Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd - [2017] FCAFC 56

FEDERAL COURT OF AUSTRALIA
Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd
[2017] FCAFC 56

Appeal from: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554

File number(s): QUD 683 of 2015

Judge(s): GREENWOOD, BESANKO AND KATZMANN JJ

Date of judgment: 7 April 2017

Catchwords:
TRADE MARKS – consideration of the tests for determining whether the registered owner of the trade marks in suit was, at the date of application for registration, the proprietor by authorship and first use – consideration of whether first use in connection with one of the services for which each trade mark in suit is registered within the range of Class 36 and Class 43 services for which each trade mark is registered, gives rise to first use of each mark in relation to any of the other services as registered, as contended “true equivalents” of “commercial real estate agency services”

TRADE MARKS – consideration of the tests for determining whether particular services can properly be regarded as “true equivalents” of particular services or whether particular services are services “of the same kind” as other services – consideration of the need for evidence on such questions apart from textual construction of each of the services so described as registered

TRADE MARKS – consideration of whether prior use of “a mark” by the registered proprietor constitutes prior use of “the registered trade mark” – consideration of whether prior use relied upon by the registered owner is prior use of a mark properly understood as one “substantially identical with” the registered trade mark – consideration of the notion of a “device” – consideration of whether prior use of a mark “substantially identical with” the registered trade mark gives rise to proprietorship not only in the registered trade mark but also in the mark “substantially identical with” the registered trade mark

TRADE MARKS – consideration of the tests to be applied in determining whether a trade mark is capable of distinguishing an applicant’s services in respect of which the mark is registered from the services of others, for the purposes of s 41(1) to s 41(4) of the Trade Marks Act 1995 (Cth) – consideration of the application of s 41(5) and s 41(6) of the Act

TRADE MARKS – consideration of the tests to be applied in determining whether a party has used a mark substantially identical with or deceptively similar to the registered trade mark – consideration of s 120(1) – consideration of whether s 120(2) had any application in the circumstances of the case

TRADE MARKS – consideration of s 122(1)(b) of the Trade Marks Act 1995 (Cth) – consideration of s 124(1) of that Act

Legislation:
Trade Marks Act 1995 (Cth), ss 7(1), 7(2), 7(3), 7(5), 8(1), 8(2), 17, 19, 20, 27, 41(1) to 41(6), 88(1)(a), 88(1)(b), 88(2), 120(1), 120(2), 122(1)(b), 124(1)

Trade Mark Regulations 1995 (Cth), Reg 3.1

Cases cited:
Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554

Aldi Stores Ltd Partnership v Frito‑Lay Trading Company GmbH (2001) 190 ALR 185

Cantarella Bros Pty Limited v Modena Trading Pty Limited (2014) 254 CLR 337

Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495

Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511

Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506

E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386

E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144

Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9

Jackson & Company v Napper (1886) 35 Ch D 162

Lomas v Winton Shire Council [2003] AIPC 91‑839

MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236

Moorgate Tobacco Co Ltd v Philip Morris Ltd [No. 2] (1984) 156 CLR 414

PB Foods v Malanda Dairyfoods Ltd (1999) 47 IPR 47

Re The Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199

Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84

Re Hick’s Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636

Robinson Helicopter Company Inc v McDermott (2016) 331 ALR 550

Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601

Shell Co of Australia Ltd v Esso Standard Oil (Australia) (1963) 109 CLR 407

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592

Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592

Winton Shire Council v Lomas (2002) 119 FCR 416

Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97

Date of hearing: 22 and 23 February 2016

Date of last submissions: 23 February 2016

Registry: Queensland

Division: General Division

National Practice Area: Intellectual Property

Sub-area: Trade Marks

Category: Catchwords

Number of paragraphs: 363

Counsel for the Appellants: Mr C Dimitriadis SC and Mr H P T Bevan

Solicitor for the Appellants: Webb Henderson

Counsel for the Respondents: Mr R Cobden SC and Mr A M Musgrave

Solicitor for the First and Second Respondents: Morrow Petersen, Solicitors

Solicitor for the Third Respondent: Kinneally Miley Law

ORDERS

QUD 683 of 2015

BETWEEN:
ACCOR AUSTRALIA & NEW ZEALAND HOSPITALITY PTY LTD ACN 002 462 017 (and another named in the Schedule)

First Appellant

AND:
LIV PTY LTD ACN 093 688 576 (and others named in the Schedule)

First Respondent

JUDGE:

GREENWOOD, BESANKO AND KATZMANN JJ

DATE OF ORDER:

7 APRIL 2017

THE COURT ORDERS THAT:
1.Having regard to the reasons for judgment published today and, in particular, [361] of those reasons (without limitation), the appellants are directed to submit a final form of orders for consideration of the Court, within 21 days.
2.The parties are directed to file written submissions as to the disposition of costs, within 21 days, limited to five pages.

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

REASONS FOR JUDGMENT
THE COURT:
INTRODUCTION; SOME PRELIMINARY BACKGROUND FACTS AS FOUND; AND THE FRAMING OF THE PROCEEDINGS BEFORE THE PRIMARY JUDGE
Trade Marks

The second appellant, Cairns Harbour Lights Pty Ltd (“CHL”), obtained registration, from 21 January 2009, of the trade mark “Harbour Lights” pursuant to the Trade Marks Act 1995 (Cth) (the “Act”) and the Trade Mark Regulations 1995 (Cth) (the “Regulations”) in respect of services falling within Class 36 and Class 43 of the Classification of Services in Sch 1 to the Regulations: Trade Mark 1281759. The application was filed on 21 January 2009; accepted on 30 March 2009; and entered on the Register on 31 August 2009 from 21 January 2009.
The Classification of Services by s 19 of the Act and Reg 3.1 of the Regulations provides for the division of services into the classes described in Column 2 of Pt 2 of Sch 1. Class 36 services are described as: “Insurance; financial affairs; monetary affairs; real estate affairs”. Class 43 services are described as: “Services for providing food and drink; temporary accommodation”. This classification of services represents a “class heading corresponding to the description of that class”: Reg 3.1(2).
The description of the Class 36 services, falling within that heading, recited in the registration of the trade mark “Harbour Lights”, is in these terms:
(a)Agency services for the leasing of real estate property;
(b)Apartment letting agency;
(c)Apartment rental services;
(d)Rental of accommodation;
(e)Rental of apartments;
(f)Commercial real estate agency services.
The description of the Class 43 services, falling within that heading, recited in the registration of the trade mark “Harbour Lights” is in these terms:
(a)Accommodation letting agency services (holiday apartments);
(b)Accommodation letting agency services (hotel);
(c)Accommodation reservation services;
(d)Booking services for accommodation;
(e)Hotel accommodation services;
(f)Hotel services.
CHL obtained registration of the trade mark “Cairns Harbour Lights” from 21 April 2009 in respect of services within Class 36 and Class 43 in Sch 1 to the Regulations: Trade Mark 1295197. The description of the Class 36 and Class 43 services for the trade mark “Cairns Harbour Lights”, although recited in a different order in the Certificate of Registration, is the same description set out in respect to the relevant class, at [3] and [4] of these reasons. The application was filed on 21 April 2009; accepted on 30 June 2009; and entered on the Register on 30 November 2009 from 21 April 2009. All references to provisions of the Act in these reasons are references to provisions as they stood as at January and April 2009.
CHL and the property complex
CHL is a property developer. It developed a property consisting of three towers of residential apartments and a retail section at 1 Marlin Parade in Cairns in Far North Queensland. The complex is known as “Harbour Lights” or “Cairns Harbour Lights”: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554, primary judge (PJ) at [5]. Construction of the complex commenced in September 2004 and was completed in July 2007: PJ at [5]. The residential part of the complex consists of two community titles schemes. They are these:
(a)Harbour Lights Community Titles Scheme 36769 (which the primary judge described as the “Residential Scheme”); and
(b)Harbour Lights (Managed Apartments) Community Titles Scheme 36770 (which the primary judge described as the “Managed Scheme”).
The Community Titles Schemes are concerned with “lots”. Those lots correspond, for all practical purposes, to apartments. The apartments in the Residential Scheme are larger than those in the Managed Scheme. The Residential Scheme apartments are designed for owner‑occupiers and longer‑term tenants: PJ at [7]. However, the owners of some of the apartments in the Residential Scheme also let their apartments on a short‑term basis. The apartments in the Managed Scheme are smaller, lack full kitchen facilities “and are like hotel rooms”: PJ at [7]. Those apartments are designed to attract tourists and business travellers seeking short‑term accommodation: PJ at [7]. CHL, at the date of trial, had sold approximately 112 of the 191 lots and retained ownership of the remainder: PJ at [7].
CHL and Mirvac
On 21 December 2004, CHL caused the body corporate for each of the Residential Scheme and the Managed Scheme to enter into agreements with Mirvac Hotels Pty Ltd (“Mirvac”). By those agreements, Mirvac was granted the exclusive right to provide “on‑site letting services and caretaking services for the schemes”: PJ at [10]. As to those agreements, on 21 December 2004, CHL, as developer of the “Complex” made up of the two Community Titles Schemes entered into a Development Agreement and Sale of Management Rights Agreement with Mirvac by which it appointed Mirvac “to manage the Schemes (including to provide the Services), on completion of the construction of the Complex”.
On 28 September 2010, CHL and Mirvac entered into a “Trade Marks Licence”, in writing, by which Mirvac was granted by cl 2.2 a licence to use the trade marks “Harbour Lights” and “Cairns Harbour Lights” in the provision of “Services” defined to mean “the real estate, property management, letting and other services which [Mirvac] is authorised to provide under the Service Agreements” for the term of the licence. The Service Agreements are defined to mean: “Authorisation of Letting Agent” dated 14 June 2007 between the body corporate for the Managed Scheme and Mirvac for a term of 25 years from 21 May 2007; “Authorisation of Letting Agent” (undated) between the body corporate for the Residential Scheme and Mirvac for the same period; and “Caretaker’s Agreement” dated 14 June 2007 between the body corporate for the Managed Scheme and Mirvac for the same period.
Apart from the cl 2.2 grant of the licence, the Trade Mark Licence by cl 2.1, contains an acknowledgement (as between CHL and Mirvac at least) that Mirvac has used the two trade marks for the “Services” (as defined) from the “Commencement Date” (defined to mean 21 December 2004) with CHL’s consent. Those parties also acknowledge that Mirvac has “continuously and extensively” used the trade marks for the “Services” since the commencement of the Service Agreements (14 June 2007). Those parties also acknowledge that CHL has not, either before or after 21 December 2004, given any other party a licence to use the trade marks for the Services or any part of those Services.
Accor
In 2012, there was a change in Mirvac’s shareholding and Mirvac’s name was changed to Accor Australia & New Zealand Hospitality Pty Ltd (“Accor”), the first appellant in these proceedings.
Accor acts as “letting agent” for a number of owners of lots (apartments) in the Residential Scheme and the Managed Scheme: PJ at [12]. Accor manages a “pool of apartments” which are let to members of the public as “short‑term holiday or holiday accommodation”: PJ at [12]. It operates its “letting business” as a “4½ star hotel”: PJ at [12]. Apartment owners who wish to let their apartments are free to choose Accor or another letting agent or to arrange the letting themselves. However, only Mirvac (and from 2012, Accor as Mirvac’s new name) was and is able to operate its letting business on‑site, due to its agreement with each body corporate for each scheme and by reason of the operation of the body corporate bylaws in each case. Due to its on‑site advantages, Accor is able to offer benefits to guests such as on‑site reception and on‑site luggage storage: PJ at [13]. As to its method of operation, Accor advertises and takes bookings for the apartments in its pool (across both schemes) through its own website, travel agents, various hotel and apartment listing websites and telephone directory listings: PJ at [14].
Ms Bradnam
The third respondent to the appeal is Ms Elise Wyandra Warring also known as Ms Elise Bradnam. Ms Bradnam obtained registration of the following domain names on the following dates (PJ at [16]):
(a)cairnsharbourlights.com.au on 4 October 2006;
(b)harbourlightscairns.com.au on 4 October 2006;
(c)harbourlightscairns.com on 17 January 2007.
Ms Bradnam commenced operating “a business involving short and long‑term letting and sales in respect of apartments in the Residential Scheme and the Managed Scheme” from “about July 2007”: PJ at [17]. She had earlier established a website which commenced advertising apartments on 31 October 2006 “in anticipation of their later availability”: PJ at [17]. When Ms Bradnam’s domain names at [13] were entered into a web browser, the viewer would be directed to the website. Ms Bradnam “traded” her business under the registered business name “Harbour Lights Property Management and Sales”: PJ at [17]. Ms Bradnam advertised “her business on her own website and on a number of external hotel and apartment listing websites and on outdoor signs”. Ms Bradnam’s business was in competition with Accor in respect of “short‑term letting”: PJ at [18].
Liv and Ms Patalano
In September 2009, Ms Bradnam entered into a contract for the sale of her business to Liv Pty Ltd (“Liv”), the first respondent to the appeal. Ms Ivana Patalano, the second respondent to the appeal, is the sole director and sole shareholder of Liv. Liv trades under the registered business name “Cairns Luxury Apartments”. It is in competition with Accor in respect of “short‑term letting of accommodation” in the “Harbour Lights complex”. Liv advertises “its business” (the provision of its services) on its own website. Ms Bradnam remains the registrant of the domain names “cairnsharbourlights.com.au” and “harbourlightscairns.com.au”. Ms Patalano is the registrant of the domain name “harbourlightscairns.com”, although entering any of those three domain names into a browser directs the viewer to Liv’s website. Liv also advertises on a number of external hotel and apartment listing websites: PJ at [20].
The framing of the case before the primary judge
The appellants (as applicants before the primary judge) contended that Liv, Ms Patalano and Ms Bradnam had infringed each registered trade mark, as contemplated by s 120 of the Act, by using, as a trade mark, a sign substantially identical or deceptively similar to “Harbour Lights” and “Cairns Harbour Lights” in relation to services in respect of which each mark was registered. The expression of that infringing conduct was said to be use by the respondents of the domain names, their websites, advertising and the use of email addresses and business names: PJ at [22]. The appellants also contended that the respondents had engaged in misleading and deceptive conduct by reason of the same conduct. They sought relief derived from those contended causes of action. Apart from denying the infringing conduct, the respondents, by cross‑claim, sought rectification under s 88 of the Act of the Register by cancellation of the registration of each trade mark. They did so based on the following contentions (PJ at [32]):
(a)the trade marks are not capable of distinguishing the services of CHL or Accor from the services of others: s 41 [of the Act];
(b)the use of the trade marks would be contrary to law because their use would be likely to mislead or deceive consumers into believing that CHL or Accor are the sole owners of the apartments in the Harbour Lights complex, or are the sole provider of letting services for apartments in the Harbour Lights complex: s 42 [of the Act];
(c)the trade marks have a connotation that would deceive or cause confusion: s 43 [of the Act];
(d)because of the circumstances at the time the cross‑claim was filed, the use of the trade mark is likely to deceive or cause confusion: s 88(2)(c) [of the Act];
(e)CHL is not the owner of the trade marks – the owner being Ms Bradnam or Liv: s 58 [of the Act].
Section 88(1)(a), relevantly, provides that on the application of an aggrieved person, a prescribed court may order that the Register be rectified by cancelling the registration of a trade mark. An application may be made under s 88(1)(b) for an order that the Register be rectified by amending any entry wrongly made or remaining on the Register. An application may be made on any of the grounds set out in s 88(2) and no other grounds. Section 88(2)(a) provides that an application may be made on any of the grounds on which the registration of the trade mark could have been opposed under the Act. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant “is not the owner of the mark”. The primary judge began his consideration of the above five grounds relied upon by the respondents for cancellation of each trade mark by addressing the question of whether the contention that CHL is not the “owner” of each trade mark had been made good by the respondents. The primary judge observed that the respondents (Liv, Patalano and Bradnam) contended that Ms Bradnam is the owner of each trade mark because she was the “first user” of the trade marks “Harbour Lights” and “Cairns Harbour Lights” in relation to “at least some of the services” in respect of which each trade mark is registered. That first use was said to have occurred in October 2006 when Ms Bradnam’s website went “live” and she began advertising three apartments in the complex for rental or letting. The respondents contended that Ms Bradnam then began renting or letting apartments in about July 2007 using the business name “Harbour Lights Property Management and Sales”: PJ at [35].

CHL and Accor contended that CHL had used each trade mark in relation to each of the Class 36 and Class 43 services as early as 2004 and that Accor (as Mirvac) did so from 2005. CHL and Accor contended that marks used by Ms Bradnam were not substantially identical to each registered trade mark and disputed that Ms Bradnam had used the marks “in relation to the same kind of services” as those in respect of which each mark was registered. The respondents disputed that CHL and Accor had “used substantially identical trade marks prior to October 2006 in relation to all but one of the Class 36 and Class 43 services” and disputed that the marks were “used as trade marks”: PJ at [35] to [37].
It will be necessary to examine the findings of fact in some detail.
THE ORDERS OF 21 JULY 2015
However, in the result, the primary judge made the following Orders on 21 July 2015.
First, the Register be rectified, pursuant to s 88(1)(a) of the Act, by cancelling the registration of the trade mark “Cairns Harbour Lights”.
Second, the Register be rectified, pursuant to s 88(1)(b) of the Act, by amending the registration of the trade mark “Harbour Lights” so as to remove the following services within Class 36 from the registration: (a) agency services for the leasing of real estate property; (b) apartment letting agency; (c) apartment rental services; (d) rental of apartments; and (e) rental of accommodation.
Third, the Register be rectified, pursuant to s 88(1)(b) of the Act, by amending the registration of the trade mark “Harbour Lights” so as to remove the following services within Class 43 from the registration: (a) accommodation letting agency services (holiday apartments); (b) accommodation reservation services; and (c) booking services for accommodation.
Fourth, the operation of Orders 1, 2 and 3 be stayed pending any appeal.
Fifth, Liv be restrained from using:
(a)       “Harbour Lights Cairns”; and
(b)      “cairnsharbourlights.com.au”; and
(c)       “harbourlightscairns.com.au”; and
(d)      “harbourlightscairns.com”
as a trade mark to promote or advertise any hotel accommodation services in Australia including via websites; and from using “Harbour Lights Apartments” as a trade mark to promote or advertise any commercial real estate agency services in Australia, including via websites.
Sixth, on the expiration of 14 days from 21 July 2015, Liv be restrained in relation to the letting of apartments located in the Harbour Lights [Residential Scheme] and the Harbour Lights [Managed Scheme] from:
(a)representing that [Liv’s] business provides 5 star hotel services or the benefits of 5 star hotel services;
(b)representing to users of the following websites that the user is booking a hotel room;
(i)HotelClub.com;
(ii)Hotels.com;
(iii)Agoda.com;
(iv)Expedia.com.au; and
(v)Orbitz.com; and
(c)representing to users of the internet that [Liv’s] listing for “Cairns Luxury Apartments” is a listing for a hotel room which has an accommodation manager situated within the same property as the room.
Seventh, the application is otherwise dismissed.
Eighth, the cross‑claim is otherwise dismissed.
Ninth, the matter be listed for directions for the taking of an account of profits on a date to be fixed and tenth, the applicants pay 40% of the costs of the respondents of the proceeding.
The appellants contend by their notice of appeal that the primary judge fell into error in making a range of findings. They also contend that the primary judge ought to have made other findings. Before examining the content of those contentions, the grounds of Ms Patalano’s cross‑appeal and the grounds on which Ms Bradnam says the findings of the primary judge may otherwise be supported, it is necessary to identify the findings made by the primary judge and the basis for those findings.
THE FINDINGS OF THE PRIMARY JUDGE AND THE BASIS FOR THOSE FINDINGS
At [38] to [54], the primary judge examines the authorities on the question of the onus the respondents were required to discharge in seeking to establish grounds of cancellation. It will be necessary to say something about onus later in these reasons but, for present purposes, it is enough to note that at [55] the primary judge reached this conclusion:
In summary, where cancellation of the registration of a trade mark is sought on the ground that the person registered as the owner is not the owner, the party seeking cancellation must prove that he or she or someone else used the trade mark in Australia earlier than the registered owner did. The party seeking cancellation must establish that the earlier use was:
(a)use of a trade mark identical or substantially identical to the trade mark sought to be registered;
(b) use as a trade mark;
(c) use in respect of goods or services of the same kind or class; and
(d)at a time when there was actual trade, or an offer to trade, in the goods or services bearing the mark, or, at least, an existing intention to offer or supply the goods or services in Australia.
As to the question of first user, the primary judge observes at [58] that the respondents did not dispute “or only faintly disputed” that CHL was the first user of each trade mark “in respect of some of the Class 36 and Class 43 services” [emphasis added]. The primary judge at [60] observed that Ms Bradnam disclaimed first use and ownership of the trade marks in respect of the following Class 43 services:
ŸAccommodation letting agency services (hotel); Class 43(b) at [4] of these reasons;
ŸHotel accommodation services; Class 43(e) at [4] of these reasons;
ŸHotel services; Class 43(f) at [4] of these reasons.
At [60], the primary judge accepted that CHL is the owner of the trade marks in relation to the three classes of services described at [32] of these reasons. The primary judge also observed at [61] that there was little or no dispute that CHL was the first user of the trade marks in relation to “commercial real estate agency services” (Class 36(f) at [3] of these reasons), “by its use of the trade marks in connection with the sale of lots [apartments]”.
Thus, CHL was the first user of the trade marks in relation to: accommodation letting agency services (hotel), hotel accommodation services, hotel services and commercial real estate agency services: PJ at [60] and [61].
At [62], the primary judge observes that Ms Bradnam claimed ownership, by first use, of the trade marks in relation to “the remainder of the services” which means the services at Class 36(a) to (e) at [3] of these reasons and the services at Class 43(a), (c) and (d) at [4] of these reasons, namely:
(a)Agency services for the leasing of real estate property;
(b)Apartment letting agency;
(c)Apartment rental services;
(d)Rental of accommodation;
(e)Rental of apartments;
(f)Accommodation letting agency services (holiday apartments);
(g)Accommodation reservation services; and
(h)Booking services for accommodation.
The primary judge’s approach to defining the services
In the context of determining the contentious question of first use of the trade marks in connection with each of the services in respect of which each mark is registered (apart from the concessions made by the respondents just mentioned), the primary judge observed that little evidence and attention was given to the content of each of the services set out at [35] of these reasons. In order to determine the question in issue going to ownership by first use, the primary judge considered it important to set out his assessment of the content of those services. This was an important taxonomic matter for the primary judge.
The primary judge considered that, for the purposes of the case, no distinction was to be made between: “apartment letting agency” services, “apartment rental” services, “rental of apartments” services, “rental of accommodation” services and “accommodation letting agency services (holiday apartments)”: PJ at [63]. The primary judge observed that no distinction between these categories was suggested by the parties: PJ at [63]. The primary judge considered that in providing these services, “a business” would advertise the availability of apartment accommodation and take bookings or reservations from guests for an apartment booking and thus the services just described would “also involve” the provision of “accommodation reservation services” (Class 43(c) services at [4] of these reasons) and “booking services for accommodation” (Class 43(d) services at [4] of these reasons): PJ at [64].
The primary judge chose to refer to all those services, collectively, as “rental and letting services”: PJ at [64]. Thus, the primary judge finds that these “rental and letting services” are made up of the services set out at [35(b)] to [35(h)] of these reasons.
The primary judge seems to proceed on the basis of this approach such that any use of the trade marks in connection with any of the services at [35(b)] to [35(h)] consists of rental and letting services and that any use able to be characterised as rental and letting services constitutes one or more services described at [35(b)] to [35(h)], because there is no distinction to be made, of any relevance to the case, between any of these services.
That is not so, in the primary judge’s view, in relation to “agency services for the leasing of real estate properties” (leasing services) because those services suggest a “formal lease for medium to long‑term accommodation” which represents a category of accommodation comprising a “longer period” than “rental for short‑term holidays, business travel and the like”. Thus, “some distinction” exists: PJ at [65]. The primary judge concludes that “rental for short‑term holidays, business travel and the like” represents features characterising “rental and letting services”: PJ at [65] and also at [63].
At [66], the primary judge characterises all services the subject of the registration for each trade mark, as “leasing, letting and rental services” other than the following:
(a)Commercial real estate agency services;
(b)Accommodation letting agency services (hotel);
(c)Hotel accommodation services;
(d)Hotel services.
At [67], the primary judge considered the factors that distinguish leasing letting and rental services from: “accommodation letting agency services (hotel)”, “hotel accommodation services”, and “hotel services”. At [71], the primary judge observes that a hotel is ordinarily understood to be an accommodation facility that provides, at a minimum, an on‑site reception desk and the ability to check‑in and check‑out on‑site. The primary judge finds at [71] that these three services incorporating the word “hotel” have “corresponding meanings” to that conception, although an accommodation facility that does not have on‑site reception and check‑in services may “still be regarded as a hotel if it has some of the other features of a hotel” set out at [67] to [69]. At [67], the primary judge identifies nine features which characterise the services provided by Accor in its “hotel business at the Harbour Lights complex”.
The primary judge describes “accommodation letting agency services (hotel)”, “hotel accommodation services” and “hotel services”, collectively, as “the hotel services”: PJ at [72].
Thus, the primary judge concludes that, first, the collection of services described at [35(b)] to [35(h)] of these reasons are properly understood, collectively, as rental and letting services. Second, the collection of services other than those described at [41] is to be regarded as leasing letting and rental services. Third, leasing letting and rental services are to be distinguished from hotel services in the way earlier described and, fourth, commercial real estate agency services are something other than rental and letting services, leasing letting and rental services and hotel services.
Use by CHL
The name “Harbour Lights” was created by Mr George Chapman, a director and shareholder of CHL, in December 2003 for the proposed development: PJ at [74]. The development entity changed its name to [CHL] on 22 December 2003: PJ at [74]. CHL’s intention was that the Managed Scheme would operate as a hotel. The larger apartments in the Residential Scheme were designed for owner/occupiers and “longer term tenants”: PJ at [75]. CHL sold the caretaking and letting rights for both the Managed Scheme and the Residential Scheme to Mirvac on 21 December 2004: PJ at [76].
Mirvac operated a chain of hotels under the name “Sebel” and used the name “The Sebel Harbour Lights” to describe “both its letting business and the Harbour Lights complex until 2009”: PJ at [76]. The reference to “its letting business” must necessarily be a reference to the services provided by Mirvac under the name “The Sebel Harbour Lights”. After that, Mirvac used the name “Cairns Harbour Lights”: PJ at [76]. In late 2008, a wholly owned subsidiary of CHL began providing the service of long‑term rentals of apartments in the Managed Scheme and the Residential Scheme after obtaining a “real estate agent’s licence”: PJ at [77].
On 28 January 2004, the following domain names were registered: harbourlights.com.au and cairnsharbourlights.com. CHL (although not the registrant) used the domain names such that anyone undertaking a search using a browser would be taken to CHL’s website: PJ at [80]. In “early 2004” CHL’s website went “live” and from “early 2005”, CHL also used the domain name “cairnsharbourlights.com.au”. However, that registration lapsed: PJ at [80].
The domain name was subsequently registered by Ms Bradnam: PJ at [80].
The primary judge at [85] notes Mr Kenneth George Chapman’s evidence that CHL “operated a website to promote sales of apartments” and noted that that evidence was consistent with other aspects of his evidence demonstrating that CHL used “Harbour Lights” and “Cairns Harbour Lights” as trade marks “in respect of sales of lots in the development from 2004” [emphasis added]. Although Mr Chapman gave evidence that CHL used its website to encourage potential owners to use the services of Mirvac as an on‑site letting agent, the primary judge rejected that evidence: PJ at [87]. The primary judge found at [88] that, in any event, Mr Chapman’s evidence did not go far enough to establish that “Harbour Lights” was used on the website, as a trade mark, in relation to Mirvac’s letting services. Rather, “Harbour Lights” was used “merely as descriptive of the complex”: PJ at [88].
Although the primary judge accepted that the linking of a domain name (comprised of the trade mark leaving aside the prefix “www” or the suffix “.com” or “.com.au”), to a website which contains advertising material promoting services for which a trade mark is registered could give rise to use as a trade mark, the primary judge found that use of CHL’s domain name linked to the website did not constitute trade mark use “in relation to letting services”: PJ at [88].
The primary judge found that CHL’s website advertised or promoted sales of apartments but not “leasing, rental or letting” of apartments or “hotel services”: PJ at [90]. Thus, at [90], the use of the domain names linked to CHL’s website:
… was not use in connection with the Class 36 and Class 43 services, other than “commercial real estate agency services”.
[emphasis added]
The primary judge found that that conclusion equally applied to all examples put forward by the appellants as to uses of CHL’s domain names linked to its website. None of the examples constituted trade mark use in connection with the Class 36 and Class 43 services other than commercial real estate agency services: PJ at [91]. Nevertheless, the primary judge accepted that CHL, by the use of its domain names resolving to its website, promoted sales of apartments and constituted trade mark use in relation to “commercial real estate agency services”: PJ at [91].
The notion of a composite trade mark
Although the appellants do not rely upon an advertisement in The Financial Review of 28 October 2004 as a contended example of prior use going to ownership, the primary judge’s discussion, in the context of that advertisement, of the notion of a “composite trade mark” is relevant in relation to a later discussion. In the advertisement, the words “HARBOUR LIGHTS” appear with, immediately above those words, an image of five gold‑coloured stars in a horizontal line (said to be a device) and immediately below the words “HARBOUR LIGHTS”, in much smaller text, are the words “A NEW STAR SHINES”. The arrangement of the three items is set out below although the lesser text is difficult to read in this particular reproduction:
The appellants contended that the words “HARBOUR LIGHTS”, as they appear in the depiction at [53], are used as a trade mark in its own right. The respondents contended that the words “HARBOUR LIGHTS”, the device comprising the gold stars and the words “A NEW STAR SHINES” were used as a composite trade mark.
In reliance upon the observations in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [68] and [69], the primary judge expressed this finding at [108]:
In my opinion, the words “HARBOUR LIGHTS” together with the device and the words “A New Star Shines” formed a composite mark. There was a connection between all three parts of the mark because the image of the stars alluded to the word “Lights” in “Harbour Lights” and the words “A New Star Shines” alluded to the device and the word “Lights”. The device and the words “A New Star Shines” were not mere descriptors but were distinguishing features.
[emphasis added]
And at [111], the primary judge said this:
On a side by side comparison, the device and the additional words in the composite mark are so significant that the composite mark cannot be described as substantially identical to HARBOUR LIGHTS or CAIRNS HARBOUR LIGHTS. Mere similarity is not enough.
[emphasis added]
It will be necessary to return later in these reasons (in the context of other advertisements) to the question of whether use of “HARBOUR LIGHTS” in the arrangement depicted at [53] of these reasons constitutes use of the trade mark or whether use of those words in conjunction with five stars and the slogan in diminished text underneath those words constitutes something so significantly different to the trade mark “HARBOUR LIGHTS” that use of the depiction at [53] cannot be described as use of something substantially identical to the trade mark “HARBOUR LIGHTS”.
The advertisement of 16 April 2005 (AB, Part C, Tab 37, p 264; AB, Part C, Tab 53)
The appellants at trial (and on appeal) relied upon an advertisement of 16 April 2005 as an example of prior use. The advertisement appeared in The Sydney Morning Herald that day. It consisted of a large photograph of the Cairns waterfront with the reader’s attention drawn to an apparent building with the words “HARBOUR LIGHTS” shown adjacent to the building. It contained text in these terms:
Harbour Lights is situated right on the waterfront in the heart of Cairns, close to everything this beautiful region has to offer. Boasting stunning views of the Coral Sea, rainforest‑clad mountains and the city of Cairns, it’s no wonder this luxurious development is selling fast. Reside or invest, Harbour Lights is the opportunity of a lifetime.
Purchasing here guarantees absolute waterfront living with comfort second to none. Invest here and you have secured your piece of a tropical paradise that attracts 2.3 million visitors per annum, with management services provided by one of Australia’s leading operations, Mirvac Hotels and Resorts. But above all, be quick!
[emphasis added]
For the purpose of simply illustrating the layout and arrangement of the advertisement, the advertisement is attached as Schedule 1 to these reasons. The text in that example is difficult to read. However, the text is otherwise recited in these reasons.

As to the advertisement, the primary judge made this finding at [118]:
There is no evidence as to the meaning of “management services”. However, I accept that in the context the expression would be understood by an ordinary reader to refer to the service to be provided by Mirvac of managing the rental and letting of the apartments on behalf of owners. In respect of those services, the advertisement did not distinguish between apartments in the Residential Scheme and those in the Managed Scheme, and so covered both. In my opinion, each of the Class 36 and Class 43 services, other than “commercial real estate agency services” and “agency services for the leasing of real estate properties”, was encompassed within the term “management services”.
[emphasis added]
Below the text quoted at [58] of these reasons, the advertisement depicts, in large text, the words “HARBOUR LIGHTS” with five gold stars above those words, and under those words, in smaller text, the words “A NEW STAR SHINES”. At the bottom of the advertisement is a line of small text which says “CAIRNS HARBOUR LIGHTS PTY LTD” and an ACN number. Although present, this text is unable to be read on “Schedule 1 to these reasons”.
At [119], the primary judge considered whether “Harbour Lights” was used as a trade mark in relation to the management services to be provided by Mirvac, as found at [118]. At [119], the primary judge said this:
… The words “Harbour Lights” were used as the name of the development in which apartments are offered for sale and were also used in CHL’s domain name which resolved [directed enquirers] to its website promoting such sales. However, “Harbour Lights” was not used as a badge of origin in relation to the management services. The advertisement did not suggest, for example, that management services would be provided “by Harbour Lights”; but only that such services would be provided by Mirvac for the owners of apartments in Harbour Lights. The advertisement did not indicate a connection between the user of the mark and rental and letting services or hotel services.
[emphasis added]
In addition, the primary judge found that the advertisement used the composite mark and that the mark was not substantially identical to either the trade mark “Harbour Lights” or the trade mark “Cairns Harbour Lights”: PJ at [120]; see the layout at Schedule 1 to these reasons.
The “Hotel Fact Sheet” of May 2005 (AB, Part C, Tab 11, pp 17‑18)
The appellants at trial (and also on appeal) relied upon a further example of prior use in support of their ownership of each mark, consisting of a brochure described as a “Hotel Fact Sheet” created by Mirvac in May 2005. Page 1 of the brochure depicts a harbour scene and building with two other images and in the middle bears the description “Splendour by the sea … the facts”. Page 1 bears the words:
THE SEBEL
HARBOUR LIGHTS
It also says “Opening mid‑2006”. The second page of the brochure sets out the facts in relation to “THE SEBEL HARBOUR LIGHTS” and describes such things as the location, distinctive features, the nature of the accommodation, a plan showing the layout of guest rooms, guest room features and facilities and other features. It bears Mirvac’s website address and Mirvac’s hotel email address. At [122], the primary judge made this finding:
I accept that “The Sebel Harbour Lights” was used as a trade mark in relation to the Class 36 and Class 43 services other than “commercial real estate agency services” and “agency services for the leasing of real estate properties”.
[emphasis added]
Before the primary judge, the appellants contended that they used the words “The Sebel” and the words “Harbour Lights” as separate trade marks. In the course of the appeal, the trade mark “Sebel” was described as a “house mark” separate from the trade mark “Harbour Lights”. After having analysed the contentions of the parties on this topic, the primary judge made this finding at [125]:
I accept that “The Sebel Harbour Lights” consists of two brands which are each registered trade marks. I accept that the use of two brands together to market a hotel is common. I accept that there were sound marketing reasons for Accor [Mirvac] promoting its services by the use of “The Sebel Harbour Lights”, which reflected the reputation or attributes of each brand. However, the focus of [the appellants] on brands tends to distract from the real issue, which is whether “Harbour Lights” was used as a trade mark in the brochure: …
[emphasis added]
At [130], the primary judge made these findings:
As the brochure was created in May 2005, some two years prior to the completion of the building, it is likely to have been directed to persons who had contracted to buy a lot or were considering doing so, and it is necessary to consider how the words would be understood by an ordinary member of that class. In my opinion, such a person would understand “The Sebel Harbour Lights” to be used as a single sign. The natural reading of those words is as a single phrase. Each of the words commenced with a capital letter, which grouped the words together and distinguished them from the surrounding words. Such a person would not view “The Sebel” as one sign and “Harbour Lights” as a separate one. The whole of the words appeared to be used together, and there was nothing to indicate that they were to be considered separately. … In my opinion, Accor must be taken to have used “The Sebel Harbour Lights” as a trade mark, not “Harbour Lights”.
[emphasis added]
The primary judge then considered whether “The Sebel Harbour Lights”, found to be the trade mark used by Mirvac rather than “Harbour Lights”, is substantially identical to “Harbour Lights” and “Cairns Harbour Lights”. The primary judge made that assessment on the basis of “a total impression of similarity emerging on a comparison of the two marks” and reached this finding at [132]:
In my opinion, “The Sebel Harbour Lights” is a substantially different mark to “Harbour Lights” and “Cairns Harbour Lights”. The words “The Sebel” are distinctive and not merely descriptive.
[emphasis added]
In reaching the conclusion reflected at [132], the primary judge said that he was assisted by the analysis of Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (“Carnival v Sitmar”) at 513. It will be necessary to return to the observations of Gummow J in the context of the primary judge’s conclusions on the issues at [67] of these reasons.
The advertisement of 17 December 2005 (AB, Part C, Tab 36, p 207)
The appellants at trial (and also on appeal) relied upon a further example of prior use in support of their ownership of each trade mark, consisting of an advertisement in The Weekend Post realtor (the “realtor”) published on 17 December 2005. Although we will turn to the grounds of appeal later in these reasons (in the context of the challenge to the findings made and the contention as to findings that ought to have been made), the appellants contend that this advertisement is the strongest evidence of prior use of each mark in respect of each of the services for which each mark is registered, giving rise to ownership in the appellants to the necessary exclusion of Ms Bradnam. The advertisement is attached as Schedule 2 to these reasons.
The advertisement occupies half a page of the realtor. It has a heading:
Three year fixed rent lease option now available.
An image of the Cairns waterfront appears under that heading. The physical location of a building is shown on the waterfront under which appears very faintly the words “HARBOUR LIGHTS”, with the words (clearly shown):
Cairns’ only absolute waterfront investment
Another image depicts two people on a balcony overlooking (apparently) the waterfront and the mariner. Next to that image is a column of text (about one‑third of the width of the advertisement) with the introductory words:
The Sebel Harbour Lights Cairns is the star performer in luxurious waterfront managed apartment investments.
In slightly lesser text, seven features that make the investment the so‑called “star performer” are set out adjacent to a gold star in this way:
☆       Cairns’ only absolute waterfront investment [1]
☆       3 Year Fixed Rent Leaseback Option now available [2]
☆       Large 1 and 2 bedroom (dual key) apartments [3]
☆       Operated under Mirvac’s prestigious Sebel brand [4]
☆       Exclusive Mirvac owners’ Recognition Programme [5]
☆       Resort facilities include gymnasium, spa and restaurants [6]
☆       95 metres of absolute waterfrontage [7]
Under that text are the words:
OPENING MID 2006
To the right of the seven attributes marked with a star is the trade mark “HARBOUR LIGHTS”, with five gold stars above those words and, underneath the trade mark in diminished text, appears the words “A NEW STAR SHINES”, all set out in the manner shown at Schedule 2 (and at [53] of these reasons). Under that, are the words “Developed by Cairns Harbour Lights Pty Ltd”.
The advertisement invites readers to visit the display suite and sales office under which the website harbourlights.com.au appears.
Then, the following boxed image appears (more particularly depicted in Schedule 2):
THE SEBEL
HARBOUR LIGHTS
CAIRNS
Under that in tiny text are the words:
MANAGED BY [LOGO AND MIRVAC] HOTELS RESORTS
As to all of these things, see Schedule 2.
Of this example of prior use, the primary judge at [143] made this finding:
I accept that the advertisement referred to both the sale of lots and to the leasing of lots back to either the developer or “The Sebel Harbour Lights Cairns”. An ordinary reader would infer that the apartments would then be leased, rented or let to members of the public. The mark “The Sebel Harbour Lights Cairns” was used as a trade mark in relation to each of the Class 36 and Class 43 services.
[emphasis added]
The primary judge then observed at [144] that the next question is whether “either of the marks used in the advertisement” (by which the primary judge was referring to the image described as the so‑called composite mark; and the mark “The Sebel Harbour Lights Cairns”), is substantially identical to “Harbour Lights” and “Cairns Harbour Lights”, and concluded at [144] that neither use in the advertisement was substantially identical to either of the trade marks in suit for the reasons at [111] (as to which see [56] of these reasons as to the “composite mark”) and [130] (as to which see [66]‑[68] of these reasons as to “The Sebel Harbour Lights”).
The advertisement in The Financial Review of 2006 (AB, Part C, Tab 38, p 268)
Before the primary judge and on appeal, the appellants also relied upon an advertisement published in The Financial Review “in the spring of 2006” (before October 2006): PJ at [145]. The appellants say that this advertisement probably takes the question of contended prior use of each trade mark in connection with each of the services for which each mark is registered no further than the advertisement in the realtor of 17 December 2005. In any event, the advertisement shows an image of the Cairns waterfront under the heading:
Only the best address in Cairns offers these absolute waterfront views!
Under the image are the words:
The Sebel Harbour Lights Cairns is the star performer in luxurious waterfront managed apartment investments.
Under that, six gold stars mark six features rendering “The Sebel Harbour Lights Cairns” the star performer. The advertisement is attached to these reasons as Schedule 3. The features identified as features numbered 1, 2, 3, 5 and 7 at [74] of these reasons are also five of the features recited in this advertisement. The other recited feature is this:
14 nights free accommodation at Sebel Harbour Lights
This advertisement also displays the so‑called composite mark. Under that, the following words appear:
Developed by Cairns Harbour Lights Pty Ltd
The example in the Appeal Book (“AB”) (Schedule 3 to these reasons) does not show the faint diminished text “A NEW STAR SHINES” under the words “HARBOUR LIGHTS” although it seems to be common ground that those words were also present in the image.
The advertisement also displays the boxed image (though without the word “Cairns”) as follows:
THE SEBEL
HARBOUR LIGHTS
As to these various images, see Schedule 3.
As to this advertisement, the primary judge at [146] to [148] found that use of the “composite mark” (as found by the primary judge) was not use of a mark substantially identical to either of the trade marks in suit and use of “The Sebel Harbour Lights Cairns” (in the way depicted) was use of a “single mark” not substantially identical to either trade mark in suit.
The Fact Sheet of 2006 (AB, Part C, Tab 36, pp 194‑198)
The appellants at trial and on appeal relied upon another example of prior use going to ownership of each trade mark in CHL consisting of a “fact sheet”, again entitled, “Splendour by the sea … the facts”: see AB p 194 and following. Pages 194 and 195 display the words:
THE SEBEL
HARBOUR LIGHTS
[with a diminished logo]
As to this Fact Sheet, it contains at p 195 the text “Opening June 2007”. The document is endorsed at p 195 with “mirvachotels.com” and says: “managed by Mirvac Hotels & Resorts”. It invites reservations by email.
Page 196 displays these words:
THE SEBEL
HARBOUR LIGHTS
[with a diminished logo]
CAIRNS
The brochure was printed in “late 2006 by Mirvac”: PJ at [153]. The primary judge found that use as described at [91] and [93] of these reasons was use of a “single mark” that lacked substantial identity with either of the trade marks in suit: PJ at [153].
Homepage CHL’s website (AB, Part C, Tab 35, p 192) and findings at [79], [80]‑[85] and [90]
Finally, the appellants at trial and on appeal, on the issue of prior use, also relied upon their use of the domain names harbourlights.com.au and cairnsharbourlights.com registered in the name of an entity called Skyrail Pty Ltd on 28 January 2004 (although used by CHL to direct or resolve enquiries to its own website which was “live” from early 2004). The appellants also relied upon use of their domain name from early 2005 cairnsharbourlights.com.au. As mentioned, these matters are the subject of factual findings by the primary judge at [79] and [80]. As to these matters, the appellants also rely upon the affidavit evidence of Mr Chapman at paras 37 to 39 of his affidavit affirmed 30 May 2013. Mr Chapman’s evidence was the subject of commentary by the primary judge at [87] to [89]. The appellants also rely upon the finding at [85] that CHL operated a website to promote sales of apartments, from 2004, using the names “Harbour Lights” and “Cairns Harbour Lights” as trade marks in the sale of lots. They also rely upon the finding at [90] that CHL’s website advertised or promoted sales of apartments. At [90], the primary judge also observes that this use of the trade marks was not use in the promotion of leasing, rental or letting of apartments or hotel services. The primary judge also found at [90] that the use of domain names to resolve to CHL’s website was not use in connection with the Class 36 and Class 43 services except in relation to commercial real estate agency services. The appellants also place emphasis upon a document at AB, Pt C, Tab 35 at p 192 which is an extract taken from CHL’s website which bears the words “CAIRNS HARBOUR LIGHTS” and, under that, the words, “Sales and Rentals”, “Hotel Bookings”, “Waterfront Restaurants”.
The relationship between the uses as found and the services the subject of the registration for each trade mark
As to the advertisement in The Financial Review of spring 2006 and the “late 2006 fact sheet”, the primary judge did not make a finding that, as to the first, the two uses constituted uses in relation to each of the Class 36 and Class 43 services but simply said that the uses did not establish ownership by prior use because neither use was substantially identical with either trade mark in issue: one was found to be a composite mark and the other, a single mark. As to the late 2006 Fact Sheet, the difficulty for the primary judge was that use of the single mark (as found) was not use probative of prior use of either mark in suit due to the lack of substantial identity. No finding was made as to the scope of the services to which that use related. The primary judge seems to have confined the question to the particular difficulty of a lack of substantial identity thus finding it unnecessary to find whether the use was use in relation to all or just some of the Class 36 and Class 43 services.
The primary judge, however, did make such a finding in relation to the realtor advertisement of 17 December 2005 finding that the use was use “in relation to each of the Class 36 and Class 43 services”. Even though the 17 December 2005 advertisement was found to be use of the “composite mark” (as found) and the “single mark” (as found), in connection with each of the Class 36 and Class 43 services, those uses were not probative of ownership by prior use due to the difficulty, as found, of a lack of substantial identity between those marks (as found) and either of the trade marks in suit.
The primary judge notes that the appellants did not rely on any other use of either trade mark between 2007 and 21 January 2009 when the “Harbour Lights” application was lodged: PJ at [164]. Accor continued to use “The Sebel Harbour Lights” to promote its management services during this period: PJ at [164]. At [165], the primary judge reaches this finding:
In summary, CHL used “Harbour Lights” and “Cairns Harbour Lights” as trade marks in relation to “commercial real estate agency services” prior to 21 January 2009. It did not use the trade marks as trade marks in respect of any of the other Class 36 and Class 43 services prior to that date.
Ms Bradnam’s use
As to Ms Bradnam’s use, the primary judge found that Ms Bradnam purchased an apartment in the Managed Scheme on 5 April 2005. Her partner purchased two apartments in the Residential Scheme at about the same time. Because Mirvac’s management fees (for letting) were thought to be too expensive, Ms Bradnam decided to “start a letting business in respect of apartments at the Harbour Lights complex”: PJ at [167]. On 4 October 2006, Ms Bradnam registered the domain names cairnsharbourlights and harbourlightscairns (.com.au in each case). On 31 October 2006, Ms Bradnam’s website for her letting business went “live” and “began advertising” her apartment and those of her partner “in preparation” for the “commencement of her new business”: PJ at [169].
Ms Bradnam registered harbourlightscairns (.com) on 17 January 2007.
Each of the domain names “resolved” to Ms Bradnam’s website: PJ at [169]. Any interrogation of those domain names through use of a browser or a direct search would direct the search to Ms Bradnam’s website.
Ms Bradnam registered the business name “Harbour Lights Property Management and Sales” on 7 March 2007.
The purchase of the three apartments settled on 29 June 2007. From that date, Ms Bradnam had three apartments capable of being rented. She “commenced trading” by “holiday letting” the apartments: PJ at [171]. She “later” also began providing “long‑term letting [services] to other lot owners”: PJ at [171]. She made one “sale” while operating the business. She operated her business from her apartment in the Managed Scheme until 1 November 2008 whereupon she relocated the business. By 2009, she was managing approximately 30 apartments across the Managed Scheme and the Residential Scheme: PJ at [172].
Ms Bradnam claimed first use of each trade mark in connection with “leasing, letting and rental” services based upon use on her website; her use of domain names; and her use of the business name: PJ at [173] and [174].
As to use on her website from 31 October 2006, the homepage (and only versions of this page were in evidence before the primary judge) recited the heading:
hlp Harbour Lights Private Apartments

The homepage has text set out by the primary judge at [177] in these terms:
Cairns Luxury Accommodation
Take a stroll through luxury
Cairns most luxurious and absolute waterfront 5 star holiday apartments, Harbour Lights Private, are about to be released.
Located on the most sought after blue ribbon real estate, these architecturally designed apartments offer the most discerning traveller the ultimate in exclusive, private, premier accommodation.
Each apartment boast the utmost in privacy, tranquillity and all showcase the breathtaking beauty of the Coral Sea, hinterland, and harbour lights.
The apartments offer a quality unsurpassed in the prestigious private holiday market.
The spacious apartments provide every item you need for your getaway, from flat screen televisions, to soft and indulgent linen. If you do dare leave, you can take a dip in the swimming pool, have a glass of wine in the private bar, and all the while, gaze over the horizon to the Great Barrier Reef.
While nestled inside the exclusive CityPort marina it is hard to believe how close you are to the bustling city centre, but boutique shopping, fine cuisine, and entertainment are a mere one minute stroll along the beautifully night lit and adjoining jetty.
At [178], the primary judge found that the letters “hlp” were distinctive with the result that “hlp Harbour Lights Private Apartments” is not substantially identical to either trade mark in suit. Other uses on the webpage of the words “Harbour Lights Private” were found not to be use of those words as a badge of origin for letting services: PJ at [179]. The primary judge had held at [165] (and affirmed at [173]) that CHL and Accor had not used either trade mark in suit in relation to any of the Class 36 and Class 43 services prior to 21 January 2009 (being the date of the filing of the Harbour Lights trade mark application”) other than “commercial real estate agency services”. The primary judge examined the homepages of Ms Bradnam’s website in the period prior to 21 January 2009 (being the effective date of registration of “Harbour Lights”) and 21 April 2009 (the effective date of registration of “Cairns Harbour Lights”). Having examined those webpages, the primary judge at [184] concluded that:
… Ms Bradnam did not use any mark substantially identical to HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS as a trade mark on her website prior to 21 January 2009 or 21 April 2009.
As to the use of the three domain names (see [99]-[101] of these reasons) “resolving” to her website, the primary judge found that use of each domain name directing a search to her website advertising her apartment letting services was “use of the domain name as a trade mark”, that is, “as a badge of origin to indicate a connection between her business and the services it provided”: PJ at [187].
Those services were “short‑term rental and letting” (PJ at [188]). The letting was advertised as “holiday letting”: PJ at [188]. The primary judge observes at [188] as follows:
… The services advertised are all the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and the hotel services.
Ms Bradnam had an “existing intention” from 31 October 2006 to offer the advertised services and from July 2007 she engaged in “actual trade” in those services: PJ at [189]. Moreover, because the word “Cairns” is merely a “geographical reference, not distinctive in its own right” and prefixes and suffixes in domain names are to be disregarded, the “domain names are each substantially identical to ‘HARBOUR LIGHTS’”: PJ at [190]. The primary judge observed that the rearrangement of the words “CAIRNS HARBOUR LIGHTS” in two of the domain names to “harbourlightscairns” did not “substantially affect their identity”. The primary judge then concludes as follows at [190]:
… Therefore, I consider that by the use of the domain names to resolve to her website, Ms Bradnam used trade marks substantially identical to HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS.
At [191], the primary judge finds:
The use of the domain names by Ms Bradnam was use as trade marks. She used the domain names in respect of each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and the hotel services. They were so used from 31 October 2006, but even if this is wrong, by no later than July 2007.
As to the business name “Harbour Lights Property Management and Sales”, the primary judge examined Ms Bradnam’s “general but unspecified” uses of the business name and her more “specific uses” of it. As to the former, those uses did not operate to distinguish the services she provided from those provided by other traders: PJ at [197]. As to specific uses, the primary judge had particular regard to an agreement made between the owner of an apartment in the complex and “Harbour Lights Property Management & Sales” dated 10 August 2007 by which the apartment owner appoints the business owner as agent to provide “Letting/Leasing of property” and the “Collection of rent”, for permanent and holiday rental. The primary judge said this at [200]:
I accept that the agreement of 10 August 2007 demonstrates use by Ms Bradnam of the name “Harbour Lights Property Management and Sales” in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services” and the hotel services.
That use was use of the business name as a trade mark. It distinguished the services provided by her from the services provided by others: PJ at [201]. As to whether use of the business name is use of something substantially identical to either of the trade marks in suit, the primary judge reached this finding at [202]:
… In my opinion, the words “Property Management and Sales” are purely descriptive of the services offered by “Harbour Lights”. Those words are not distinctive in their own right. Therefore, “Harbour Lights Property Management and Sales” is substantially identical to HARBOUR LIGHTS. That business name is not, however, substantially identical to CAIRNS HARBOUR LIGHTS. Even though Cairns is a geographical name which is not distinctive in its own right, “Harbour Lights Property Management and Sales” and CAIRNS HARBOUR LIGHTS when compared side by side are too dissimilar to be substantially identical.
And at [203]:
I find that Ms Bradnam used a trade mark substantially identical to HARBOUR LIGHTS as a trade mark in relation to the Class 36 and Class 43 services other than the hotel services in the agreement dated 10 August 2007.
The primary judge’s assessment of the end result on “prior use” or “first use”
In the result, the primary judge found at [205], [206], [644] and [645]: first, prior to 21 January 2009, neither CHL nor Accor used either trade mark in suit or any mark substantially identical to those marks, as a trade mark, in connection with the Class 36 and Class 43 services other than commercial real estate agency services: PJ at [205] and [165]; second, CHL is the owner of each trade mark in suit, by prior use, in relation to commercial real estate agency services: PJ at [205]; third, CHL is the owner of each trade mark in suit in relation to hotel services by reason of the act of registration of each trade mark in suit in relation to hotel services from 21 January 2009 and 21 April 2009, there being no prior use of either trade mark concerning those services: PJ at [205] and [59] and [60]; fourth, Ms Bradnam, from 31 October 2006 used domain names substantially identical to each trade mark in suit, as trade marks, linked to her website: PJ at [206] and [187] to [191]; fifth, Ms Bradnam, in the agreement of 10 August 2007, used a business name, as a trade mark, substantially identical to HARBOUR LIGHTS (although not substantially identical to CAIRNS HARBOUR LIGHTS): PJ at [206] and [200] – [203]; sixth, Ms Bradnam is the first user of each trade mark in relation to “leasing, letting and rental” services: PJ at [206]; seventh, it follows that CHL is not the owner of each trade mark in respect of those services mentioned at proposition 6 above: PJ at [206].
Are the trade marks capable of distinguishing the services of the appellants from the services of others?
Apart from the s 58 ownership issue, the respondents contended before the primary judge that each trade mark should be removed from the Register pursuant to s 41 of the Act as neither mark is capable of distinguishing the services of the appellants. Although it will be necessary to return to s 41 later in these reasons, the relevant elements of s 41 as that section stood at the date of the applications for registration were as follows.
First, if a trade mark is not capable of distinguishing the applicant’s services from the services of others, the application for registration must be rejected: s 41(2).
Second, in deciding that question, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated services from the services of others: s 41(3).
Third, if, having first considered that matter, the Registrar is still unable to decide the question (framed by s 41(3) and posed by s 41(2)), the Registrar must turn to s 41(5).
Fourth, in applying s 41(5), if the Registrar finds that the trade mark is, to some extent, “inherently adapted” to distinguish the designated services from the services of others but the Registrar is unable to decide, on that basis alone that the trade mark is capable of so distinguishing, the Registrar must engage with the statutory sequence set out at s 41(5)(a), (b) and (c) of the Act.
Fifth, s 41(5)(a) requires the Registrar to consider whether because of the combined effect of three factors set out at s 41(5)(a), the trade mark does or will distinguish the designated services from the services of others. The three s 41(5)(a) factors are these: the extent to which the trade mark is inherently adapted to distinguish the designated services; the use, or intended use, of the trade mark by the applicant; any other circumstances. Having considered those matters, if the Registrar is then satisfied that the trade mark does or will so distinguish the designated services, the trade mark is taken to be capable of distinguishing the applicant’s services from the services of others: s 41(5)(b).
Sixth, if, having considered the s 41(5)(a) factors, the Registrar is not satisfied that the trade mark does or will so distinguish the designated services, the trade mark is taken not to be capable of distinguishing the applicant’s services from the services of others: s 41(5)(c).
On the other hand, the alternate postulate of s 41(6) might apply by reason of s 41(4). If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated services from the services of others (rather than “to some extent” as contemplated by s 41(5) which comprehends degrees of extent), two possibilities arise: first, if the applicant establishes that because of the extent of his or her use of the trade mark before the filing date, the trade mark does distinguish the designated services as being those of the applicant, the trade mark is taken to be capable of distinguishing the applicant’s services from those of others (for the purposes of s 41(2)): s 41(6)(a); second, in any other case, the trade mark is taken not to be capable of distinguishing the designated services from the services of others: s 41(6)(b).
As to “Harbour Lights”, the primary judge considered, for the purposes of s 41(3), the “ordinary signification” of the trade mark to persons who “will trade in or use the service to which the trade mark is applied”, namely, “[apartment] owners, travel agents and potential guests”: PJ at [227]. The primary judge found that the words do not directly describe a characteristic of accommodation but rather represent a “covert and skilful allusion” to services thus rendering the words prima facie registrable: PJ at [229]. The primary judge found that the words “Harbour Lights” are not “descriptive” of a geographical location connected with the services, even though they reflect the name of the building connected with the services: PJ at [232]. At [232], the primary judge said this:
… The fact that the services are connected with real property and that the services comprise of provision of an entitlement to occupy that real property does not affect the inherent adaptability of the relevant words to distinguish.
The primary judge also observed that the registration of “Harbour Lights” does not prevent apartment owners from using the words to describe the location of their apartment: PJ at [237].
To the extent that the respondents contended that the words had become “so well known” as the name of the building that the words could not be regarded as inherently adapted to distinguish Accor’s and CHL’s services, the primary judge noted that “Harbour Lights” was conceived and proposed by CHL in 2003 for use in relation to the proposed project buildings. Events since then would not bear upon whether the selected mark was inherently adapted to distinguish: PJ at [238]. Thus, at [239], the primary judge concluded:
In my opinion, the words “Harbour Lights” are inherently adapted to distinguish the services of Accor and CHL. Those words are prima facie registrable as a trade mark.
As to the trade mark “Cairns Harbour Lights”, the primary judge observed that those words are “in a different category”: PJ at [240]. Because a person looking at those words for the first time in relation to “leasing, rental or letting services” would understand them to refer to a place (either Cairns or Cairns Harbour), there is thus a “direct and not merely allusive reference to a characteristic of the services”, namely, the location of the accommodation offered: PJ at [241]. As to whether other traders are likely in the ordinary course of their business and without proper motive, to want to use the words “Cairns Harbour Lights” in connection with the provision of their own services, the primary judge at [242] found:
… In my opinion, the answer is that they may well wish to do so. It is not hard to imagine that an accommodation provider may wish to describe their services by incorporating the words “Cairns Harbour”.
[emphasis added]
And at [243]:
The inclusion of the word “Lights” does mean that CAIRNS HARBOUR LIGHTS is to some extent inherently adapted to distinguish. However, I am unable to decide, on that basis alone, that the trade mark is capable of distinguishing the services. [That is, each of the Class 36 and Class 43 services.]
The primary judge also observes that if the words “Harbour Lights” are read together rather than reading the words “Cairns Harbour” together, those words are inherently adapted to distinguish to some extent and thus “Cairns Harbour Lights” is to some extent inherently adapted to distinguish the services of the appellants, therefore rendering s 41(5) applicable. The primary judge then applied s 41(5). At [248], the primary judge notes the earlier finding that Mirvac used the mark “The Sebel Harbour Lights” in relation to hotel or accommodation letting services rather than the trade mark “Cairns Harbour Lights” until early 2009. Thereafter (from January/February 2009), Mirvac adopted use (until the present) of the trade mark “Cairns Harbour Lights” in connection with those services: PJ at [248]. At [251] and [252], the primary judge made these findings:
251Taking into account the extent to which CAIRNS HARBOUR LIGHTS is inherently adapted to distinguish and the extent of the [appellants’] use, I do not accept that the trade mark now distinguishes the relevant services as being those of the [appellants], nor that they did so at the date of registration.
252For these reasons, I find that CAIRNS HARBOUR LIGHTS is not capable of distinguishing the services of CHL and Accor from the services of others.
In reaching these conclusions, the primary judge rejected the contention of the respondents that the words “Harbour Lights” are words forming part of the “common heritage” carrying with them the “common right of the public” to make honest use of them for the sake of the signification which they are said to ordinarily possess, namely, identifying the location of lots (apartments) in the complex. The primary judge rejected that contention for a number of reasons: first, the considerations identified at [232] mentioned above at [123] of these reasons; second, because the respondents were relying upon the personal interests of a cohort of apartment owners rather than the “common right of the public” as that term is understood in the authorities; and third, in any event, registration of “Harbour Lights” does not foreclose lot owners or their agents identifying the location of an apartment in the complex: PJ at [233] to [239].
Infringement
We will address separately the findings concerning infringement later in these reasons.
THE GROUNDS OF APPEAL OF ACCOR AND CHL
In the course of the hearing of the appeal, the appellants handed up a document entitled “Appellants’ References for Oral Submissions” (the “References document”). In that document, the appellants elected not to press some matters and, in particular, abandoned reliance upon some of the advertisements relied upon before the trial judge in support of first use in the appellants of each trade mark in respect of the relevant services.
The grounds of appeal described in these reasons reflects the final position taken by the appellants on the various matters.
On the question of ownership by prior user, the appellants contend that the primary judge fell into error in finding that CHL is not the owner of the trade marks “Harbour Lights” and “Cairns Harbour Lights” in relation to “leasing, letting and rental services” and in also finding that grounds subsisted for cancellation of each trade mark registration in respect of those services under s 88(1) of the Act: by cancelling entirely the registration of Cairns Harbour Lights under s 88(1)(a) and by amending the registration of Harbour Lights so as to remove those services from the registration of that trade mark, under s 88(1)(b).
In making findings to that effect at [206] and [644] (as to which see [115] of these reasons), the primary judge is said to have erred in the following three respects (subject to the observations at [138]).
First, the primary judge erred in finding that CHL’s use of the domain names harbourlights.com.au and cairnsharbourlights.com in and from 2004 constituted use of each trade mark, as a trade mark, only in relation to commercial real estate agency services: PJ at [91] (as to which see [50] and [52] of these reasons): Ground 2(a).
Second, the primary judge erred in finding that the following advertisements did not involve use, by the appellants, of each trade mark or a mark substantially identical to each of those trade marks, as trade marks, in respect of the services for which each mark was ultimately registered (Ground 2(b)):
Ÿthe advertisement in The Financial Review of 28 October 2004 (not pressed by the appellants in the References document at para 5);
Ÿthe advertisement in The Sydney Morning Herald of 16 April 2005;
Ÿthe Mirvac Hotel Fact Sheet of May 2005;
Ÿthe advertisement in the Weekend Post realtor of 17 December 2005;
Ÿthe advertisement in The Financial Review of spring 2006;
Ÿthe Mirvac Hotel Fact Sheet of late 2006 (foreshadowing the June 2007 opening); and
Ÿit should be noted that the appellants no longer rely upon the material discussed at [134], [135], [149] and [154] of the principal judgment.
Third, the primary judge erred in finding that the advertisement in The Financial Review of 28 October 2004 did not involve use by the appellants of each trade mark or marks substantially identical to those marks in relation to services other than commercial real estate agency services: Ground 2(c). However, Ground 2(c) is, in effect, not pressed by the appellants as the two recited examples are no longer relied upon as examples of prior use: the References document, para 5.

In each of these examples of contended infringement, the primary judge finds whether (or not) use of the relevant words involved use of those words as a trade mark. The primary judge then finds, if the words were used as a trade mark, whether the words used are either substantially identical with or deceptively similar to either of the trade marks in suit (or both). As to that matter, the primary judge’s observations at [302] need to be kept in mind and against that background the primary judge often finds that the “elements” of s 120(1) of the Act are satisfied. In those examples where the primary judge finds use of words by either Ms Bradnam or Liv constitute use as a trade mark and involves a use of words which are either substantially identical with or deceptively similar to either or both of the trade marks in suit, the primary judge then identifies the services of Ms Bradnam or Liv in respect of which that use occurred and whether those services are one or more of the services for which each trade mark in suit is registered.
It is apparent from this review of the findings that the primary judge addressed each of these questions in the context of whether the contended conduct fell within s 120(1) of the Act. The primary judge adopted that approach because his Honour finds that the relevant use was use in relation to one or more services in respect of which each trade mark is registered and thus only s 120(1) was engaged. Often, the primary judge describes the services in respect of which use has occurred as use in relation to each of the Class 36 and Class 43 services other than “commercial real estate agency services”, “agency services for the leasing of real estate properties” and “hotel services”. In some cases, an example of use engages the sale of apartments which engages use in relation to “commercial real estate agency services” and in another case, the use engages use in relation to “hotel services”.
The appellants contend that the primary judge fell into error in failing to consider the application of s 120(2)(c) of the Act on the footing, it seems, that once the primary judge was satisfied that either Ms Bradnam or Liv had used, as a trade mark, a sign substantially identical with or deceptively similar to either or both of the trade marks in suit (the mark used), in relation to any of the registered services, Ms Bradnam and Liv would also infringe either or both of the registered trade marks, by using the mark used, in relation to services of the “same description” as that of the registered services and thus infringement is not simply confined to the symmetry of use of the “registered services” but includes use in relation to any services of the same description as the registered services. Alternatively, the services in respect of which the mark is used are simply said to be properly understood as services “of the same description” as the registered services.
At one level, this notion harks back to the propositions advanced by the appellants concerning the essential “overlap” between the registered services. That notion has already been examined in relation to issues of prior use and whether one or more of the registered services could properly be described as a “true equivalent” of a service for which prior use was demonstrated. In the context of infringement, however, use by a contended infringer in relation to services “of the same description” is a wider notion than the principle of “true equivalents” in the context of prior user.
The starting point in determining the scope of the phrase “services of the same description as that of [the registered services]” in s 120(2)(c) is the statement of principle in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ (notwithstanding that the question involved consideration of whether goods were goods of the same description), in these terms:
There may be many matters to be considered apart from the inherent character of the goods [or services] in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application. Romer J. thought it necessary to look beyond the nature of the goods [or services] in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question where bought and sold. Shortly after the decision in Jellinek’s Case the Assistant‑Comptroller elaborated on the observations Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods [or services], their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”.
Dixon J had said much the same thing in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94 when his Honour observed:
What forms the same description of goods [or services] must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments.
There is no good reason to believe that these statements of principle do not apply in relation to services for the purposes of s 120(2)(c) and, in fact, they have been found to so apply: MID Sydney Pty Ltd v Australian Tourism Co Ltd, supra at [241], Burchett, Sackville and Lehane JJ at 243 and 244. Plainly enough, the calculus of factors may alter when the question becomes one of applying the principles to services. By way of illustration, the Full Court at 242 and 244, supra at [241] of these reasons, concluded that the services involved in conducting “an hotel business” including the accommodation of guests, the operation of restaurants and bars and the provision of conference and business facilities and other services normally offered by hoteliers (the impugned services), had different characteristics from services described as “property management services” (the registered services) and thus, those services could not be described as services of the same description as property management services. Those conclusions were reached by the Full Court by construing the words “property management services” and taking into account the evidence given by service providers as to the features of the various services.
As a question of statutory construction and statutory purpose concerning s 120(2)(c), the centrality of s 20 of the Act must be kept in mind in conjunction with s 120(2)(c).
Section 20 confers on the registered owner of the trade mark the exclusive right to use (and authorise others to use) the trade mark and the right to obtain relief for infringement. The scope of the monopoly grant (subject to the Act) is conditioned not only by a corresponding right to seek relief to stop others from using, as a trade mark, a sign substantially identical with or deceptively similar to the registered trade mark in relation to, relevantly here, the registered services, but also in relation to services of the same description as the registered services. Determining whether services are services of the same description as the registered services involves examining the essential characteristics of each.
In the written and oral submissions the appellants again place reliance, on this issue, on the notion that the registered services of the appellants “plainly overlap”. Thus, it is said that the features of the services provided by the respondents, the subject of the findings, are necessarily features of the same description as the features of the registered services. We have already taken a different view about the extent to which it can be said that the registered services “plainly overlap”.
As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:
(1)The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?
(2)To whom are the services offered?
(3)How are they provided?
(4)How are they used?
(5)What is their purpose?
(6)Are they bundled together with other services?
(7)Are they differentiated by the functional level at which they are provided: wholesale or retail?
(8)Where do they originate?
(9)What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(10)How closely contestable are the services in substance: are they in the same market or trade?
(11)How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]‑[73].
In this appeal, the appellants contend that the primary judge erred by finding (in those examples in the schedule), no trade mark use and by not finding, more generally, that the use of the domain names by Ms Bradnam and Liv constituted trade mark use (rather than the particular findings based on domain name use linked to specific examples of website pages). They also say, of course, that s 120(2)(c) is engaged by each example of use of a substantially identical or deceptively similar sign by the respondents in relation to any of the services offered by the respondents as services of the same description as the registered services.
Subject to one matter in relation to the use of domain names, we see no reason to disturb any of the findings reflected in the discussion at [284] to [327] and set out in the schedule at [328] of these reasons.
In reaching the findings, the primary judge considered the services offered or provided by Ms Bradnam and Liv in relation to each example and concluded that the respondents had used a sign substantially identical with or deceptively similar to the trade marks in suit in relation to their services, and finds that those services are services in respect of which each trade mark is registered: that is to say, not all of the registered services but some of them. The primary judge, as a matter of method, looked at the services of the respondents, identified the content of the services, example by example, and then determined whether those services are services in respect of which each trade mark in suit is registered.
Having decided that question, a second question might well have arisen in this way: if the respondents are using a sign substantially identical with or deceptively similar to either or both of the registered trade marks in relation to, for example, “apartment rental and letting services” which fall within “letting and rental services” for which each trade mark is registered, are those services, services of the same description as “commercial real estate agency services”, for example, such that the use of the former engages infringement in respect of the latter under a broader s 120(2)(c) test?
That secondary consideration did not arise before the primary judge because of the lack of evidence and a lack of attention to the content of the various services, which led to the finding that “commercial real estate agency services” are concerned with only sales and thus those services cannot be regarded as services of the same description as “letting and rental services”. Nor can “hotel services”, having regard to findings as to the content of those services be regarded as services of the same description as “letting or rental services” or “commercial real estate agency services” or “agency services for the leasing of real estate properties”. Accordingly, no such secondary question arose on the evidence. More fundamentally, however, the primary judge found that the respondents used marks substantially identical with or deceptively similar to (or both) each of the registered trade marks in suit in relation to particular services for which each trade mark is actually registered. The claims were found to fall expressly within s 120(1) and not otherwise and thus questions which might have arisen under s 120(2)(c) did not arise. We see no reason to depart from those findings.
The respondents rely principally on three overarching considerations.
First, they say that the use of “Harbour Lights” was use in connection with the broader names, references or contextual sentences and phrases such as “Cairns Luxury Accommodation – Holiday Apartments” and “Cairns Luxury Apartments” or other such references with the result that the use of the words could not be described as trade mark use and not described as the use of words substantially identical with or, more relevantly, deceptively similar to, either of the registered trade marks in suit and in any event, the use was directed to fixing the viewer’s attention on the physical location of the apartments being offered for rental accommodation. They say that contextually there could be no confusion between their service offerings and those of the appellants.
The examples of use and the broader findings of the primary judge demonstrate that that contention has no force.
Secondly, the respondents say that neither respondent infringed either trade mark because each respondent used the relevant sign in good faith to indicate the geographical origin of the services or the characteristics of the services for the purposes of s 122(1)(b): [278] of these reasons.
There can be no doubt that both Ms Bradnam and Liv, in the many examples given, used a mark substantially identical with or deceptively similar to each of the registered trade marks in suit, as a badge of origin, to distinguish, at the relevant moments in time, their services provided as part of their business, in the course of trade, from others. In particular, they used domain names adopting marks substantially identical with and deceptively similar to each of the trade marks in suit to take, at the threshold, inquirers for apartment letting services, to their websites. The relevant services were accommodation rental and letting services and, from time to time, by reference to particular examples, the sale of apartments. To suggest otherwise is a form of sophistry.
The respondents could have selected a name, badge or title which operated to differentiate their “business services”, as a badge of origin, from the appellants’ services without any use of, or connection with, the invented words “Harbour Lights” or “Cairns Harbour Lights” authored and adopted by the appellants. They could have coined, authored or adopted their own distinctive badge of origin in their own terms and have used such terms as part of their electronic calling card in the form of domain names. However, they did not do so. They chose to use, as a badge of origin, a badge of origin of another’s services. This is especially so in using domain names to take inquirers to a website offering accommodation rental and letting services and the services of the sale of luxury apartments.
Once the respondents elected to use marks substantially identical with or deceptively similar to the trade marks in suit, in domain names, for the purpose of capturing inquirers and taking such persons to their website offering accommodation letting and rental services (and the sale of apartments), the respondents were using the registered trade marks, in the course of trade, in connection with the services they were providing which, to the extent already identified, fell within some of the services for which each trade mark is registered.
It may be that from time to time pages of the relevant websites to which an inquirer was taken gave emphasis to the physical location of the particular complex called “Harbour Lights” and its relationship to the harbour and the amenity of Cairns. However, that circumstance does not mean that by using the domain names incorporating marks substantially identical with or deceptively similar to the trade marks in suit, so as to capture inquirers at the threshold, is use of the domain names to indicate geographical origin of the services or geographical characteristics. It is use of the domain names to indicate a connection, in the course of trade, between services and the provider of the services.
The respondents say that properly understood all references they have used to “Harbour Lights” or “Cairns Harbour Lights” or “Harbour Lights Cairns” are good faith references to the geographical location and character of the apartments offered for letting or rental (or sale) in the Harbour Lights complex in Cairns. In the examples in evidence, there are, of course, references to and some emphasis upon location, Cairns and the complex and some of its characteristics. However, those references do not explain the use of a mark substantially identical with or deceptively similar to each of the trade marks in suit as a badge of origin of the business services of each respondent in respect of some (at least) of the services for which each trade mark is registered. The marks used by the respondents were not used “to indicate” the “geographical origin” of “the services”. The marks were used to identify a connection, in the course of trade, between the operator of the business providing the services and the services. As it happened, the services were concerned with the rental and letting (and, from to time, sale) of apartments that, of course, necessarily are located in a physical place.
We are not satisfied that the respondents have made good the s 122(1)(b) defence.
We see no reason to disturb the findings of the primary judge concerning the matters summarised in the schedule.
Thirdly, the respondents rely upon s 124(1) of the Act.
Section 124(1) of the Act, relevantly, is in these terms:
124 Prior use of identical trade mark etc.
(1)A person does not infringe a registered trade mark by using an unregistered trade mark that is substantially identical with, or deceptively similar to, the registered trade mark in relation to:
(a)goods similar to goods (registered goods) in respect of which the trade mark is registered; or
(b)services closely related to registered goods; or
(c)services similar to services (registered services) in respect of which the trade mark is registered; or
(d)goods closely related to registered services;
if the person, or the person and the person’s predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before:
(e) the date of registration of the registered trade mark; or
(f)the registered owner of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Act, first used the trade mark;
whichever is earlier.
…
[emphasis adopted in the Act]

It will be recalled that the trade mark “Harbour Lights” was registered with effect from 21 January 2009 (being relevantly the “date of registration”; s 6 of the Act) and the trade mark “Cairns Harbour Lights” was registered with effect from 21 April 2009. It will also be recalled that the registered owner used each of the registered marks from, at the latest, 17 December 2005.
It follows, that in order for each of the respondents to make good a defence under s 124(1) each of them need to make good that they (and in the case of Liv, Liv’s predecessor in title in the form of Ms Bradnam) used, in the course of trade, an unregistered trade mark (substantially identical with or deceptively similar to each of the registered trade marks) in relation to any one or more of the registered services, continuously, from a time before 17 December 2005 (that date being the earlier of the two dates contemplated by s 124(1)(e) and (f)). That is not so. The registered owner was the first user of each registered trade mark and the unregistered marks used by Ms Bradnam and later by Liv were not used from a date before 17 December 2005. Thus, the defence under s 124(1) fails.
As to the qualification mentioned at [341] of these reasons, we regard use of the domain names to take inquirers to the website of the respondents, from time to time, as in a different category. The appellants have made good a significant number of examples of use by the respondents of marks which are substantially identical with or deceptively similar to (or both) each of the registered trade marks in respect of particular categories of services. We take the view that that evidence is sufficient to warrant the grant of an injunction in relation to the use of either mark in relation to all of the registered services on the footing that the appellants have made good trade mark infringement for the purposes of s 120(1) in relation to a significant number of the services falling within the Class 36 and Class 43 services. That case has been found to have been made good in relation to all of the Class 36 and Class 43 services other than “agency services for the leasing of real estate properties” and, in the main, “commercial real estate agency services” (except to the extent where there are findings of the service of sales) and “hotel services” (except in those examples where the primary judge has found use in relation to the sale of apartments and hotel services). Nevertheless, there are examples in each category other than “agency services for the leasing of real estate properties”. We also note that there was no contest on the part of the respondents before the primary judge as to ownership of each mark in relation to “commercial real estate agency services” and “hotel services”, in any event. In our view, the injunction ought to run in relation to all the registered services, in respect of use of the domain names.
In the result, we conclude as follows:
(1)The appellants have made good their contentions of ownership of the trade mark “Harbour Lights” and the trade mark “Cairns Harbour Lights”.
(2)Ms Bradnam and Liv have used words or a mark substantially identical with or deceptively similar to each of the trade marks, as a trade mark in relation to services in respect of which each trade mark is registered, as found by the primary judge.
(3)The schedule at [328] sets out a summary of the examples of trade mark infringement.
(4)There is no reason to disturb any aspect of those findings and although we are urged to reverse the findings in relation to L4 and L7 we see no basis for disturbing those conclusions of the primary judge.
(5)The order cancelling the registration of the trade mark “Cairns Harbour Lights” is to be set aside.
(6)The orders amending the registration of “Harbour Lights” in relation to the Class 36 and Class 43 services are to be set aside.
(7)The defence under s 124(1) fails.
(8)The defence under s 122(1)(b) fails.
(9)As to Order 5 of the orders of 21 July 2015, that order is to be amended so as to provide after the matters recited at (a) to (d), the following words “as a trade mark to promote or advertise any hotel accommodation services in Australia including via websites; from using “Harbour Lights Apartments” as a trade mark to promote or advertise any commercial real estate agency services in Australia (including via websites); and from using any of the descriptions recited at (a) to (d) as a trade mark in relation to any of the services in respect of which “Harbour Lights” is registered as a trade mark or “Cairns Harbour Lights” is registered as a trade mark.
(10)Order 7 of the orders of 21 July 2015 is to be set aside.
(11)The appeal is to be upheld.
(12)The cross‑appeal is to be dismissed.
Consequential orders may be necessary to give effect to these reasons. The appellants are directed to submit proposed orders within 21 days.
The parties are directed to put on written submissions as to costs within 21 days, limited to five pages.

I certify that the preceding three hundred and sixty‑three (363) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Greenwood, Besanko and Katzmann
Associate:
Dated: 7 April 2017

SCHEDULE 1

SCHEDULE 2

SCHEDULE 3

SCHEDULE 4

SCHEDULE OF PARTIES

QUD 683 of 2015

Appellants

Second Appellant:

CAIRNS HARBOUR LIGHTS PTY LTD

Respondents

Second Respondent: IVANA PATALANO

Third Respondent: ELISE WYANDRA WARRING ALSO KNOWN AS ELISE BRADNAM

Appeal from:	Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554
File number(s):	QUD 683 of 2015
Judge(s):	GREENWOOD, BESANKO AND KATZMANN JJ
Date of judgment:	7 April 2017
Catchwords:	TRADE MARKS – consideration of the tests for determining whether the registered owner of the trade marks in suit was, at the date of application for registration, the proprietor by authorship and first use – consideration of whether first use in connection with one of the services for which each trade mark in suit is registered within the range of Class 36 and Class 43 services for which each trade mark is registered, gives rise to first use of each mark in relation to any of the other services as registered, as contended “true equivalents” of “commercial real estate agency services” TRADE MARKS – consideration of the tests for determining whether particular services can properly be regarded as “true equivalents” of particular services or whether particular services are services “of the same kind” as other services – consideration of the need for evidence on such questions apart from textual construction of each of the services so described as registered TRADE MARKS – consideration of whether prior use of “a mark” by the registered proprietor constitutes prior use of “the registered trade mark” – consideration of whether prior use relied upon by the registered owner is prior use of a mark properly understood as one “substantially identical with” the registered trade mark – consideration of the notion of a “device” – consideration of whether prior use of a mark “substantially identical with” the registered trade mark gives rise to proprietorship not only in the registered trade mark but also in the mark “substantially identical with” the registered trade mark TRADE MARKS – consideration of the tests to be applied in determining whether a trade mark is capable of distinguishing an applicant’s services in respect of which the mark is registered from the services of others, for the purposes of s 41(1) to s 41(4) of the Trade Marks Act 1995 (Cth) – consideration of the application of s 41(5) and s 41(6) of the Act TRADE MARKS – consideration of the tests to be applied in determining whether a party has used a mark substantially identical with or deceptively similar to the registered trade mark – consideration of s 120(1) – consideration of whether s 120(2) had any application in the circumstances of the case TRADE MARKS – consideration of s 122(1)(b) of the Trade Marks Act 1995 (Cth) – consideration of s 124(1) of that Act
Legislation:	Trade Marks Act 1995 (Cth), ss 7(1), 7(2), 7(3), 7(5), 8(1), 8(2), 17, 19, 20, 27, 41(1) to 41(6), 88(1)(a), 88(1)(b), 88(2), 120(1), 120(2), 122(1)(b), 124(1) Trade Mark Regulations 1995 (Cth), Reg 3.1
Cases cited:	Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554 Aldi Stores Ltd Partnership v Frito‑Lay Trading Company GmbH (2001) 190 ALR 185 Cantarella Bros Pty Limited v Modena Trading Pty Limited (2014) 254 CLR 337 Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386 E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 Jackson & Company v Napper (1886) 35 Ch D 162 Lomas v Winton Shire Council [2003] AIPC 91‑839 MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 Moorgate Tobacco Co Ltd v Philip Morris Ltd [No. 2] (1984) 156 CLR 414 PB Foods v Malanda Dairyfoods Ltd (1999) 47 IPR 47 Re The Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199 Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 Re Hick’s Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636 Robinson Helicopter Company Inc v McDermott (2016) 331 ALR 550 Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601 Shell Co of Australia Ltd v Esso Standard Oil (Australia) (1963) 109 CLR 407 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 Winton Shire Council v Lomas (2002) 119 FCR 416 Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97
Date of hearing:	22 and 23 February 2016
Date of last submissions:	23 February 2016
Registry:	Queensland
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	363
Counsel for the Appellants:	Mr C Dimitriadis SC and Mr H P T Bevan
Solicitor for the Appellants:	Webb Henderson
Counsel for the Respondents:	Mr R Cobden SC and Mr A M Musgrave
Solicitor for the First and Second Respondents:	Morrow Petersen, Solicitors
Solicitor for the Third Respondent:	Kinneally Miley Law

JUDGE:	GREENWOOD, BESANKO AND KATZMANN JJ
DATE OF ORDER:	7 APRIL 2017

QUD 683 of 2015
Appellants
Second Appellant:	CAIRNS HARBOUR LIGHTS PTY LTD
Respondents
Second Respondent:	IVANA PATALANO
Third Respondent:	ELISE WYANDRA WARRING ALSO KNOWN AS ELISE BRADNAM