the page titled “Shop & Dine” displays a page of the website with descriptions of The Jazz Corner Café and Bird’s Basement with the by-line “Relax in our modern jazz bar”.

97    Screenshots of The Jazz Corner Hotel’s Facebook pages were adduced in evidence. The pages depict one of the hotel rooms and, under the heading “Our Story”, contains the statement:

Striking a high note. The Jazz Corner Hotel is a brand new boutique hotel located in Melbourne, CBD…

98    The Facebook page has entries posted by JCHPL which promote Bird’s Basement such as:

With Bird's Basement in the building, we offer a true musical experience

and

Cindy Blackman Santana is playing tonight, tomorrow and Sunday at our jazz club Bird's Basement.

99    The Facebook page also provides information on forthcoming artists and performances at Bird’s Basement.

100    Screenshots of The Jazz Corner Hotel’s Twitter pages were also adduced in evidence. The pages also depict one of the hotel rooms and describe the business as follows:

There is a new boutique apartment hotel in town. Drum roll, please … welcome to the Jazz Corner Hotel.

101    Screenshots of The Jazz Corner Hotel’s Instagram pages depict photos of, amongst other things, the hotel reception, hotel rooms, guests in a room, the city skyline and musicians performing at Bird’s Basement.

102    Throughout March 2017, JCHPL erected a banner on the Tullamarine Freeway in Melbourne as depicted below:

103    On 30 March 2017, JCHPL hosted a launch party for The Jazz Corner Hotel held at the mezzanine of the Skybird Restaurant. The party was referred to in the “social” pages of the Herald Sun (a Melbourne daily newspaper) on 2 April 2017 with the columnist stating:

The Jazz Corner Hotel struck the right note for its official opening on Thursday night. The stylish boutique property is on William St opposite the Flagstaff Gardens and, conveniently for music aficionados, above Bird’s Basement Jazz venue.

jazzcornerhotel.com

104    An article reviewing The Jazz Corner Hotel entitled "Cool for cats" was published on 6-7 May 2017 in The Weekend Australian Magazine. The article stated:

The Jazz Corner Hotel sits directly above Bird’s Basement, a subterranean music club that opened last year on the north-western edge of Melbourne’s CBD and features live bands most nights. The club and hotel are the brainchild of Moroccan-born property developer Albert Dadon, who enjoys a side career as a smooth-jazz guitarist (two professions rarely combined, even in the same sentence). Every room in the hotel features a montage of classic post-war jazz album sleeves as a design motif, but that's pretty much the extent of the 1950s hep factor. The hotel actually occupies several floors of a modern high-rise that's also home to the Oaks Hotel, which has a separate entrance.

105    The review described the amenities of the room stayed in by the reviewer, followed by a description that it was “a tasteful, comfy setup just a few blocks from the city centre, plus there’s Bird’s Basement below, where the entertainment ranges from jazz to comedy and world music”.

106    The evidence included sample promotional emails sent out by JCHPL which offered room packages at the hotel (for example, Bed & Breakfast), and also offered packages with a show at Bird’s Basement included.

107    From May 2017, JCHPL marketed rooms at The Jazz Corner Hotel on the accommodation booking site Expedia with the following description of the hotel:

Jazz inspired with sweeping city views

Bird’s Basement jazz club, Bird’s Upstairs lobby bar & Jazz Corner Café offer a true Jazz corner of Melbourne hotel experience

108    JCHPL also listed The Jazz Corner Hotel on the website TripAdvisor, which is an online travel platform on which service providers can offer services - accommodation, transport, restaurants and attractions - and customers can post reviews. JCHPL listed the following description of the hotel:

Striking a high note, The Jazz Corner Hotel is situated at 352 William Street, Melbourne, opposite leafy Flagstaff Gardens and above Bird's Basement, Melbourne's world-renowned jazz venue, associated with Birdland in New York. Offering 100 rooms across three different room types, choose your signature style from your luxurious studio/one bedroom that strikes the right cord or have a family gathering in a two bedroom apartment. Catering for wide audience, The Jazz Comer Hotel has been created for travellers who seek luxury, amenity …

109    I ruled that the reviews posted by customers were not admissible evidence, but that the replies made by JCHPL to the customer reviews were admissible. Many of reviews of The Jazz Corner Hotel in evidence contained a response from Sevag Keroghlian, the general manager of The Jazz Corner Hotel, thanking the customer for the review. The responses typically concluded with the statement:

We look forward to welcoming you back to the ‘Jazz Corner of Melbourne’!.

110    If the customer referred to visiting Bird’s Basement to see a show, Mr Keroghlian typically included the following statement in the response:

I am glad that you have experienced our jazz show at Bird’s Basement, as we say ‘Relaxation Upstairs, Excitement Downstairs’!

111    On some occasions, if the customer did not mention Bird’s Basement, Mr Keroghlian posted a response recommending a visit on the customer’s next stay:

We hope you will have the chance to experience our jazz venue ‘Bird’s Basement’ on your next visit as we look forward to welcoming you back to ‘The Jazz Corner of Melbourne’

C.6    Use of the Jazz Corner marks by BPPL

112    From March 2017, BPPL began marketing and promoting The Jazz Corner Hotel and Jazz Corner Café (in addition to Bird’s Basement).

113    The Bird’s Basement website primarily promotes shows at the jazz club. Under a heading “The Music”, the website states:

Although Bird's Basement is a Jazz Club in the traditiona1 sense of the term, Jazz in the 21st century is eclectic and has become synonymous with quality music. Our programming includes Jazz, R&B, Funk, Pop and Rock. We only present the top tear [sic] of each category.

114    The website also contains a cross-promotion for The Jazz Corner Hotel, stating:

STAY WITH US AT THE JAZZ CORNER HOTEL

The perfect place to stay when in the city with exceptional views of the city gardens. Calling all finger-snapping, horn-blowing hepcats looking for a comfortable crash pad where they can stretch, luxuriate, play and stay in the heart of Melbourne. There is a new boutique apartment hotel in town. Drum roll, please… Welcome to The Jazz Corner Hotel.

115    Links on the website take the viewer to The Jazz Corner Hotel website for more information and hotel bookings.

116    BBPL publishes monthly brochures (typically 10 pages) describing the artists who will be performing at Bird’s Basement in the forthcoming month. After the opening of The Jazz Corner Hotel, the brochures also contained a promotion of The Jazz Corner Hotel. The brochure published in March 2017 contained many pages promoting the opening of The Jazz Corner Hotel on 9 March, using the Registered Jazz Corner Hotel device mark. The promotion contained the following statements:

Bird's Basement is Birdland in Australia. The best Jazz musicians of the world play at Birdland and Bird's Basement. While you can hear them perform during the night in the basement, you can meet them during the day at the Jazz Corner Hotel. The atmosphere is conducive of creativity.

Bird's Basement is the Jazz Corner of the World, welcome to the Jazz Corner Hotel.

117    In subsequent brochures, a page depicted the Registered Jazz Corner Hotel device mark with the by-line “relaxation upstairs” and the Bird’s Basement device mark with the by-line “entertainment downstairs”, included the phrase “The Jazz Corner of Melbourne” and gave the address and other contact details for the hotel. A map showed the separate entrances for The Jazz Corner Hotel and Bird’s Basement. The following description of the hotel was also given:

The atmosphere at the Jazz Comer Hotel is relaxed, friendly and stylish.

Your fellow guests are likely to be the very same international stars performing downstairs, amongst the best jazz musicians in the world.

The Jazz Corner of Melbourne offers an experience unmatched anywhere in the world. Come and join us!

118    BBPL’s LinkedIn page for Bird’s Basement contains the following statements under the heading “Overview”:

Bird's Basement is the embodiment of the jazz spirit exemplified by New York's legendary Birdland, with which it shares a strong association. The aim of the venue is to provide a constantly changing line-up of world class performers in a world class setting.

Bird's Basement is a purpose built club with amazing acoustics - no matter where you sit you are guaranteed a great audible experience. And matching the great music is delicious modern-Italian food, with a fine choice of wines, beers and spirits.

While Bird's Basement is a jazz club in the traditional sense of the term, our programming is eclectic and includes Jazz, R&B, Funk, Pop and Rock. We only present the top tier of each category and have already established an enviable and solid reputation for the quality of our artists and our exceptional venue.

And Bird's Basement now shares the site with The Jazz Comer Hotel upstairs; together, they make up The Jazz Corner of Melbourne - your choice of great music, entertainment, food, drink and accommodation all in one location.

C.7    Use of the Jazz Corner marks by STPL

119    While STPL primarily markets and promotes its café services, it also promotes Bird’s Basement. For example, in 2017, The Jazz Corner Café Facebook page posted “Miss B & The Bad Boys performing at Bird's Basement on December 14th!!”. In 2018, The Jazz Corner Café Facebook page ran a promotion offering 10 free general admission tickets each week to Bird’s Basement with a post stating:

Have you been to the best Jazz club in Melbourne Bird's Basement? They will be giving away free tickets every week - follow the page and don't forget to turn on notifications for a chance to win your tickets.

120    Swancom submitted that the landing page of The Jazz Corner Café website displays a photograph of musicians performing and the title “The Jazz Bar / Restaurant Of Melbourne”. I do not accept that submission. The evidence relied on by Swancom for that submission (being paragraph 11 of Mr Barr’s affidavit and annexure SB3 to the affidavit) contains, in my view, an obvious error. I infer from their content that certain of the pages annexed at SB3 are pages from the Bird’s Basement website rather than The Jazz Corner Café website. Other pages annexed at SB3 are clearly identifiable as pages of The Jazz Corner Café website. Those pages only promote the café services offered at The Jazz Corner Café.

D.    VALIDITY OF THE SWANCOM MARKS

D.1    Overview

121    By its cross-claim, JCHPL seeks an order under s 88(1)(a) of the TMA that the Trade Mark Register be rectified by the cancellation of the Swancom marks in respect of the services in class 41 for which the marks are registered. It relies on two principal grounds:

(a)    first, relying on s 88(2)(a) and 41 of the TMA, JCHPL contends that the Swancom marks are not capable of distinguishing Swancom’s services; and

(b)    second, relying on s 88(2)(c) of the TMA, JCHPL contends that the use of the Swancom marks is likely to deceive or cause confusion.

122    Cancellation of the Swancom marks would have the effect that no question of infringement of the marks by the respondents would arise and that Swancom’s claim for infringement would be dismissed: Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 at [32] per Kenny J, at [191] per Allsop J (as his Honour then was) and [35] per Gyles J; Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514 (Anchorage Capital Partners) at [193] per Nicholas, Yates and Beach JJ. For that reason, it is convenient to consider the issue of validity before considering the issue of infringement.

123    JCHPL bears the onus of establishing that the Register should be rectified in the manner for which it contends.

D.2    Are the Swancom marks capable of distinguishing the registered services (s 41)?

Relevant principles

124    There was no disagreement between the parties as to the applicable legal principles.

125    Section 88(2)(a) of the TMA provides that a rectification application can be made on any of the grounds on which the registration of the trade mark could have been opposed under the TMA. The date for considering the grounds of opposition is the relevant priority date for each of the Swancom marks: Unilever Aust Ltd v Karounos (2001) 113 FCR 322 at [55] per Hill J; Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235; 129 IPR 482 (Bohemia Crystal) at [83] per Burley J. As noted earlier, the relevant priority dates for each of the Swancom marks is 11 October 2010 (CORNER HOTEL), 10 August 2011 (CORNER), 16 May 2014 (CORNER PRESENTS) and 20 January 2015 (THE CORNER).

126    JCHPL relies on the ground of opposition in s 41 of the TMA. Section 41 was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) with effect from 15 April 2013. Accordingly, the CORNER HOTEL and CORNER marks fall to be considered under section 41 as it stood prior to the amendment. The CORNER PRESENTS and THE CORNER marks fall to be considered under section 41 as amended.

127    In Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCA 82; 150 IPR 11, I observed (at [118]) that the relevant Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) stated (at pages 145-146) that the amendments to s 41 were intended to clarify that the presumption of registrability, as provided for in s 33, applies to s 41 but that, otherwise, the principal concepts in s 41 were unchanged. JCHPL adopted that conclusion and submitted that the relevant principles governing the issue of capability to distinguish were not altered by the amendment to s 41.

128    As discussed by Branson J in Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 56-57, Yates J in Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511 (Apple) at [7] and Perram J in Aldi Foods Pty Ltd v Moroccanoil Israel Ltd (2018) 261 FCR 301 (Aldi Foods) at [116]-[118], the original form of s 41 was not a straightforward provision. The amended form of s 41 may be a little clearer. In any event, the legislative requirement of both provisions is the same: 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 (the designated goods or services) from the goods or services of other persons (old s 41(2); new s 41(1)). In order to determine whether the trade mark is capable of distinguishing the designated goods or services, the provision contemplates the following three possibilities and tests:

(a)    The first possibility is that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons. If that test is satisfied, under the new s 41 the trade mark is taken to be capable of distinguishing the designated goods or services and, under the old s 41, that would be a reason for reaching that conclusion.

(b)    The second possibility is 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. In that event, the mark will not be registerable unless the applicant (or a predecessor in title) has used the mark before the filing date to such an extent that the mark does in fact distinguish the designated goods or services (old s 41(6); new s 41(3)).

(c)    The third possibility is that the trade mark is to some extent (but not sufficiently) inherently adapted to distinguish the designated goods or services from the goods or services of other persons. In that event, the mark will not be registerable unless the trade mark does or will distinguish the designated goods or services as being those of the applicant by reason of the combined effect of:

(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; and

(iii)    any other circumstances,

(old s 41(5); new s 41(4)).

129    The relevant date at which the tests are to be satisfied is the filing date: Apple at [59].

130    The meaning of the phrase “inherently adapted to distinguish” was considered by the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 (Cantarella). The majority endorsed the test formulated by Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 (Du Cros) at 635 under earlier UK legislation, whether other traders are likely, in the ordinary course of their business and without improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. The majority observed (at [44]) that that test had been long applied in Australia, including by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (Clark Equipment) (at 513-515) and F.H. Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 (F.H. Faulding) (at 555-557) and by Gibbs J in Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 (at 425):

The requirement that a proposed trade mark be examined from the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business (Lord Parker), and from the wider point of view of the public (Hamilton LJ), has been applied to words proposed as trade marks for at least a century, irrespective of whether the words are English or foreign. The requirement has been adopted in numerous decisions of this Court dealing with words as trade marks under the 1905 Act and the 1955 Act. Those decisions show that assessing the distinctiveness of a word commonly calls for an inquiry into the word’s ordinary signification and whether or not it has acquired a secondary meaning.

131    The reference to a word’s “ordinary signification” reflects the statement of Kitto J in Clark Equipment (at 514) that whether a trade mark consisting of a word is “adapted to distinguish” certain goods 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, that is to say, 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 they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

132    The majority in Cantarella summarised the applicable principle in the following terms (at [59] and [71]):

It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (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. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

…

As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with…

133    As observed by Lockhart J in Oxford University Press v Registrar of Trade Marks (1990) 24 FCR 1 at 8, the “other traders” test from Du Cros reflects the underlying policy objective reflected in s 41, that no person should be able to monopolise a word or phrase and thereby impose an unreasonable restraint upon other traders who may legitimately wish to use that name in relation to their own goods.

134    In Apple, a decision handed down on the same day as Cantarella, Yates J explained (at [11]):

What does it mean to say that a trade mark is inherently adapted to distinguish the goods or services of one person from the goods or services of another? The notion of inherent adaptation is one that concerns the intrinsic qualities of the mark itself, divorced from the effects or likely effects of registration. Where the mark consists solely of words, attention is directed to whether those words are taken from the common stock of language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade.

135    The foregoing statement by Yates J was endorsed by Allsop CJ and Perram J in the Full Court decision of Aldi Foods (per Allsop CJ at [13] and Perram J at [126]) and by Burley J in Bohemia Crystal at [93].

136    As can be seen from the foregoing authorities, the critical question is the connection between the ordinary signification of the words comprising the trade mark and the goods or services in respect of which registration is sought. As Kitto J explained in Clark Equipment (at 514-5, emphasis added):

It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant’s goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur…for example, where the word as applied to the relevant goods is in effect a fancy name, such as “North Pole” in connexion with bananas….

…

The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there.

137    The principle as explained by Kitto J in relation to a geographic name is equally applicable to directly descriptive words: Cantarella at [57].

138    Whether a mark is directly descriptive of good or services or, instead, makes a “covert and skilful allusion” to the goods or services is an evaluative exercise. In Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 (Mark Foy’s), Dixon CJ explained that, if it is necessary to search for a meaning of the mark used, it is unlikely to be directly descriptive of goods or services. His Honour observed (at 194):

It is, I think, a mistake first to assume that words like "Tub Happy " do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods. And that is true even when to standard English usage is added all the figurative idiomatic and slang phraseology that may be currently in use. Once, however, the question is asked what do the words mean and there is started a search for a meaning, a process of analysis and of reasoning by exclusion of alternatives is begun. No doubt such a search may, without any sacrifice of logic, end in construing the words as meaning that the garments will emerge happily from the washtub. But if they are so interpreted, the interpretation is chiefly the consequence of failure to find another meaning. I venture to think, however, that a man, or for that matter a woman, hearing for the first time the words used in combination and in connection with cotton garments, would not so understand the words at once. Certainly such a person would not so understand them intuitively and without stopping to reflect and ask himself or herself what meaning the words could really possess.

139    Section 41 recognises that a trade mark that is not to any extent inherently adapted to distinguish designated goods or services from the goods or services of other persons may nevertheless, by use of the mark before the filing date, have come to distinguish the designated goods or services in fact. This requires consideration of whether the prior use of the mark was use “as a trade mark” or non-trade mark use. In Woolworths Ltd v BP Plc (No 2) (2006) 154 FCR 97 (Woolworths v BP) the Full Court said at [79]:

Before examining the evidence, it is important to appreciate that it is the use of the trade mark, as a trade mark, before the application date that determines what can be registered. The trade mark that is the subject of the application must conform with the trade mark that was used before the relevant filing date, because it is the extent to which that prior use has distinguished the designated goods or services as being those of the applicant which must be assessed. It is only where the extent of that prior use has had the consequence that the trade mark does distinguish the applicant’s designated goods or services from those of other persons that the trade mark is “taken to be capable” of so distinguishing the applicant’s goods or services: s 41(6)(a). If the prior use has not had that consequence, the trade mark is taken not to be capable of distinguishing the applicant’s goods or services and the application for registration must be rejected: s 41(2) and (6)(b). Under s 41(6), there is no wider inquiry into the capacity or adaptability of the mark to distinguish the applicant’s goods or services.

140    As Burley J said in Bohemia Crystal (at [176]), the connection between use and distinctiveness requires careful consideration. His Honour there referred to the observation of Justice Jacobs in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 302 that:

There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example; no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods.

Submissions of JCHPL

141    JCHPL submitted that the Swancom marks have no inherent ability to distinguish the services in respect of which they are registered.

142    It argued that each of the words “corner” and “hotel” bear their natural and ordinary signification to consumers of those services in Australia and to traders in this industry (hospitality and hotel industry). Relying on the definitions appearing in the Macquarie Dictionary, JCHPL submitted that the word “corner” has its ordinary meaning as “being situated at a junction of two roads” and also has the colloquial meaning of “round the corner”, “very close” and “within walking distance” as to convey a shop or premises which is readily accessible; the word “hotel” also has its ordinary meaning being “a building in which accommodation and food, and sometimes other facilities, are available”. JCHPL submitted that hotels are readily associated as facilities for the provision of live music and entertainment.

143    JCHPL argued that the services in respect of which the Swancom marks were registered necessarily relate to a venue from which the live music performances are provided. That is made express in that part of the registered services that are described as “providing facilities for live music performances” (or similar expressions). However, JCHPL also submitted that it is implicit in the nature of the provision of “live music performances” that the services involve a physical venue at which the performance is conducted. In that way, JCHPL submitted that the words “corner” and “hotel” are descriptive of the character of the services, being services that are provided at a hotel on a corner location.

144    JCHPL further submitted that other traders might, without any improper motive, wish to use those words in connection with those services for the sake of the ordinary signification of the words. In that regard, JCHPL relied on the evidence of common use of the word “corner” as a name for a hotel to describe its location and the common use of the phrase “corner hotel” in the press deriving from the common location of hotels on street corners. JCHPL submitted that the evidence establishes a desire by other traders to use the words “corner” or “corner hotel” in relation to the same or similar services to the Swancom registered services in order to describe their services based on the ordinary meaning of these words, being with respect to hotel facilities located on a corner. JCHPL submitted that the ordinary services provided by hotels include the services in respect of which the Swancom marks are registered, namely the provision of facilities for entertainment, recreation, sporting and cultural activities, including live music performances.

145    On the basis that the Swancom marks have no inherent ability to distinguish the services in respect of which they are registered, JCHPL submitted that the evidence filed by Swancom in relation to the use of each of the marks before the relevant filing date is insufficient to show that the marks were distinctive as trade marks in fact as at their filing date.

146    JCHPL further submitted that, if the Court concludes that the Swancom marks are to some extent (but not sufficiently) inherently adapted to distinguish the services in respect of which they are registered, Swancom’s use of the marks before and after registration is insufficient to establish that the marks are capable of distinguishing those services. It argues that, on the stated premise, the Swancom marks have a very low level of inherent ability to distinguish the relevant services. Further, the evidence shows that Swancom’s use of the marks was often in conjunction with a graphic device and often in conjunction with the word “Richmond”. JCHPL submitted that the combined use of the marks with a graphic or the word “Richmond” indicate that the marks themselves have not acquired distinctiveness.

Submissions of Swancom

147    Swancom submitted that the Swancom marks are properly regarded as inherently adapted to distinguish the services in respect of which they are registered. It contends that, having regard to the ordinary signification of the words comprising the Swancom marks, the marks are not directly descriptive of any live music, ticket booking or related services. The words “corner”, “corner hotel” and “corner presents” do not convey any meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of such services.

148    Swancom submitted that JCHPL’s contentions are flawed for two reasons. First, JCHPL’s contentions fail to recognise the difference between a hotel providing live music on a casual basis as an incident of other services such as the provision of food and drink and the provision of live music and ticket booking services in their own right. Second, to the extent there is evidence of use of the Swancom marks in the name of the business of other traders, it is not use of those words in a descriptive way “for the sake of the signification which they ordinarily possess” but rather involves use of the words as a badge of origin for the services provided by the business (generally, food, beverages and accommodation). Accordingly, it is not use which reflects the “desire of other traders to use a word which is directly descriptive in respect of the same or similar” services.

149    Swancom further submitted that, having regard to the extensive use of the Swancom marks in respect of the registered services before their respective filing dates, the Swancom marks either did or would distinguish the services of Swancom from those of other traders, such that those marks are entitled to registration under s 41(3) and/or s 41(4) of the TMA (and their predecessors).

Consideration

150    The starting point of the analysis is the “ordinary signification” of the words used in the Swancom marks, in Australia, to persons who will purchase, consume or trade in the services the subject of the registration. As the majority said in Cantarella, that will permit a conclusion to be drawn as to whether the word contains a “direct reference” to the services (prima facie not registrable) or makes a “covert and skilful allusion” to the services (prima facie registrable). It is necessary to consider each of the Swancom marks. It is convenient to consider first the CORNER HOTEL mark, then to consider the CORNER and THE CORNER marks, and finally the CORNER PRESENTS mark.

151    The phrase “corner hotel” has a clear primary meaning to consumers of hotel services. The words describe a hotel located on a street corner. I also accept JCHPL’s submission that the words carry a secondary, colloquial, connotation of a hotel that is “round the corner”, meaning that the hotel is local or readily accessible. Each of those meanings refers to a characteristic of hotel services. A hotel is a venue at which a range of services are provided, principally alcoholic drinks served on the premises, prepared meals and, to a lesser extent, accommodation. The location of the venue is an important characteristic of the services that are provided. There is a limit to the distance that consumers will travel to visit a hotel to consume drinks and have a meal. The words “corner hotel” therefore describe a characteristic of the services provided at hotels. The words are apt to describe the location of a hotel in a primary sense as being located on a street corner and, in a secondary sense, as being “local” or accessible. The evidence shows that a significant number of hotel businesses have chosen that name for their business. I infer that they have done so for the ordinary signification of the words in both the primary and secondary sense.

152    It follows that the phrase “corner hotel” is not to any extent inherently adapted to distinguish ordinary hotel services (alcoholic drinks served on the premises, prepared meals and, to a lesser extent, accommodation). It is questionable whether any amount of use of that phrase would render it capable of distinguishing such services. However, JCHPL makes no challenge to the Swancom marks in so far as they are registered in respect of services in class 43. It only challenges the marks in so far as they are registered in respect of services in class 41. In that respect, Swancom contends that the CORNER HOTEL mark is registered (in class 41) in respect of live music, ticket booking and related services and the words have no direct reference to those services.

153    I do not accept Swancom’s submission that the words “corner hotel” have no signification in respect of the class 41 services - live music, ticket booking and related services. Music venues cover a spectrum from large stadiums (where most patrons are seated but there might also be standing room), to medium sized concert halls (where, again, patrons will be seated), medium sized hotel venues (where patrons are likely to stand and be able to consume alcoholic drinks), small hotel venues and other performance spaces. The evidence shows that a number of hotels in Melbourne provide professional live music services (where the venue books, stages and tickets the musical performance) including the Corner Hotel in Richmond, the Hotel Esplanade in St Kilda and the Prince of Wales Hotel in St Kilda. The nature and location of the venue is an element or component of the live music performance. The nature of the venue affects attendees’ experience of the musical performance, both aurally and physically. The nature of the venue will determine the maximum number of patrons able to attend, whether patrons will be standing or seated, whether they will be permitted to consume alcoholic drinks, and whether the sound will be projected (and amplified) to an audience of many thousands, a few hundred, or fewer. Each of the words “arena”, “stadium”, “concert hall” and “hotel” convey something about the nature of the venue and thereby the characteristics of the musical performance to be conducted at the venue. The location of the venue is also a characteristic of live music services. By definition, live music services are provided at a location (the venue) to which patrons must travel to experience the performance. The location might be close by (around the corner) or distant.

154    For those reasons, I do not accept that the words “corner hotel” have no signification in respect of live music services. The words have the same meaning as discussed above in respect of hotel services – a hotel that is located on a street corner and which might be regarded as “local” or “accessible”. That meaning has some signification for persons who wish to attend a live music performance, conveying that the performance is in a hotel (so located) and, as such, the audience size is limited to the hotel capacity (typically, fewer than 1,000), patrons are likely to stand when watching the performance and will be able to consume alcoholic drinks.

155    Despite that, in my view the CORNER HOTEL mark was, at the filing date, capable of distinguishing Swancom’s live music services in respect of which the mark is registered from the services of other persons. I have come to that view based on the use of the mark before the filing date. The evidence shows that the Corner Hotel has had a long history as a professional live music venue in Melbourne, from before the 1980s. Under Swancom’s control since 1995, the business has prospered as a professional live music venue. It has staged more than 15,000 bands including some of the most famous Australian bands and artists and well-known international bands and artists. Noteworthy rock music events have occurred at the Corner Hotel, including a performance by Mick Jagger of the Rolling Stones, the recording of part of a music video by U2 and the creation of the guitar riff to the song "Seven Nation Army" by The White Stripes. The venue has won multiple music industry awards and is frequently referred to in the music and mainstream press. Through promoting performances at the venue, the mark CORNER HOTEL has been in constant use.

156    The evidence of use is supported by the opinions of the industry witnesses. Each expressed the opinion that the Corner Hotel has a very strong brand and reputation as one of the best and most well-known medium-to-large size live music venues in Australia. They also said that they have never heard of or become aware of another live or recorded music venue trading under the names "The Corner", "The Corner Hotel" or a name incorporating the word "corner".

157    JCHPL drew attention to the fact that Swancom frequently used the CORNER HOTEL mark with a stylised rendering of the word “corner”, in conjunction with a graphic and sometimes with the word “Richmond”. The evidence shows widespread use of the mark in that manner and with those additions. However, such use was not universal. Indeed, Swancom’s use of the mark can be described as inconsistent. The most consistent aspect of Swancom’s branding was the use of the words “Corner Hotel” or “Corner”. I consider that the evidence supports the conclusion that that was Swancom’s central branding for its live music services and it is those words that have a reputation as a live music venue. The use of those words in press articles to refer to the Corner Hotel venue, without any addition, confirms that those words identify and distinguish Swancom’s live music services. As Swancom submitted, the venue is consistently referred to as the “Corner Hotel” or simply “The Corner” in posters advertising the shows of touring artists, recordings of live performances at the venue that are released by artists for sale, and discussion of the venue in the mainstream and music media, including major newspapers, music magazines and websites, and street press. For those reasons, I accept Swancom’s submission that the use of the CORNER HOTEL mark with a stylised rendering of the word “corner”, in conjunction with a graphic and sometimes with the word “Richmond”, is a use of the mark with additions or alterations that do not substantially affect the identity of the mark within the meaning of s 7(1) of the TMA.

158    It is important to emphasise that the conclusion I have reached relates to the services in class 41 in respect of which the CORNER HOTEL mark is registered. Those services are described as:

Organising, conducting, providing and providing information in relation to entertainment and cultural activities, being live music performances; providing facilities for live music performances; ticket booking and reservation services for entertainment and cultural activities being live music performances; publication services relating to these services; provision of all such services over a global computer network

159    While that description contains a number of elements, in essence it describes the activities involved in staging professional live music performances. As already noted, staging professional live music performances requires the band or artist to be booked, the performance to be promoted, tickets to be sold and the performance staged at the venue. There is one service that is provided to consumers, being the performance at the venue. That service requires the afore-mentioned activities to occur, although it is somewhat artificial to treat the issuing to customers of tickets to the performance as a separate service to the staging of the performance itself. They are part and parcel of the one service provided to customers. My conclusion is that the CORNER HOTEL mark was, at the filing date, capable of distinguishing Swancom’s services of staging professional live music performances, and those are the services covered by the registration.

160    The services of staging professional live music performances can be contrasted with the provision of live music to hotel patrons by way of free entertainment as a means of attracting the custom of patrons for the primary hotel services, being alcoholic drinks and meals. In giving evidence, Mr Northeast stressed the distinction between the professional live music services offered by the Corner Hotel, as a live music venue, and the live music offered by hotels to patrons free of charge. I accept that evidence. There is a significant difference in the nature of those services. In circumstances where no charge is made for live music, the live music is best characterised as part of the overall hotel ambience, which makes the hotel an attractive venue for customers who wish to dine and/or consumer alcoholic drinks. The ambience includes the layout of the hotel and the style of furnishings, the provision of live or recorded music in parts or the whole of the hotel and the provision of other entertainment such as large television or video screens on which to watch sport or other forms of entertainment.

161    I do not consider that the class 41 services in respect of which the CORNER HOTEL mark is registered, properly construed, extends to the latter types of free live music. I consider that the registered services comprehend the activities involved in the provision of professional live music services which, as noted, comprise the booking of the artist and the promotion, ticketing and staging of the performance at the venue.

162    Given the evidence of the use of, and reputation in, the CORNER HOTEL mark, it is not necessary to reach a concluded view whether the CORNER HOTEL mark is not to any extent inherently adapted to distinguish Swancom’s registered services from the services of other persons (old s 41(6)), or is to some extent but not sufficiently inherently adapted to distinguish Swancom’s registered services (old s 41(5)). It might be said that the ordinary signification of the phrase “corner hotel” is not a direct reference to the characteristics of the registered services but is an indirect reference, or a “covert and skilful allusion”. In my view, the use of the CORNER HOTEL mark alone prior to the filing date has resulted in that mark in fact distinguishing Swancom’s live music services (as per old s 41(6)(a)). If it were necessary, I would also conclude that, as at the filing date, the CORNER HOTEL mark was capable of distinguishing Swancom’s live music services by reason of the combined effect of the use of the CORNER HOTEL mark, the intended use of the mark, and the specialised nature of the live music services in respect of which the mark is registered (the conduct of a venue for professional live music performances) (as per old s 41(5)(a)).

163    In my view, similar conclusions apply in respect of the CORNER and THE CORNER marks. The word “corner” has some signification in respect of professional live music services, but the meaning is less direct than in respect of the words “corner hotel”. The word “corner” conveys the same meaning as discussed above, namely a location on a street corner and which might be regarded as “local” or “accessible”. As such, the word is capable of conveying an attribute or characteristic of professional live music services; namely that the service is to be provided at a venue that is on a street corner or that is local or accessible. However, the description is a somewhat indirect reference to that characteristic of the service and the meaning may properly be described as “covert” or “allusive”.

164    The evidence concerning the use of the CORNER and THE CORNER marks, and the industry evidence concerning the reputation of those marks, satisfies me that, at their respective filing dates, those marks did in fact distinguish Swancom’s professional live music services from the services of other persons. It follows, in my view, that Swancom is entitled to registration of those marks in respect of its professional live music services. However, as submitted by JCHPL, the class 41 services in respect of which Swancom obtained registration of those marks is far wider than the class 41 services in respect of which Swancom obtained registration of the CORNER HOTEL mark. The registered services in class 41 for the CORNER and THE CORNER marks are as follows:

Organising, conducting, providing and providing information in relation to entertainment, recreation, sporting and cultural activities, including live music performances; amusement services; entertainment services; providing facilities for entertainment, recreation, sporting and cultural activities, including live music performances; ticket booking and reservation services for entertainment, recreation, sporting and cultural activities; publication services relating to these services; provision of all such services over a global computer network

165    It can be seen that live music performances are only one element of those registered services. The registration covers the provision of amusement and entertainment services and providing facilities for entertainment, recreation, sporting and cultural activities. At trial, there was almost no evidence of use of the marks by Swancom in connection with those services, and no evidence of intention to use the marks for such services. The only evidence of use of the marks by Swancom in respect of that broader category of services was an advertisement to watch the AFL Grand Final on “big screens” in the rooftop, bandroom and front bar sections of the Corner Hotel. The display of sporting events on a large screen is a typical service provided free of charge in hotels and other hospitality venues. The CORNER and THE CORNER marks are not to any extent inherently adapted to distinguish such services. As previously stated, the evidence shows that a significant number of hotels have called themselves “Corner Hotel” for the ordinary signification of the word “corner” (because they are located on a corner). The evidence also shows that a number of cafés and bars have also used the word “corner” in their trading name for the same reason.

166    It follows that I am satisfied that s 41 of the TMA does not require the rejection of the registration of the CORNER and THE CORNER marks by Swancom in respect of class 41 services relating to the provision of professional live music services. However, a question arises whether the registration ought to be amended, or a condition or limitation be entered on the registration, to preserve the freedom of hotels and other providers of hospitality services (such as cafés, bars and restaurants), who may provide ancillary entertainment services (for example, free live music or sporting events shown on large screens), to use the word “corner” in their trading name. That is a question relating to relief on which the parties will be invited to make further submissions. The resolution of that question does not affect the analysis of the infringement claims.

167    The CORNER PRESENTS mark is registered in respect of a narrower category of services in class 41, being:

Music and entertainment booking services, including providing information about music and entertainment booking services.

168    Mr Northeast gave evidence that the CORNER PRESENTS mark was primarily designed to promote music performances at the Corner Hotel and at venues operated by related and non-related companies of Swancom. Those activities ceased in about 2016 and the CORNER PRESENTS mark has not been used since that time.

169    In my view, the CORNER PRESENTS mark is capable of distinguishing the services of Swancom in respect of which the mark is registered. The combination of the words “corner” and “presents” alters the ordinary signification of the word “corner”. As the subject of the verb “presents”, the word “corner” takes on an allusive meaning. It no longer describes the features of a location or a locality. Rather, the phrase “corner presents” raises the question: who or what is “corner” and what is it presenting? As such, I consider that the CORNER PRESENTS mark is inherently adapted to distinguish Swancom’s services in respect of which the mark is registered from the services of other persons.

D.3    Is the use of the Swancom marks likely to deceive or cause confusion?

170    Section 88(2)(c) specifies, as a ground on which the Register may be rectified by cancellation of a trade mark, that:

because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion

171    Thus, in contrast to s 41 considered above, s 88(2)(c) focuses upon the circumstances applying at the time when the application for rectification is made. In this case, that was upon the filing of JCHPL’s cross claim on 21 June 2019.

172    There has been very little judicial analysis of s 88(2)(c) since its amendment by s 41 of the Trade Marks Amendment Act 2006 (Cth). JCHPL placed reliance on the statement of Jacobson J in Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100; 75 IPR 478 (Health World 2008) at [176] that s 88(2)(c) is concerned with reasons for rectification of the Register which were not available as a ground for rejection or opposition to registration (ie at the time of filing). However, in that case Jacobson J was considering the pre-amendment form of s 88(2)(c). By virtue of the amendment, the question posed by the section is simply whether, by reason of the circumstances applying at the time when the application for rectification is filed (and regardless of whether those circumstances existed pre-registration), the use of the trade mark is likely to deceive or cause confusion.

173    There seems to be little doubt that the phrase “likely to deceive or cause confusion” should be construed in a similar manner as the equivalent phrase in s 43. In that context, the word “likely” has been construed as meaning a real and tangible possibility rather than more probable than not: McCorqhadale v Masterson [2004] FCA 1247; 63 IPR 582 at [35] per Kenny J, following Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 (Registrar v Woolworths) at [43] per French J (with whom Tamberlin J agreed). Adapting the test propounded by Kitto J in respect of s 28(a) of the Trade Marks Act 1955 (Cth) in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (Southern Cross Refrigerating) at 595, it will be sufficient if the ordinary person would entertain a reasonable doubt whether the two products come from the same source.

174    JCHPL’s submissions in respect of s 88(2)(c) largely reflected its submissions in respect of s 41 of the TMA. It argued that the Swancom marks are descriptive of the services provided by Swancom and that other traders use the same words in relation to the same or similar services thereby causing deception or confusion. In that regard, JCHPL relied on the evidence, set out earlier, that other hotels, bars and cafés used the word “corner” as part of their trading names and also offered live music or other entertainment services. JCHPL argued that the reference to “live music services” in Swancom’s trade mark registrations is not qualified and properly should be understood as covering any kind of live music performance, irrespective of whether the live music was part of a professional performance. JCHPL did not contend that there has been any material change in the use of the Swancom marks, or the use of the word “corner” or the phrase “corner hotel” by other traders, or other relevant circumstances, between the date of filing of the Swancom marks and the date of JCHPL’s cross-claim.

175    In my view, the use of the Swancom marks is not likely to deceive or cause confusion. In so far as the marks are used in relation to the live music services provided by the Corner Hotel, the evidence shows that the marks distinguish those services from the services of other persons. As such, I am satisfied that ordinary persons would not entertain a reasonable doubt as to the source of the services. In so far as any of the marks are currently used by other hotels, cafés or bars where complementary entertainment is offered in the form of free live music or screens displaying sport or other video entertainment, I am satisfied that the prospect of confusion as to the source of the services is remote. In that context, the use of the word “corner” in the name of a local business such as a hotel, café or bar is common and descriptive, and there is no real or tangible likelihood of the entertainment services provided by such a business being confused with the services provided by Swancom.

D.4    Conclusion on the cross-claim

176    In conclusion in respect of JCHPL’s cross-claim, I consider that:

(a)    the application should be dismissed in respect of the CORNER HOTEL and the CORNER PRESENTS marks; and

(b)    in relation to the CORNER and THE CORNER marks, the parties should be afforded an opportunity to make further submissions on the question whether the registration of those marks in respect of services in class 41 should be amended, or a condition or limitation should be entered on the registration, to preserve the freedom of hotels, cafés, bars and restaurants, who may provide ancillary entertainment services (for example, free live music or sporting events shown on large screens), to use the word “corner” in their trading name.

E.    INFRINGEMENT OF THE SWANCOM MARKS

E.1    Overview

177    Swancom alleges that each of JCHPL, BBPL and STPL has infringed the Swancom marks by using, without the licence or authority of Swancom, the Jazz Corner marks (which are the Jazz Corner Hotel marks, the Jazz Corner Café marks, the Jazz Corner of Melbourne marks and the Jazz Corner of the World marks) in Australia in relation to live music services and booking services.

178    Swancom relies solely on s 120(1) of the TMA which provides as follows:

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.

179    Swancom also confines itself to an allegation that the Jazz Corner marks are deceptively similar to the Swancom marks.

180    Swancom also alleges that:

(a)    JCHPL, BBPL and STPL have engaged in a concerted and agreed common action being a joint marketing campaign to promote the services offered and provided by each of them including the live music services provided by BBPL and the booking services provided by JCHPL; and

(b)    in furtherance of the concerted and agreed common action, one or more of JCHPL, BBPL and STPL has used, without the licence or authority of Swancom, the Jazz Corner marks in relation to the music venue services provided by BBPL and the booking services provided by JCHPL,

and that each of JCHPL, BBPL and STPL are joint tortfeasors in the trade mark infringements committed by the others in furtherance of the concerted and agreed common action. Swancom further alleges that Mr Dadon is a joint tortfeasor in the trade mark infringements committed by each of JCHPL, BBPL and STPL.

181    The respondents deny infringement of the Swancom marks on a number of bases. It is convenient to consider the parties’ contentions with respect to infringement under the following topics:

(a)    Have JCHPL, BBPL and STPL, individually or jointly in furtherance of a common design, used the Jazz Corner marks as trade marks in relation to the services in respect of which the Swancom marks are registered?

(b)    Are the Jazz Corner marks deceptively similar to the Swancom marks?

(c)    Is the respondents’ use of the terms “Jazz Corner of the World” and “Jazz Corner of Melbourne” use in good faith to indicate a characteristic of the services each provides (namely that the vicinity of the building from which each of JCHPL, BBPL and STPL operates is a pre-eminent centre for jazz music and culture associated with jazz music) within s 122(1)(b)(i) of the TMA?

(d)    Are the respondents entitled to obtain registration of the terms “Jazz Corner of Melbourne” and “Jazz Corner of the World” such that the use of those terms satisfies s 122(1)(fa) of the TMA?

(e)    Is the respondents’ use of the Registered Jazz Corner marks the exercise of rights granted to them under the TMA within s 122(1)(e) of the TMA?

(f)    Is Mr Dadon a joint tortfeasor?

E.2    Have JCHPL, BBPL and STPL, individually or jointly in furtherance of a common design, used the Jazz Corner marks as trade marks in relation to the services in respect of which the Swancom marks are registered?

Relevant principles

182    Section 120(1) stipulates 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 goods or services in respect of which the trade mark is registered. Thus, infringement of a registered trade mark (the applicant’s mark) under s 120(1) requires that the infringing mark has been used as a trade mark in relation to goods or services in respect of which the applicant’s trade mark is registered.

183    In E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144, French CJ, Gummow, Crennan and Bell JJ approved (at [43]) the statement by the Full Court of the Federal Court in Coca-Cola Company v All-Fect Distributors Ltd [1999] 96 FCR 107 (Coca-Cola) at [19] that:

Use “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

184    As observed by their Honours (at [42]), the essential characteristics of a trade mark are distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner.

185    In Woolworths v BP, the Full Court of the Federal Court explained (at [77], citations omitted):

Whether or not there has been use as a trade mark involves an understanding from an objective view point 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.

186    In Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450, Reeves J summarised the applicable legal principles, established by the authorities, concerning the meaning of the phrase “use of a trade mark” as follows (at [50], citations omitted):

(a)    Use as a trade mark is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods or services and the person who applies the mark to those goods or services.

(b)    In determining whether a sign is used as a trade mark, one does not ask whether the sign indicates a connection between the alleged infringer’s services and those of the registered owner. Instead, one asks whether the alleged infringer has used the sign so as to indicate that the services originated from itself.

(c)    The determination of this threshold question only involves an examination of the impugned mark, not the registered trade mark.

(d)    In assessing whether the alleged use is use as a trade mark, the Court is required to examine the purpose and nature of the use in its context. This includes factors such as the positioning of the sign, the type of font used, the size of the words or letters, and the colours which are used, as well as how the sign is applied to the advertising material in question.

(e)    The assessment of the purpose and nature of the use of the sign is objective, i.e. by reference to what members of the public could reasonably be expected to understand by its use.

(f)    The words (of a mark) may be used to describe the goods or services concerned, but still serve as a badge of trade origin.

(e)    It has been doubted whether the mere registration of a domain name containing the words of a trade mark constitutes the use of those words as a trade mark for the purposes of s 120. However, if the registered domain name is linked to a website that contains advertising material that promotes goods or services in relation to which the trade mark is registered, this combination of use could constitute use as a trade mark under s 120. This is all the more so if the advertising material on the website also uses the words of the trade mark to promote the goods or services concerned. In considering whether these situations constitute trade mark use, it will be necessary to apply the general principles set out above to the particular circumstances.

Swancom’s submissions

187    Swancom submitted that each of JCHPL, BBPL and STPL has used the Jazz Corner marks in connection with the promotion of the live music venue that is known as Bird’s Basement and therefore has used the Jazz Corner marks in relation to live music services and booking services.

188    In respect of the various forms of marketing undertaken by JCHPL, Swancom submitted that the marketing frequently referred to the live music services offered at Bird’s Basement under the Jazz Corner hotel marks. In that respect, Swancom relied on:

(a)    pages of The Jazz Corner Hotel website that cross-promoted Bird’s Basement jazz club and upcoming shows, including packages of accommodation and a show, and that provided a link to the Bird’s Basement website for bookings;

(b)    pages of the Facebook and Instagram accounts for The Jazz Corner Hotel that cross-promoted Bird’s Basement jazz club and upcoming shows and that referred to Bird’s Basement as “our jazz club” and similar phrases;

(c)    JCHPL’s posts on the Expedia and TripAdvisor websites in response to customer comments, where a representative of JCHPL referred to “our jazz venue”.

189    Swancom also relied on the external and internal signage at the William Street building, including:

(a)    signage which identifies the building as housing the “Jazz Corner Hotel”, the “Jazz Corner Café” and “Bird’s Basement”; and

(b)    the external advertising sign containing the phrase “The Jazz Corner of the World” in conjunction with “Bird’s Basement”.

190    Swancom submitted that ordinary and reasonable customers viewing the JCHPL marketing material and the signage at the William Street building would fairly perceive that the Bird’s Basement jazz bar is part of The Jazz Corner Hotel. The marketing material indicates a connection in the course of trade between The Jazz Corner Hotel business and the live music and booking services promoted by JCHPL.

191    In respect of the various forms of marketing undertaken by BBPL, Swancom submitted that the marketing frequently referred to the jazz club as the “Jazz Corner of the World” and promoted The Jazz Corner Hotel as an associated business. The cross-promotion occurred in brochures and on the Bird’s Basement website. Again, Swancom submitted that the use by BBPL of the Jazz Corner marks indicates a connection in the course of trade between those marks and the live music and booking services provided by BBPL.

192    In respect of the marketing undertaken by STPL, Swancom submitted that The Jazz Corner Café Facebook account has posted advertisements for shows at Bird’s Basement. Again, Swancom submitted that the use by STPL of the Jazz Corner marks indicates a connection in the course of trade between those marks and the live music and booking services provided by BBPL.

193    Swancom submitted that the evidence shows that JCHPL, BBPL and STPL jointly market themselves to consumers as a single integrated business, providing a range of services including live music and booking services under the Jazz Corner Marks. Swancom submitted that JCHPL, BBPL and STPL have agreed on this concerted common joint marketing campaign to promote each other’s services. All three are members of the Ubertas Group and their day-to-day operation is overseen by Mr Barr as Development Director and Mr Dadon as Executive Director. All three companies have used each other’s trade marks with the same type of “unity of purpose” identified by the Full Court in Trident Seafoods Corp v Trident Foods Pty Ltd [2019] FCAFC 100; 369 ALR 367 at [45].

194    Swancom submitted that it is irrelevant that not all of the relevant services are provided by each of the respondents. It contends that the Jazz Corner marks are still being used by each of the respondents “in physical or other relation to” the relevant services, regardless of which entity actually provides the services (relying on s 7(5) of the TMA).

The respondents’ submissions

195    The respondents contend that Swancom blurs the distinction between the three entities, JCHPL, BBPL and STPL, and their respective businesses, The Jazz Corner Hotel, The Jazz Corner Café and Bird’s Basement.

196    The respondents submitted that the fact that the three businesses share a common ownership does not mean one conducts the business of the other. Each of JCHPL, BBPL and STPL operate different business, have their own social media accounts and expend their own budgets for marketing purposes. The Bird’s Basement business is separate and discrete. While the businesses engage in a degree of cross-promotion, the respondents argued that JCHPL or STPL do not thereby use the Jazz Corner marks when referring to the live music performances at Bird’s Basement. Given that consumers of JCHPL wish to stay in a hotel, they may well have little or no interest in the ancillary promotion of Bird’s Basement. The respondents submitted that, in such cross-promotions (whether on The Jazz Corner Hotel website or its social media accounts) the jazz club and its live music performances are referred to by the name of that business, Bird’s Basement. There is no suggestion that The Jazz Corner Hotel provides live music.

197    The respondents submitted that cross-promotion of the businesses does not constitute trade mark usage. The respondents argued that a department store like David Jones does not use the marks Chanel or Givenchy in its advertising when it cross-promotes Chanel or Givenchy perfumes because David Jones is not identifying itself as the source of origin of the perfumes branded Chanel or Givenchy. Similarly, there is little difference between, on the one hand, BBPL’s references to The Jazz Corner Hotel in its marketing material and JCHPL’s references to Bird’s Basement on its website or marketing material and, on the other hand, JCHPL’s website or marketing material also providing information concerning the City Circle Tram, Melbourne Music Week or any other branded tourist offerings. None of these uses equate to trade mark use or use in the course of trade by JCHPL or BBPL.

Consideration

198    The issue in dispute is whether JCHPL, BBPL and STPL, individually or jointly in furtherance of a common design, have used the Jazz Corner marks as trade marks in relation to live music and booking services.

199    The evidence establishes that each of JCHPL, BBPL and STPL conduct separate businesses being, respectively, The Jazz Corner Hotel, The Jazz Corner Café and Bird’s Basement. It is only Bird’s Basement that provides services in respect of which the Swancom marks are registered being, relevantly, professional live music performances. The Jazz Corner Hotel conducts a hotel accommodation business and The Jazz Corner Café conducts a café business.

200    In its pleadings, Swancom describes the services in respect of which the Swancom marks are registered as comprising live music services and, separately, ticket booking services. In my view, Swancom’s characterisation of the registered services involves some artificiality. As discussed earlier in these reasons, the provision of professional live music performances to the public involves a range of activities. Those activities include booking the band or artist, promoting the performance, selling tickets to the performance and staging the performance at a venue. However, it is artificial to isolate each of those activities and describe them as a relevant service provided to the public. Each of the activities is ancillary to the service provided to the public which is the live music performance. It can be accepted that, in different contexts, an entity may supply ticket booking services in the course of trade, usually to an entity that is operating an entertainment venue. An example, referred to in the evidence, is Eventbrite which in recent times has provided ticketing services to Swancom in respect of performances at the Corner Hotel. Where, however, the focus is on the sale of a ticket to a member of the public, the ticket merely constitutes the contractual right to attend the venue on a given day for a particular performance. As such, the ticket (as a notional service) is not relevantly distinguishable from the service comprising the performance to which the ticket relates.

201    While each of JCHPL, BBPL and STPL conduct separate businesses, they have common ownership, are located in the same building and engage in substantial cross-promotion of each other’s businesses. The question to be determined is: what would ordinary members of the public reasonably understand by the cross-promotion? Critically, would ordinary members of the public reasonably perceive that any of the Jazz Corner marks is used as a “badge of origin” of the live music performances conducted at Bird’s Basement? In answering that question, it is necessary to examine the purpose and nature of the use of the Jazz Corner marks in context. In the present case, the question is not easy to resolve.

202    An obvious preliminary matter should be noted. While Swancom has alleged that the respondents have used, as trade marks, four categories of mark (the Jazz Corner Hotel marks, the Jazz Corner Café marks, the Jazz Corner of the World marks and the Jazz Corner of Melbourne marks), the four categories share a common phrase, Jazz Corner. The reasons that the respondents adopted that phrase were explained by Mr Dadon, whose evidence I accept. Those reasons were essentially threefold:

(a)    First, the word “jazz” was chosen because Mr Dadon’s business objective was to establish a jazz club (a live music venue focussed on jazz music) and a jazz-themed hotel.

(b)    Second, the word “corner” was chosen partly because the business premises are located close to a city street corner and partly because the word conveys a sense of a business that is local and accessible.

(c)    Third, Mr Dadon wished to establish and market a connection between his proposed jazz club and the Birdland jazz club in New York. He did that in two ways. First, he named the jazz club “Bird’s Basement”. Second, he adopted the epithet “Jazz Corner of the World” and also transposed it to the related epithet “Jazz Corner of Melbourne”. The Birdland jazz club in New York has long referred to itself by the former epithet.

203    I accept Mr Dadon’s evidence that the purpose of the phrases “Jazz Corner of the World” and “Jazz Corner of Melbourne” is to highlight that the William Street building is a pre-eminent centre in Melbourne for jazz music (being Bird's Basement) and culture associated with jazz music (in particular, The Jazz Corner Hotel).

204    Whilst noting the common phrase in each of the Jazz Corner marks, it is necessary to examine the use of each of the marks by the respondents.

205    Turning first to the Jazz Corner Hotel marks, the marks were predominantly used by JCHPL to promote its accommodation services. The use of the mark by JCHPL in relation to accommodation services was extensive and included external signage on the William Street building, on The Jazz Corner Hotel website, Facebook, Instagram and Twitter accounts, on travel websites such as Expedia and TripAdvisor and other promotional material. Throughout that material, JCHPL also cross-promoted the live music performances at Bird’s Basement. In almost all cases, JCHPL did so by reference to the Bird’s Basement trading name. However, in many instances, JCHPL referred to Bird’s Basement as “our jazz club”.

206    Cross-promotions, whereby one business will promote the goods or services of another, is a common business practice. Cross-promotions occur where there is a commercial relationship between the businesses, which provides the commercial reason for the cross-promotion. The commercial relationship may be an ownership relationship or a trading relationship. In my view, ordinary members of the public should be taken to be familiar with the practice of cross-promotions and the fact that cross-promotional activity occurs when there is a commercial relationship between the businesses involved. As an illustration, airlines in Australia frequently cross-promote accommodation and car rental services.

207    In my view, the cross-promotion of live music performances at Bird’s Basement by JCHPL on The Jazz Corner Hotel website, social media accounts and travel websites conveyed that Bird’s Basement is co-located in the same building as The Jazz Corner Hotel (in the basement) and is a related or associated business. The frequent use of the possessive pronoun by JCHPL (“our jazz club”) conveyed that the relationship or association between Bird’s Basement and The Jazz Corner Hotel is one of corporate ownership – that either The Jazz Corner Hotel owns Bird’s Basement or they have a common owner.

208    On balance, I consider that ordinary members of the public would perceive that The Jazz Corner Hotel is a provider of live music performances in the basement jazz club known as Bird’s Basement. Expressed differently, I consider that JCHPL has used the Jazz Corner Hotel marks (on The Jazz Corner Hotel website, social media accounts and travel websites) to distinguish live music performances at the basement jazz club in the sense of indicating origin. I reach that conclusion based on the manner and context in which the marks have been used. The following three factors, when taken collectively, are significant.

209    First, while the Jazz Corner Hotel marks have been used by JCHPL in a primary manner to distinguish its accommodation services, The Jazz Corner Hotel website, social media accounts and travel websites and other promotional material all promote other services provided at the William Street Building including The Jazz Corner Café and Bird’s Basement. The manner of promotion of those services suggests that they are complementary services offered by the hotel, and in that sense provided under the head brand “Jazz Corner Hotel”. The accommodation and live music services are offered and can be purchased as a package. Further, The Jazz Corner Hotel social media accounts heavily promote upcoming performances at Bird’s Basement in connection with, or as an adjunct to, staying at the hotel.

210    Second, the physical location of the Bird’s Basement jazz club is significant. It is located in the basement of the William Street building in which the hotel is located. The physical co-location of the businesses serves to indicate that the jazz club is part of a unified business within The Jazz Corner Hotel. The impression of a “unified business” is reinforced by the co-location of The Jazz Corner Café within The Jazz Corner Hotel, which is also cross-promoted. The “Jazz Corner” branding sits over the business enterprise, with The Jazz Corner Hotel as the primary brand.

211    Third, from a commercial perspective, there is nothing unusual or surprising in a hotel also operating a café and jazz club. They are complementary services in that hotel patrons might wish to eat at the co-located café and be entertained at the co-located jazz club.

212    It can be accepted that JCHPL’s cross-promotion of live music performances in the basement jazz club is almost always done using the Bird’s Basement trade mark as a badge of origin of the live music services. In my view, though, the use of the Bird’s Basement trade mark does not diminish the significance of the Jazz Corner Hotel marks as a badge of origin. Rather, the Bird’s Basement mark would be perceived to be a sub-mark or secondary-mark of the live music services. The promotional material conveys that The Jazz Corner Hotel is a unified business that has accommodation, a café and a jazz club, with the café trading under the name The Jazz Corner Café and the jazz club trading under the name Bird’s Basement.

213    The perception of customers who are aware of the famous Birdland jazz club in New York would be no different. No doubt, such customers would appreciate that the name “Bird’s Basement” is a reference to the New York jazz club (named after the famous saxophonist, Charlie Parker), and be familiar with the famous epithet of that club: Jazz Corner of the World. JCHPL’s use of the Jazz Corner Hotel marks would only reinforce the impression that the Jazz Corner Hotel marks are a badge of origin of the live music services, with Bird’s Basement being a secondary mark.

214    For those reasons, in my view JCHPL has used the Jazz Corner Hotel marks as a trade mark in relation to live music services provided at Bird’s Basement.

215    In contrast, I do not consider that BBPL has used the Jazz Corner Hotel marks in the same manner. The Bird’s Basement website contains a cross-promotion of accommodation at The Jazz Corner Hotel. It also contains the promotional statement “Stay with us at the Jazz Corner Hotel”. The use of the possessive pronoun again indicates that there is common ownership between the businesses. However, on the website, the Bird’s Basement mark is clearly identified as the badge of origin of the live music services, while the Jazz Corner Hotel marks are identified as a badge of origin of accommodation services. In contrast to the use by JCHPL, BBPL does not use the Jazz Corner Hotel marks as a primary or “umbrella” mark to indicate a source of origin for all of the services provided at the William Street building. The same can be said of the marketing brochures published by BBPL. While the brochures cross-promote The Jazz Corner Hotel, they do not use the Jazz Corner Hotel marks as a badge of origin in respect of live music services. Rather, the brochures depict the Registered Jazz Corner Hotel device mark with the by-line “relaxation upstairs” and the Bird’s Basement device mark with the by-line “entertainment downstairs”, indicating that each is the badge of origin for accommodation and live music services respectively.

216    Nor do I consider that STPL has used the Jazz Corner Café marks as a trade mark in relation to live music services provided at Bird’s Basement. The evidence shows that The Jazz Corner Café Facebook page has cross-promoted performances at Bird’s Basement. However, the Jazz Corner Café marks are identified as a badge of origin of café services only and the Bird’s Basement mark is identified as the badge of origin of the live music services.

217    The evidence showed that the Jazz Corner of Melbourne marks have been used by JCHPL and BBPL in a descriptive manner to refer to and describe the three businesses that are conducted at the William Street building. Examples of the use of that mark that were in evidence were:

(a)    JCHPL’s advertising on the Expedia travel website in 2017 and 2018 which promoted The Jazz Corner Hotel with the following statements:

Jazz inspired with sweeping city views

Bird’s Basement jazz club, Bird’s Upstairs lobby bar & Jazz Corner Café offer a true Jazz corner of Melbourne hotel experience.

(b)    JCHPL’s responses to comments left by hotel guests on the TripAdvisor website which contained a statement to the effect:

We look forward to welcoming you back to ‘The Jazz Corner of Melbourne’.

(c)    BBPL brochures and webpages which referred to the jazz club and hotel at the William Street building as the “Jazz Corner of Melbourne” and contained statements to the effect:

The Jazz Corner of Melbourne offers an experience unmatched anywhere in the world. Come and join us!”

218    The respondents submitted that they have used the phrase “Jazz Corner of Melbourne” as a laudatory description to refer to a place that is pre-eminent for jazz music and culture associated with jazz music, and otherwise in a laudatory manner with reference to a geographic block in Melbourne at which each business operates. The submission may be accepted, at least in part. There is a descriptive element to the phrase the “Jazz Corner of Melbourne” as the phrase describes a location in which “jazz” related businesses operate. Further, the use of the definite article, as in “The Jazz Corner of Melbourne”, has a laudatory element in that it suggests a pre-eminent location in Melbourne for “jazz” related businesses. However, a mark with descriptive or laudatory elements may still serve as a badge of origin: Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 335 per Lockhart J and at 347-8 per Gummow J.

219    On balance, I accept Swancom’s submission that JCHPL and BBPL have used the Jazz Corner of Melbourne mark as a trade mark in relation to all and each of the businesses conducted from the William Street building: the hotel, café and jazz club. If the phrase were used in isolation and without any connection to the other Jazz Corner marks, it would more readily be understood as a descriptive and laudatory phrase and not as a badge of origin. However, its connection with the other trade marks used by the respondents, specifically the Jazz Corner Hotel and Jazz Corner Café marks, gives the phrase a different meaning and usage. The phrase is a clear reference to those other marks and, as Swancom submitted, is used as an umbrella mark to unify those marks. Although the phrase is used in a secondary manner by JCHPL and BBPL (and is, in that sense, a secondary mark used by them), it is nevertheless used to indicate that the hotel, café and jazz club, identified under the brand “Jazz Corner”, are co-located and are unified businesses. As such, the Jazz Corner of Melbourne mark is used as a badge of origin for the three businesses.

220    The Jazz Corner of the World marks have been used in a more limited manner, and predominantly in connection with Bird’s Basement. The most prominent use is on signage outside the William Street building that associates Bird’s Basement with the phrase “Jazz Corner of the World”. Two of the signs state, next to the Bird’s Basement device mark, that “The Jazz Corner of the World now extends to Melbourne”. A monthly brochure issued by BBPL in March 2017, to promote the opening of The Jazz Corner Hotel in that month, contained the statement: “Bird’s Basement is the Jazz Corner of the World, welcome to the Jazz Corner Hotel”.

221    I accept the respondents’ submission that they have not used the phrase “Jazz Corner of the World” as a trade mark but rather have used it in a descriptive manner. The primary usage of the phrase is on the external signage, which states that “The Jazz Corner of the World now extends to Melbourne”. For persons familiar with the Birdland jazz club in New York and its use of that phrase, the sign conveys that there is some form of association between the Birdland jazz club and Bird’s Basement. However, the nature of the association is unclear. It is open to understand the sign as suggesting that Bird’s Basement is modelled after Birdland. In my view, the manner in which the phrase is used in the sign does not indicate trade mark usage, in the sense of a badge of origin. For persons unfamiliar with the Birdland jazz club in New York and its use of that phrase, the external signage would convey a somewhat cryptic message that something described as the “Jazz Corner of the World” had come to Melbourne in the form of Bird’s Basement. Again, to that section of the public, in my view the phrase does not indicate trade mark usage.

222    Finally, I am not satisfied on the evidence that JCHPL, BBPL and STPL have engaged in a “concerted and agreed common action being a joint marketing campaign to promote the services offered and provided by each of them” as alleged by Swancom, such that each would be a joint tortfeasor for the wrongs (infringing use of registered trade marks) of the other. As already discussed, each business engaged in a degree of cross-promotion of the others’ businesses. However, the fact of cross-promotion, together with common ownership (which is the commercial reason for the cross-promotion), does not establish “concerted and agreed common action”. The evidence does not, in fact, show concerted and agreed common action. Rather, the evidence shows that each of the three businesses primarily marketed its own business under its own trade mark and brand, with marketing messages focussed on the services provided by each business (accommodation, live music and café). However, for the reasons explained above, each of JCHPL and BBPL individually used one or more of the Jazz Corner marks in relation to live music services.

E.3    Are the Jazz Corner marks deceptively similar to the Swancom marks?

Relevant principles

223    Section 10 provides that 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”. The concepts embodied in s 10, and its predecessors, have been considered in many cases. The following principles are well-established by the cases.

224    First, the relevant comparison is between the marks themselves. A wider inquiry concerning the reputation of the marks, of the kind that might be undertaken in a passing off action or a proceeding in which misleading and deceptive conduct is alleged, is not appropriate: CA Henschke v Rosemount Estates Pty Ltd [2000] FCA 1539; 52 IPR 42 (CA Henschke) at [44]. Similarly, the idiosyncratic manner in which the alleged infringer uses the mark (for example, with disclaimers or additions to the mark) is not relevant: Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104; 57 IPR 28 at [102] per Beaumont J; In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193; 377 ALR 116 at [80] per Katzmann J. However, in assessing the likelihood of deception or confusion, it is relevant to consider the relevant trade or business, the way in which the particular goods or services are sold and the character of the probable acquirers of the goods or services: Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658 per Dixon and McTiernan JJ; Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 (Shell) at 410 per Windeyer J. As stated by Dodds-Streeton J in Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (at [172]):

The mark should not be considered in isolation. The setting and surrounding circumstances of the comparison are relevant and include how and where the product will be sold, advertised, displayed and promoted, how knowledge of the mark may be conveyed to consumers and how consumers are likely to approach a purchase.

225    Second, the test is not a “side-by-side” comparison of the marks. Deceptive similarity is to be assessed by reference to persons who do not have an opportunity to compare the respective marks side-by-side (Shell at 415 per Windeyer J) and who may have an imperfect recollection of the marks (Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 98 per Williams J and at 89 per Latham CJ; Re Bali Brassiere Co. Inc’s Registered Trade Mark; Re Berlei Ltd’s Application (1968) 118 CLR 128 (Re Bali Brassiere) at 136-137 per Windeyer J).

226    Third, while the deception or confusion must result from the similarity in the marks, the likelihood of deception or confusion is to be judged not by the degree of similarity alone but by the effect of the similarity in the circumstances: Shell at 416, per Windeyer J.

227    Fourth, confusion includes being left in doubt or having cause to wonder: Southern Cross Refrigerating at 594–5 per Kitto J, or being perplexed or mixed up: Coca-Cola at [39].

228    Fifth, it is not necessary to establish that confusion is more probable than not; likelihood is established if there is a real risk, that is a finite, non-trivial risk, of confusion: Registrar v Woolworths at [43] per French J, Tamberlin J agreeing.

229    Sixth, no intention to deceive or cause confusion is required: Re Bali Brassiere at 139-140 per Windeyer J.

230    In their submissions, the parties also referred to judicial observations in the nature of judicial guidance to the application of the statutory language. In considering the cases, care needs to be taken not to elevate statements in the nature of guidance or reasoning into statements of legal principle. The parties made reference to two matters of judicial guidance. The first is that the impression produced by the marks should be considered in their entirety. It is not improper to give more or less weight to particular features of the marks, provided the ultimate conclusion is based on a consideration of the marks as a whole. This is to recognise that one word or feature of a mark can be more striking and memorable than another: Starr Partners Pty Ltd v Dev Prem Pty Ltd [2007] FCAFC 42; 71 IPR 459 at [22]. The second is that, if two marks share a common element, it tends to increase the likelihood of the later mark being considered to be deceptively similar, particularly if the common element is particularly prominent or is an “essential feature” of the marks: Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; 209 ALR 1 (Crazy Ron’s) at [79]-[90].

Swancom’s submissions

231    Swancom advanced the following primary submissions.

232    First, each of the respondents’ Jazz Corner marks incorporates the word “corner”, which is the whole of the registered CORNER mark, and an essential element of each of THE CORNER, CORNER HOTEL and CORNER PRESENTS marks. In the case of the Jazz Corner Hotel marks, the marks are identical to the CORNER HOTEL mark save for the word “jazz”, which is entirely descriptive of the relevant services and thus cannot constitute a distinguishing “essential element” of the marks.

233    Second, the respondents’ Jazz Corner marks are likely to be perceived as a sub-brand, variant or extension of the Swancom marks, particularly when the marks are considered across the full scope of Swancom’s registrations (which encompass all forms of live music performance, including jazz), and the presence of elements which are descriptive or common to the trade are discounted, such as “Jazz”, “Hotel” and “Melbourne”.

234    Third, in relation to the word “jazz” used in the Jazz Corner marks, the word is directly descriptive in the context of live music services in that it is a direct reference to the character of the relevant services provided by BBPL. Swancom argued that the word “jazz” has no capacity to distinguish the live music services of BBPL from those of other traders.

235    Fourth, while it is permissible to have regard to the surrounding circumstances of the relevant trade (live music services), it is not permissible to take into account the way in which consumers may encounter the Jazz Corner marks on the respondents’ various websites. That would be to take account of the respondents’ idiosyncratic use of the trade marks. While such circumstances may be relevant to s 120(2), they are not relevant to s 120(1).

236    Finally, the reputation of the Swancom marks is irrelevant to the inquiry in circumstances where those marks cannot be said to have a degree of widespread notoriety (CA Henschke at [52]-[53]; Australian Meat Group v JBS Australia Pty Ltd (2018) 268 FCR 623 at [41]-[42] and [67]-[68]; c.f. Registrar v Woolworths at [61] per French J, Tamberlin J agreeing).

Respondents’ submissions

237    The respondents advanced the following primary submissions.

238    First, a finding of deceptive similarity is more difficult to make where the mark alleged to be infringed is comprised of a descriptive word or words. In the present case, the respondents submitted that the words “corner” and “hotel” are descriptive, everyday words and, as shown by the evidence, they have been used in a descriptive manner by third parties for a very long period and follow naturally from the desire to describe a hotel located at a corner, including a hotel providing live music as part of the normal conduct of its business. In that regard, the respondents relied on the evidence of trade usage of the word “corner” in relation to hotels and other hospitality venues referred to earlier in these reasons. The respondents submitted that the evidence establishes that hotels and other hospitality venues frequently provide entertainment to patrons in the form of live music and that ordinary members of the public will be aware of this. The evidence is relevant to the question of deceptive similarity, notwithstanding that the live music services provided by Swancom, and in respect of which the Swancom marks are registered, are of a different scale and kind (being a professional music venue where performances are ticketed).

239    Second, the addition of the word “jazz” renders the Jazz Corner marks very different to the Swancom marks in meaning and effect. In assessing the impression created by a mark, it is necessary to consider the idea of the mark, or its effect by way of the impression conveyed. The idea conveyed by the Jazz Corner marks is entirely different to the Swancom marks. The CORNER mark conveys the idea of a corner location, the junction of two roads, and the idea conveyed by the CORNER HOTEL mark is a hotel on a corner. In contrast, “Jazz Corner Hotel” conveys the idea of a jazz-themed hotel situated at or near a corner; “Jazz Corner Café” similarly conveys the idea of a jazz themed café situated at or near a corner; “Jazz Corner of Melbourne” conveys the idea of a part of Melbourne dedicated to jazz, and “Jazz Corner of the World” suggests a pre-eminent place for jazz in the world. The idea of a jazz theme is allusive. The addition of the word “jazz” to the Jazz Corner marks also changes the sound of the marks.

240    Third, the respondents submitted that, in assessing deceptive similarity, it is permissible to have regard to the “normal usage” of the Swancom marks and the usage actually made of the Jazz Corner marks. The live music services offered by Swancom are advertised and marketed in a vastly different manner, in music festival programs, over the radio, in newspapers and magazines such as Beat Magazine, on posters and flyers displayed at the hotel and via the Corner Hotel’s Facebook, Instagram and Twitter accounts. In contrast, consumers of the services of The Jazz Corner Hotel and The Jazz Corner Café are not engaging with these businesses for the purpose of having a live music experience. The public encounter the Jazz Corner marks in specific settings, such as The Jazz Corner Hotel website and Facebook page or in advertisements for accommodation at hotels, such as in Expedia. In these settings, the consumer may see references to live music at Bird’s Basement, but this is peripheral to the motivation of engaging with The Jazz Corner Hotel.

241    Fourth, consumers of live music services can be expected to be discerning and take time with their choices – they want to see the music they like and are prepared to pay for a live music experience. Tickets are not fast-moving consumer goods but are a considered purchase.

242    Fifth, the respondents placed reliance on the evidence that indicated that the Corner Hotel had a substantial reputation as a live music venue, a factor which diminished the risk of deceptive similarity.

243    Finally, the respondents also placed reliance on the fact that there was no evidence of actual consumer confusion (referring to Crazy Ron’s at [95] and Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605; 76 IPR 161 at [99] per Sundberg J).

Consideration

244    In assessing the question of deceptive similarity, I take as the starting point my finding that both JCHPL, in respect of the Jazz Corner Hotel and Jazz Corner of Melbourne marks, and BBPL, in respect of the Jazz Corner of Melbourne marks, have used those marks as trade marks in relation to live music services. The discussion that follows is confined to those marks (which I will refer to as the “relevant Jazz Corner marks”).

245    There is an obvious similarity between the Swancom marks and the relevant Jazz Corner marks. The CORNER HOTEL and the Jazz Corner Hotel marks have two words in common. All of the Swancom marks and the relevant Jazz Corner marks have the word “corner” in common. While the similarity between the marks must give rise to some prospect of confusion, the question is whether there is a real or tangible risk of such confusion as opposed to a mere possibility. That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.

246    The primary issue in dispute is the effect or impression on the ordinary consumer of the inclusion of the word “jazz” in the Jazz Corner marks. The parties approached that question from opposite directions. Swancom contended that the striking or memorable feature of the marks is the word “corner”, largely on the basis that that word is distinctive in the context of live music services. Swancom says that the word “jazz” is wholly descriptive in that context. The respondents contended that the words “corner” and “hotel” are ordinary words with descriptive meanings which are in common use in the hotel and hospitality industries. The word “jazz” is a more memorable word, even if it descriptive of a style of music. For the following reasons, I accept the respondents’ contentions.

247    As discussed earlier, the words “corner hotel” have a clear primary meaning to consumers of hotel services, being a hotel located on a street corner, and a secondary, colloquial connotation of a hotel that is local or readily accessible. Those meanings also have some signification for persons who wish to attend a live music performance, conveying that the performance is in a hotel (so located) and patrons are likely to stand when watching the performance and will be able to consume alcoholic drinks. The word “corner” on its own conveys the same meaning, namely a location on a street corner and which might be regarded as “local” or “accessible”. Such a meaning would be conveyed in connection with many businesses, including particularly hospitality businesses. The word has some signification in respect of professional live music services, although it can be accepted that the meaning is less direct than in respect of the words “corner hotel”.

248    Significantly, the evidence shows widespread use of the word “corner” in relation to hotel and hospitality businesses. The word “hotel” is also, of course, used ubiquitously in the hotel industry. It is well-established, and accepted by Swancom, that if it can be shown that elements of a trade mark are in common use in the trade, then those elements will be discounted to some extent in comparing the two marks for the purposes of deceptive similarity, on the basis that consumers will tend to focus on the more distinctive aspects of the mark: Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at 127 per Gummow J. Relying on observations by Foster J in Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299; 83 IPR 210 at [74], Swancom submitted that regard can only be had to usage in the relevant trade, here live music services, and not usage in other areas of trade (for example hotel and hospitality services more broadly). I reject that submission. The observations of Foster J were made in the context of s 24 of the TMA and the question of distinctiveness of a registered trade mark. In MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 (MID), which concerned the trade mark “Chifley Tower” registered in respect of property management services, the Full Court considered it relevant to the question of deceptive similarity that the word “Chifley” was familiar as the name of a former Prime Minister and its use in geographical and other contexts (such as suburbs, shopping arcades and a restaurant). In concluding that the respondent would not infringe the registered trade mark by using the name “Chifley” on hotels, the Full Court concluded that an ordinary member of the public “should be credited with a general knowledge that there are several such applications” of the use of the name Chifley (at 246).

249    The evidence with respect to the trade usage of the names “Corner Hotel” and “Corner” is set out earlier and need not be reproduced. It is sufficient to note that, from the earliest days of European settlement of Australia to the present day, hotels have been named the “Corner Hotel”. The evidence also identified a number of other hospitality businesses (cafés and bars) that also use the name “Corner” or a close derivative. Consistently with the conclusion reached by the Full Court in MID, I consider that ordinary members of the public should be credited with a general knowledge that there are many businesses, broadly in the hospitality industry, which use the name “Corner”. Such is the familiar use of the name “Corner” that almost any adjective added to that word is likely to create a distinct impression to an ordinary member of the public. For example, Blue Corner, Shady Corner, High Corner or Nature’s Corner each create a different impression, despite the common use of the name “Corner”.

250    It must be accepted that the word “jazz” has a descriptive meaning. However, in comparison to the words “corner” and “hotel”, it is a word that leaves a more striking impression. That is for two reasons. First, it is less commonly used, particularly in the hotel and hospitality industry (there being no evidence of other use in the trade). Second, the word has an evocative resonance because jazz music itself (whether it is appreciated or disliked) is evocative. As a musical form, jazz uses melodic and harmonic elements derived from the blues (including the dissonant and expressive “blue” notes, classically the flattened third, fifth and seventh notes in the major scale), syncopated rhythms and is marked by improvisation in which the music is created or developed during performance. I consider that ordinary members of the public should be taken to be familiar with the overall style of jazz music, even if they are not familiar with the musical techniques that give jazz its distinctive style. The commonly used adjective “jazzy”, derived from the noun “jazz”, means bright, colourful or showy, reflecting the recognised characteristics of jazz music.

251    The addition of the word “jazz” to the word “corner” or the words “corner hotel” gives the composite phrase a distinct sound and meaning. In my view, attention is immediately drawn to the word “jazz” and the words “corner” or “corner hotel” assume a secondary role in the phrase. The name “Jazz Corner” suggests a corner (or location or place) devoted to jazz music in some manner. The name “Jazz Corner Hotel” suggests a hotel named “Jazz Corner”, creating the same impression. As is the case with other adjectives added to the name “Corner”, I consider that the addition of “Jazz” is likely to create an impression or idea in the mind of an ordinary member of the public that is distinct from the impression or idea created by the CORNER or CORNER HOTEL marks.

252    The respondents placed reliance on the reasoning and conclusions of the Court in Health World Ltd v Shin-Sun Australia Pty Ltd [2005] FCA 5; 64 IPR 495 (Health World 2005), Health World 2008 and Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862; 293 ALR 369 (Australia Post), upheld on appeal at [2013] FCAFC 153; 308 ALR 1. The cases raised similar issues to the present case, in that two marks shared common words but one of the marks had an added prefix. In Health World 2005 and Health World 2008, the marks were “Healthplus” and “Inner Health Plus”. In two decisions concerning trade mark opposition and rectification of the Register, the Federal Court concluded that the marks were not deceptively similar. In Australia Post, the marks were “Australia Post” and “Digital Post Australia”. Again, the Federal Court concluded that the marks were not deceptively similar. Each case turned on its own facts. In my view, the cases provide no particular guidance to the resolution of the present case other than as illustrations of the applicable principles.

253    In assessing deceptive similarity, I have taken into account two other matters, although I give them less weight than the matters already referred to. First, I accept the respondents’ submission that consumers of live music services can be expected to be discerning with their choices. Not only will consumers want to see the music they like, they can be expected to be knowledgeable and discerning about the venues they wish to attend to see a live music performance. Second, I take into account, in a limited way, that there is no evidence of actual consumer confusion.

254    I have not, however, placed any reliance on the following two matters. First, I have not placed any reliance on the respondents’ submission that consumers will encounter the Jazz Corner marks when looking for a hotel room. In my view, that consideration is not relevant to the statutory task of assessing the deceptive similarity of the marks in question. While relevant surrounding circumstances include the nature of the goods or services in question (here, live music), the usual form of trade in the goods and services and the characteristics of the consumers of those goods or services, it does not include the specific (and idiosyncratic) manner in which the alleged infringer has used the infringing mark. Second, I have not placed any reliance on the reputation associated with the Swancom marks. The evidence does not establish that the reputation of the Swancom marks rises to the level of notoriety where it becomes relevant to the statutory task.

255    Having regard to the above matters, I conclude that the risk of an ordinary member of the public being confused about whether the live music services promoted by the use of the Jazz Corner marks have an association with the Corner Hotel (or the Swancom marks more generally) to be remote (a mere possibility). For that reason, I conclude that the relevant Jazz Corner marks are not likely to deceive or cause confusion and, therefore, are not deceptively similar to the Swancom marks.

256    For that reason, I dismiss Swancom’s application for infringement of its marks. I will, nevertheless, consider the other defences raised by the respondents.

E.4    Is the respondents’ use of the terms “Jazz Corner of the World” and “Jazz Corner of Melbourne” use in good faith to indicate a characteristic of the services each provides (namely that the vicinity of the building from which each of JCHPL, BBPL and STPL operates is a pre-eminent centre for jazz music and culture associated with jazz music) within s 122(1)(b)(i) of the TMA?

257    Although I have concluded that the respondents’ use of the Jazz Corner of the World marks is not trade mark use (and is therefore a non-infringing use), for completeness I will consider whether the use of that mark (as well as the Jazz Corner of Melbourne marks) benefits from the defence under s 122(1)(b)(i).

258    Section 122(1)(b)(i) of the TMA provides as follows:

(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;

259    Section 122(1)(b) has a substantial legislative history which can be traced back to the introduction in the Patents, Designs and Trade Marks Act 1883 (UK) of a category of registration for “a word or words having no reference to the character or quality of the goods, and not being a geographical name”. The direct predecessor of s 120(1)(b) was s 44 of the Trade Marks Act 1905 (UK) which provided that “no registration under this Act shall interfere with any bona fide use by a person of his own name or place of business… or the use by any person of any bona fide description of the character or quality of his goods”. This provision was subsequently replicated in s 53A of the Trade Marks Act 1905 (Cth) and ultimately became s 64(1)(b) of the Trade Marks Act 1955 (Cth) and s 122(1)(b) of the current TMA.

260    Throughout its history, the provision has been construed narrowly. Despite different manifestations of the provision over the years, the legislative purpose has remained consistent: to protect the freedom of traders to use a word or words that refer to the character or quality of their goods or services for the purposes of description: see for example Eastman Photographic Materials Company Ltd v Comptroller-General of Patents, Designs and Trade Marks (the Solio Case) [1898] AC 571 at 580 per Lord Herschell; B Stone & Co Ltd v Steelace Manufacturing Co Ltd (1929) 46 RPC 406 at 417 per Lawrence LJ (with whom Lord Hanworth MR and Slesser LJ agreed); Mark Foy’s at 202 per Williams J (with whom Dixon CJ agreed); F.H. Faulding at 543-4 per McTiernan J. Of course, for the defence to have any application (as a defence to infringement), the use of the word must also constitute a use of the word as a trade mark (for otherwise, there would be no infringement and no need for the defence). However, the defence will only apply where the word is used in good faith for one of the stated descriptive purposes.

261    The defence has continued to be construed narrowly following its enactment as s 120(1)(b)(i) of the TMA. In Britt Allcroft (Thomas) LLC v Miller (t/as The Thomas Shop) [2000] 2000 FCA 699; 49 IPR 7, Mansfield J noted (at [66]) that the section was expressed in terms “which are a little wider than its legislative ancestor in s 64(1)(b)” but concluded (at [67]):

I do not consider that the words "kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services" in s 122(1)(b)(i) of the Trade Marks Act were intended to encompass the identification of the source of goods or services from the registered owner of a mark. The words in s 122(1)(b)(i) appear to have as their underlying element or genus some objective description of the goods or services or of a feature of the goods or services, by reference to commonly used and understood qualities (the common usage may of course have a technical or specialist connation in certain circumstances). Indicating that particular goods originate from the registered owner of a mark, or that they are of a particular brand the goodwill in which is enjoyed by another person or entity, in my judgment, goes beyond the type of characteristic which s 122(1)(b)(i) contemplates.

262    Recently, Burley J surveyed the relevant authorities in Bohemia Crystal at [291]-[299]. In light of the narrow construction given to the defence, his Honour observed that a question arises as to whether the defence under s 122(1)(b)(i) adds anything to the “trade mark use” issue under s 120. If a word is used descriptively, generally its use will not amount to trade mark use (and the defence will not arise). His Honour noted, though, that trade mark use is assessed objectively, whereas the defence in s 120(1)(b)(i) is directed to use “in good faith” to indicate geographical origin or some other characteristic of the goods or services in question. His Honour observed that “good faith” had been construed as meaning honest use without any intention to make use of the goodwill acquired by another trader.

263    Swancom submitted that neither of the Jazz Corner of Melbourne marks nor the Jazz Corner of the World marks indicate any commonly used or understood quality of the respondents’ services relating to live music performances and, as a result, are not within the ambit of s 120(1)(b)(i).

264    The respondents submitted that those marks indicate a characteristic of the services each provides, namely that the vicinity of the geographical block from which each of JCHPL, BBPL and STPL operates is a pre-eminent centre for jazz music and culture associated with jazz music. The respondents further submitted that those marks are used by each of JCHPL, BBPL and STPL in good faith to draw a connection between the famous Birdland Jazz Club in New York, as the “Jazz Corner of the World”, and the three businesses.

265    I accept Swancom’s submission and reject the respondents’ submission. In my view, the phrases “Jazz Corner of Melbourne” and “Jazz Corner of the World” do not involve the use of common words for a descriptive purpose. While the word “jazz” is descriptive of jazz music, the phrases as a whole are stylised expressions which are drawn from the Birdland jazz club in New York and adapted for use in Melbourne. The respondents have adopted the “Jazz Corner” branding in the Jazz Corner Hotel and Jazz Corner Café marks. As discussed earlier, the phrase “Jazz Corner of Melbourne” is used by the respondents as an umbrella trade mark to unify the Jazz Corner Hotel and Jazz Corner Café marks. As the authorities referred to above establish, the defence in s 120(1)(b)(i) applies to good faith descriptions of the characteristics of products and does not extend to phrases that are metaphorical or allusive in meaning. I consider that the phrases “Jazz Corner of Melbourne” and “Jazz Corner of the World” fall into the latter category.

E.5    Are the respondents entitled to obtain registration of the terms “Jazz Corner of Melbourne” and “Jazz Corner of the World” such that the use of those terms satisfies s 122(1)(fa) of the TMA?

266    Section 122(1)(fa) of the TMA provides as follows:

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

…

(fa)     both:

(i)     the person uses a trade mark that is substantially identical with, or deceptively similar to, the first-mentioned trade mark; and

(ii)     the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it;

267    The notional entitlement to registration for the purposes of s 122(1)(fa) is to be assessed as at the commencement of the respondents’ infringing conduct: Anchorage Capital Partners at [212]-[214]. In the present case, the respondents commenced use of the “Jazz Corner of Melbourne” and “Jazz Corner of the World” phrases in 2016.

268    On the assumption (contrary to my findings) that the Jazz Corner of Melbourne and Jazz Corner of the World marks are deceptively similar to the Swancom marks, the prior Swancom marks would have prevented registration of the respondents’ marks under s 44 of the TMA and there was no prior use that could have enabled the respondents to achieve registration under s 44(3) or s 44(4). For that reason, the defence under s 122(1)(fa) would not have been available to the respondents.

E.6    Is the respondents’ use of the Registered Jazz Corner marks the exercise of rights granted to them under the TMA within s 122(1)(e) of the TMA?

269    Section 122(1)(e) of the TMA provides as follows:

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

…

(e)     the person exercises a right to use a trade mark given to the person under this Act;

270    The respondents contend that, in relation to the Jazz Corner Hotel and Jazz Corner Café marks, they are entitled to avail themselves of the defence under s 122(1)(e) of the TMA because their use of those marks involves the authorised use of trade marks registered under the TMA.

271    I reject that contention for the following reasons.

272    Under s 20 of the TMA, registration of a trade mark only confers the right to use the trade mark in relation to the goods or services in respect of which the trade mark is registered. Accordingly, the defence under s 122(1)(e) only extends to that use.

273    The registered marks relied on by the respondents, being the Registered Jazz Corner Hotel device mark, the Registered Jazz Corner accommodation word mark, the Registered Jazz Corner Café device mark and the Registered Jazz Corner café word mark are registered in class 43 in respect of accommodation and food and drink services. Accordingly, the rights given to the respondents by those registrations extend to those services in class 43. The rights do not extend to live music services in class 41.

274    The respondents submitted that, to the extent that they are found to have used the Jazz Corner marks in relation to live music services, the provision of such services was merely ancillary to the services being provided under and by reference to the Registered Jazz Corner marks in class 43. I reject that submission. They are services of a different kind and in a different class.

E.7    Is Mr Dadon a joint tortfeasor?

275    It is well established that the infringement of a trade mark is tortious and the common law principles as to the liability of joint tortfeasors are applicable. A director of a company may be liable as a joint tortfeasor for infringement by the company. However, a director will not be personally liable where the director merely acts qua director. Liability may arise where the director is making use of the company as an instrument whereby infringement is perpetrated.

276    Having concluded that the Jazz Corner marks do not infringe the Swancom marks because they are not deceptively similar, there is a degree of artificiality in considering whether Mr Dadon is a joint tortfeasor on the assumption, contrary to my conclusion, that the Jazz Corner marks are deceptively similar to the Swancom marks. Nevertheless, I will state my conclusions on this issue in case the matter goes further.

277    The principles to be applied in determining whether a director has become a joint tortfeasor in the context of an infringement of intellectual property rights have been stated in various ways and are not easy to distil. The principles were discussed in two relatively recent Full Court decisions: Keller v LED Technologies Pty Ltd (2010) 185 FCR 449 (Keller) (which concerned the infringement of a registered design) and JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20; 329 ALR 625 (JR Consulting) (which concerned copyright infringement).

278    In Keller, the Full Court delivered three judgments. Emmett J stated the applicable principles as follows:

[83] A company cannot act other than through a natural person. In considering whether a natural person is a joint tortfeasor with a company, it is necessary to show something more than that the company acted through that person. Where a person is acting in the capacity of a director, the person will not be liable for the act of the company unless it can be shown that, in so acting, the director was doing something more than acting as a director. The person must do something that makes him or her, in addition to the company, an invader of the victim’s rights (see O’Brien v Dawson (1942) 66 CLR 18 at 323). The mere fact that a company is small and that the director has control over its affairs is not, of itself, sufficient to make the director a joint tortfeasor with the company (see Evans Ltd v Spritebrand (1985) 1 WLR 317 at 329).

[84] Infringement by a principal actor, of course, is an objective matter. For a director of a company to be held to be invading the rights of a victim of the company, by reason of the actions committed in the capacity of a director, there must be some mental element involved. Thus, in circumstances where a director can be shown to be making use of a corporation or company as an instrument whereby infringement is perpetrated, such that the director can be seen to be hiding behind the corporate veil, it may be thought that that director is going beyond actions performed merely in the capacity as director. If a company is merely the alter ego of a director, such that there is no real difference between the mind of the officer and the mind of the company, there may well be circumstances where it will be appropriate to conclude that the officer is invading the rights of a victim of the company.

279    Besanko J discussed the two tests known as the Performing Right Society test (the test formulated by Atkin LJ in Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1) and the Mentmore test (the test formulated by Le Dain J in the Canadian Federal Court of Appeal in Mentmore Manufacturing Co Ltd v National Merchandising Manufacturing Co Inc (1978) 89 DLR (3d) 195. His Honour observed in respect of the Performing Right Society test (at [272]) that the test of liability: