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

[2015] FCA 554

FEDERAL COURT OF AUSTRALIA

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

Citation:

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

Parties:

ACCOR AUSTRALIA & NEW ZEALAND HOSPITALITY PTY LTD and CAIRNS HARBOUR LIGHTS PTY LTD v LIV PTY LTD ACN 093 688 576, IVANA PATALANO and ELISE WYANDRA WARRING ALSO KNOWN AS ELISE BRADNAM

File number:

QUD 762 of 2012

Judge:

RANGIAH J

Date of judgment:

5 June 2015

Catchwords:

TRADE MARKS – cross-claim – rectification of Register – ownership of trade mark – first use – domain names – registered business name – advertisements – whether trade mark capable of distinguishing services – where name of registered trade mark same as community titles scheme – extent to which trade mark is inherently adapted to distinguish – contrary to law – misleading or deceptive conduct – whether trade mark likely to deceive or cause confusion

TRADE MARKS – infringement – substantially identical with or deceptively similar to – use as a trade mark – registered business name – domain name – website layout – internet advertisements – letterhead – outdoor advertising – third party accommodation listing websites –  website keywords – directory listings – defence – use in good faith to indicate geographical origin – prior use of trade mark

CONSUMER LAW – misleading or deceptive conduct – representations that services have sponsorship or approval – confusion amongst consumers – domain names – website layout – directory listings – third party accommodation listing websites – inaccurate description of goods or services – use of disclaimers – accessorial liability

Legislation:

Federal Court of Australia Act 1976 (Cth) ss 37M and 37N
Trade Mark Act 1995 (Cth) ss 8, 17, 20, 24, 26, 27, 33, 41, 42, 43, 58, 88, 120, 122(1), 124
Trade Practices Act 1974 (Cth) ss 52 and 53
Australian Consumer Law ss 18, 29 and 232
Trade Marks Regulations 1995 (Cth) Reg 3.1, Sch 1
Body Corporate and Community Management Act 1977 (Qld) ss 16(2), 169(1), 180(3) and 180(4)
Business Names Act 1962 (Qld) s 5(1)

Cases cited:

Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185 applied
Anheuser-Busch Inc v Budějovický Budvar, Národní Podnik & Ors (2002) 56 IPR 182 applied
Austereo Pty Ltd v DMG Radio (Aust) Pty Ltd (2004) 209 ALR 93 applied
Australian Competition and Consumer Commission v Energy Watch Pty Ltd [2012] FCA 425 cited
Bass, Ratcliff and Gretton Limited v Nicholson and Sons Limited [1932] AC 130 cited
Baume & Co Ltd v A.H. Moore Ltd [1958] Ch 907 cited
Bodum v DKSH Australia Pty Ltd (2011) 280 ALR 639 cited
Bridge Stockbrokers Ltd v Bridges (1984) 4 FCR 460 cited
Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 cited
Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 cited
Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 315 ALR 4 applied
Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 120 ALR 495 cited
Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60 cited
Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 applied
Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 cited
Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 applied
ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 cited
CSR Ltd v Resource Capital Australia Pty Ltd (2003) 128 FCR 408 distinguished
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 applied
Eastman Photographic Materials Company Ltd v Comptroller-General of Patents, Designs, and Trade-Marks [1898] AC 571 cited

Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd (2012) 98 IPR 1 applied
Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 cited
Google Inc v Australian Competition and Consumer Commission (2013) 87 ALJR 235; 294 ALR 404 cited
Hansen Beverage Co v Bickfords (Aust) Pty Ltd (2008) 171 FCR 579 cited
Jackson & Company v Napper (1886) 35 Ch D 162 cited
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 cited
Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 cited
King Par LLC v Brosnan Golf Pty Ltd (2014) 106 IPR 457 cited
Lomas v Winton Shire Council [2002] FCAFC 413 cited
Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450 applied
Mantra IP Pty Ltd v Spagnuolo (2012) 205 FCR 241 cited
Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 applied
Mark Foys Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190 cited
Moorgate Tobacco Ltd v Philip Morris Ltd [No 2] (1984) 156 CLR 414 cited
New South Wales Dairy Corp v Murray-Gouldburn Co-operative Co Ltd (1990) 171 CLR 363 cited
Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 cited
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 cited
Pfizer Products v Karam (2006) 219 FCR 585 cited
R. J. Lea, Ltd. [1913] 1 Ch. 446 cited
Re Hicks’ Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636 cited
Re JB Palmer’s Trade Mark (1883) 24 Ch D 504 cited
Re Pound Puppies Trade Mark [1988] RPC 530 cited
REA Group Ltd v Real Estate 1 Ltd (2013) 217 FCR 327 cited
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 cited
Registrar of Trade Marks v. W. & G. Du Cros Ltd. [1913] A.C. 624 cited
Rice Growers Ltd v Real Foods Pty Ltd (2008) 77 IPR 32; [2008] FCA 639 cited
Richards v Butcher [1891] 2 Ch 522 applied
Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 cited
Solarhart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 281 ALR 544 cited
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 cited
Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 cited
Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 cited
TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (2000) 100 FCR 358 cited
The Architects (Australia) Pty Ltd v Witty Consultants Pty Ltd [2002] QSC 139 cited
The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 cited
Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 cited
Top Heavy Pty Ltd v Killin (1996) 34 IPR 282 cited
Unilever Aust Ltd v Karounos (2001) 113 FCR 322 cited
Vendor Advocacy Australia v Seitanidis (2013) 103 IPR 1 cited
Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242 cited
Winton Shire Council v Lomas (2002) 119 FCR 416 cited
Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97 cited

Date of hearing:

9, 10, 11, 12 and 13 December 2013
4, 5 and 26 March 2014

Place:

Brisbane

Division:

GENERAL DIVISION

Category:

Catchwords

Number of paragraphs:

650

Counsel for the Applicants:

Mr A Crowe QC

Solicitor for the Applicants:

King & Wood Mallesons

Counsel for the First, Second and Third Respondents:

Mr P O’Shea QC with Mr AM Musgrave

Solicitors for the First and Second Respondents:

Morrow Petersen Solicitors

Solicitors for the Third Respondent:

Kinneally Miley Law

TABLE OF CONTENTS

THE PARTIES AND FACTUAL BACKGROUND	[5]
THE CROSS-CLAIM: RECTIFICATION OF REGISTER	[28]
Section 58 TMA – Ownership of the trade marks	[34]
The case law concerning ownership of trade marks	[38]
The services in respect of which the trade marks are registered	[56]
First use by CHL and Accor	[73]
CHL’s use of domain names and website	[79]
Media release 30 June 2004	[92]
Advertisement in The Financial Review 28 October 2004	[101]
Press release 20 November 2004	[113]
Advertisement 16 April 2005	[117]
Brochure May 2005	[121]
Magazine Article 29 June 2005	[133]
Advertisement October 2005	[134]
Press release December 2005	[135]
Article 17 December 2005	[136]
Advertisement 17 December 2005	[140]
Advertisement spring 2006	[145]
Brochure late 2006	[149]
Fact sheet late 2006	[153]
Brochure late 2006	[154]
Brochure June 2007	[155]
Information given to potential purchasers	[156]
CHL’s use of business name	[160]
CHL’s real estate agency services	[162]
First use by Ms Bradnam	[166]
Ms Bradnam’s website from 31 October 2006	[175]
Ms Bradnam’s use of domain names	[185]
Ms Bradnam’s use of business name	[192]
Harbour Lights Caravan Park	[204]
Summary of findings as to ownership of trade marks	[205]
Section 41 TMA – Whether the trade marks are capable of distinguishing the services	[208]
Section 41(3) – Extent to which the trade marks are inherently adapted to distinguish	[210]
Section 41(5) – Inherent adaptation, use and other circumstances	[244]
Section 42(b) TMA – Whether use of trade marks would be contrary to law	[253]
Section 43 TMA – Whether trade marks have connotations likely to deceive or cause confusion	[266]
Section 88(2)(c) TMA – Whether trade marks likely to deceive or cause confusion at present time	[277]
THE APPLICANTS’ CLAIM: TRADE MARK INFRINGEMENTS	[283]
Use as a trade mark	[293]
Substantially identical with or deceptively similar to	[298]
Approach to determination of infringement allegations	[303]
Allegations against Ms Bradnam for the period from 21 January 2009 to 17 May 2010	[307]
Registration and general use of business names	[307]
Registration and use of domain names and website	[315]
Google advertisements	[330]
Use of Harbour Lights Cairns as a heading in financial statements to lot owners	[338]
Use of the email address [email protected]	[346]
Use of “Harbour Lights Property Management & Sales” in email booking confirmation	[349]
Use of Harbour Lights Cairns in business correspondence	[352]
Use of “Harbour Lights” in an outdoor advertisement	[357]
Use of “hlc” and “Harbour Lights Cairns” as a heading on an advertising flyer	[362]
Use of “Harbour Lights Private Apartments” as letterhead	[366]
Allegations against Liv for the period from 17 May 2010 to the present	[368]
Use of registered business names	[368]
Use of domain names to direct customers to Liv’s website	[376]
Use of Google advertisements using “Harbour Lights” to promote Liv’s business	[381]
Use of words incorporating “Harbour Lights” on Liv’s website as it was at 30 June 2010	[385]
Use of words incorporating “Harbour Lights” on Liv’s website since October 2010	[397]
Website in its form at 11 October 2010	[397]
Website in form at 6 September 2011	[401]
Use of “Harbour Lights Cairns” on third party websites	[408]
Cairnsaccommodation.com	[409]
Roamfree.com.au	[414]
Maplandia.com	[418]
Booktoday.com	[420]
Asiarooms.com	[422]
Use of “Harbour Lights Apartments” in Google search results description	[424]
Use of “Harbour Lights” as website keywords	[429]
Use of “Harbour Lights Luxury Accommodation” in WhitePages and YellowPages Telephone Directory Listings	[437]
Use of “Harbour Lights complex” on Liv’s Website	[439]
Use of words including “Harbour Lights” as a title on accommodation listing websites	[442]
Agoda.com	[442]
Hotwire.com	[444]
Maplandia.com.au	[447]
Asiarooms.com	[448]
Allegations against Ms Bradnam for the period from 17 May 2010 to the present	[449]
Section 120(2) TMA – Use of trade mark in relation to services of the same description as the registered services	[453]
Section 122(1)(b) TMA – Use in good faith to indicate geographical or some other characteristic	[458]
Section 124(1) TMA – Prior use of trade mark	[474]
MISLEADING OR DECEPTIVE CONDUCT	[481]
The elements of ss 18(1) and 29(1)(g) of the ACL	[485]
Liv’s website	[497]
Evidence of confusion amongst guests	[507]
Representations by Liv and Ms Patalano	[521]
The first alleged misrepresentation	[521]
The second alleged misrepresentation	[539]
The third alleged misrepresentation	[543]
The fourth alleged misrepresentation	[546]
The fifth alleged misrepresentation	[551]
The sixth alleged misrepresentation	[554]
The seventh alleged misrepresentation	[564]
The eighth alleged misrepresentation	[568]
HotelClub.com	[579]
Hotels.com	[590]
Agoda.com	[595]
Booking.com	[600]
Hotwire.com	[603]
Expedia .com.au	[606]
Orbitz.com	[609]
Tripadvisor.com	[611]
The ninth alleged misrepresentation	[612]
The tenth alleged misrepresentation	[617]
The eleventh alleged misrepresentation	[621]
The twelfth alleged misrepresentation	[625]
The thirteenth alleged misrepresentation	[627]
The fourteenth alleged misrepresentation	[632]
The fifteenth alleged misrepresentation	[634]
The sixteenth alleged misrepresentation	[637]
Accessorial liability	[639]
SUMMARY	[644]
GLOSSARY	p 134

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION	QUD 762 of 2012

BETWEEN:

ACCOR AUSTRALIA & NEW ZEALAND HOSPITALITY PTY LTD
First Applicant

CAIRNS HARBOUR LIGHTS PTY LTD
Second Applicant

ELISE WYANDRA WARRING ALSO KNOWN AS ELISE BRADNAM
First Cross-Claimant

IVANA PATALANO
Second Cross-Claimant

AND:

LIV PTY LTD ACN 093 688 576
First Respondent

IVANA PATALANO
Second Respondent

ELISE WYANDRA WARRING ALSO KNOWN AS ELISE BRADNAM
Third Respondent

CAIRNS HARBOUR LIGHTS PTY LTD
First Cross-Respondent

ACCOR AUSTRALIA & NEW ZEALAND HOSPITALITY PTY LTD
Second Cross-Respondent

JUDGE:	RANGIAH J
DATE:	5 JUNE 2015
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1. In this proceeding, the applicants seek injunctions and other relief against the respondents for infringement of trade marks and misleading or deceptive conduct.  The respondents’ cross-claim for rectification of the Register of Trade Marks (“the Register”).

2. Before considering the case, I feel compelled to say that the expenditure of resources, both by the Court and the parties, on this proceeding seems grossly disproportionate to the scope of the relief sought.  On the second day of the trial, I asked the parties whether mediation was appropriate in view of the parties’ indications that the dispute had narrowed.  I was told that there was no prospect of settlement and that “The issue that is in the way … is the question of legal costs that the parties have incurred”.  I suggested that costs would not ordinarily be much of a barrier to resolution of a proceeding in comparison with the substantive issues and directed the parties participate in a mediation before a Deputy Registrar.  The proceeding did not resolve.

3. The trial took eight days.  The parties each tendered a very large volume of documents, apparently on the basis that it was all relevant.  The written submissions alone exceeded 300 pages.  The sheer volume of written material, the number of allegations of trade mark infringements and misleading or deceptive conduct and the number of issues raised in the cross-claim have made this case a particularly onerous one to decide.

4. Sections 37M and 37N of the Federal Court of Australia Act 1976 (Cth) make it plain that the Court is required to facilitate the just resolution of the dispute according to law and as quickly, inexpensively and efficiently as possible, and that the parties are required to conduct the proceedings in a way consistent with that purpose. The parties do not comply with their obligation by engaging in a circular exercise where legal costs are run up to the extent that they become an insurmountable barrier to the resolution of the litigation. It cannot be consistent with the interests of justice for a trial of this length and complexity to be heard and determined for the main purpose, it appears, of ultimately deciding who should pay the legal costs that the parties have incurred. I very much regret that our system of justice could allow this to occur.

   THE PARTIES AND FACTUAL BACKGROUND

5. The second applicant, Cairns Harbour Lights Pty Ltd is a property developer.  I will refer to that company as “CHL”, except where the context makes it preferable to use its full name. 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.  Construction of the complex commenced in September 2004 and was completed in July 2007.  The complex is known as “Harbour Lights” or “Cairns Harbour Lights”.

6. The residential part of the Harbour Lights complex consists of two community titles schemes, namely:

   (a)Harbour Lights Community Titles Scheme 36769 (which I will call “the Residential Scheme”); and

   (b)Harbour Lights (Managed Apartments) Community Titles Scheme 36770 (which I will call “the Managed Scheme”).

7. The apartments in the Residential Scheme are larger than those in the Managed Scheme and are designed for owner-occupiers and longer-term tenants.  However, the owners of some of the apartments in the Residential Scheme also let them on a short-term basis. The apartments in the Managed Scheme are smaller, lack full kitchen facilities and are like hotel rooms. They are designed to attract tourists and business travellers seeking short-term accommodation.  CHL has so far sold approximately 112 of the 191 lots and retains ownership of the remainder.

8. Importantly, CHL is the registered owner of two registered trade marks.  The trade marks and the dates of their registration are:

   (a)HARBOUR LIGHTS – 21 January 2009;

   (b)CAIRNS HARBOUR LIGHTS – 21 April 2009. 

9. The trade marks are each registered in respect of the following services and classes of services under reg 3.1 and Schedule 1 of the Trade Marks Regulations 1995 (Cth) (“the Regulations”):

   (a)Class 36:  agency services for the leasing of real estate properties; commercial real estate agency services; apartment letting agency; apartment rental services; rental of apartments; rental of accommodation; and

   (b)Class 43:  accommodation letting agency services (holiday apartments); accommodation letting agency services (hotel); hotel accommodation services; accommodation reservation services; booking services for accommodation; hotel services.

10. On 21 December 2004, CHL caused the body corporate for each of the Residential Scheme and the Managed Scheme to enter into agreements giving Mirvac Hotels Pty Ltd (“Mirvac”) the exclusive rights to provide on-site letting services and caretaking services for the schemes.  On 28 September 2010, CHL and Mirvac entered a written agreement granting an exclusive licence to Mirvac to use the trade marks in connection with its letting agency services.  The agreement acknowledged that Mirvac had used the trade marks with CHL’s consent since 21 December 2004.

11. In 2012, Mirvac’s name was changed to Accor Australia & New Zealand Hospitality Pty Ltd (“Accor”) following a change in the shareholding of the company.  I will generally refer to the company as “Accor”, but sometimes the context will make it preferable to refer to it as “Mirvac”.  Accor is the first applicant.

12. Accor acts as letting agent for a number of owners of lots in the Residential Scheme and the Managed Scheme. It manages a pool of apartments which are let to members of the public as short-term or holiday accommodation.  It operates its letting business as a 4½ star hotel.

13. Lot owners who wish to let their apartments are free to choose Accor or another letting agent or to arrange the letting themselves.  However, only Accor, because of its agreement with each body corporate and the body corporate by-laws, is able to operate on-site. That allows Accor the competitive advantage of being able to offer guests benefits like on-site reception and on-site luggage storage. 

1. Accor advertises and takes booking for the apartments it manages through its own website, travel agents, various hotel and apartment listing websites and telephone directory listings. 

2. The third respondent, Elise Wyandra Bradnam, purchased an apartment (or, more correctly, purchased a lot) in the Managed Scheme in 2005. Ms Bradnam is referred to by her former surname of Warring in some of the evidence, but I shall refer to her throughout these reasons by her current surname.

3. Ms Bradnam obtained registration of the following domain names on the following dates:

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

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

   (c)harbourlightscairns.com – 17 January 2007.

4. 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.  She had earlier established a website which commenced advertising apartments on 31 October 2006 in anticipation of their later availability. When Ms Bradman’s domain names were entered into a web browser they would direct the viewer to the website.  Her business traded principally under the registered business name “Harbour Lights Property Management and Sales”.  

5. 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 competed with that of Accor in respect of short-term letting.

6. In September 2009, Ms Bradnam entered a contract for the sale of her business to the first respondent, Liv Pty Ltd (“Liv”).  The second respondent, Ivana Patalano, is the sole director of Liv and its sole shareholder.  Liv trades under the registered business name “Cairns Luxury Apartments”.  It competes with Accor in respect of short-term letting of accommodation in the Harbour Lights complex.

7. Liv advertises its business on its own website.  Although Ms Bradnam sold her business to Liv, she remains the registrant for the domain names cairnsharbourlights.com.au and harbourlightscairns.com.au.  Ms Patalano is the registrant for harbourlightscairns.com.  Entering those domain names into a web browser directs customers to Liv’s website.  Liv also advertises on a number of external hotel and apartment listing websites.

8. The respondents submit that the complex is generally known as “Harbour Lights” or “Cairns Harbour Lights”.  There are signs attached to the buildings that say “Harbour Lights” and “Cairns Harbour Lights”.  The words “Harbour Lights” are part of the relevant community titles schemes and of each body corporate for those schemes. In their advertising materials for the sale of lots in the community titles schemes, CHL promoted the property as “Harbour Lights” or “Cairns Harbour Lights”.  Ms Bradnam’s uncontested evidence was that lot owners were encouraged by CHL to include “Harbour Lights” as part of their address.  “Harbour Lights” forms part of the ordinary postal address of the occupants of the complex. I accept that the complex is generally known as “Harbour Lights” or “Cairns Harbour Lights” to lot owners and members of the public.

9. The applicants’ case is that the respondents have infringed their trade marks and engaged in misleading or deceptive conduct through the use of the domain names, through the content of their websites, through other advertising and through the use of email addresses and business names.  

10. The applicants seek injunctions restraining Liv and Ms Patalano from infringing their trade marks and from engaging in misleading or deceptive conduct.  The applicants seek an order that Ms Bradnam transfer the domain names to them.  They seek an account of profits in respect of the alleged infringements of their trade marks. During their final address they foreshadowed an application to further amend the originating application to seek declarations (which the respondents indicated they would oppose).

11. In their cross-claim, the respondents seek orders that the Register be rectified by cancellation of the registration of the trade marks or removal or amendment of the entries. 

12. I will not decide what relief I should grant until after I have delivered my reasons concerning the substantive allegations and heard submissions as to the appropriate orders. 

13. As it is convenient to use a number of abbreviations, I will provide a glossary at the end of these reasons.

14. I will consider the cross-claim first, and then consider the applicants’ allegations of infringement of their trade marks and misleading or deceptive conduct.

    THE CROSS-CLAIM: RECTIFICATION OF REGISTER

15. The cross-claimants, Ms Patalano and Ms Bradnam, have applied pursuant to s 88(1) of the Trade Marks Act 1995 (Cth) (“TMA”) for orders that the Register be rectified. Section 88 provides:

    (1)Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:

    (a)cancelling the registration of a trade mark; or

    (b)removing or amending an entry wrongly made or remaining on the Register; or

    (c)entering any condition or limitation affecting the registration of a trade mark that ought to be entered.

    (2)An application may be made on any of the following grounds, and on no other grounds:

    (a)any of the grounds on which the registration of the trade mark could have been opposed under this Act;

    (b)an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation;

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

    (e)if the application is in respect of an entry in the Register—the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation.

16. There no dispute that the cross-claimants have the standing to apply under s 88(1) of the TMA.

17. For the purposes of s 88(2)(a), it is necessary to identify the grounds upon which registration of the trade marks could have been opposed. Part 4 of the TMA (ss 27 – 51A) deals with applications for registration of trade marks. It is Part 4 in its form prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) that is relevant to this case.

18. Section 33(1) provides that the Registrar must, after examination, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act or there are grounds under the Act for rejecting it.  The grounds for rejecting an application are set out in Division 2 of Part 4 (ss 39 – 44).  The grounds on which registration may be opposed are contained in Division 2 of Part 5 (ss 57 – 62A).  Section 57 provides that registration of a trade mark may be opposed on the grounds upon which registration may be rejected.

19. The grounds upon which the cross-claimants seek cancellation of the trade marks or removal or amendment of the entries are as follows:

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

    (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 TMA;

    (c)the trade marks have a connotation that would deceive or cause confusion: s 43 TMA;

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

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

20. I will start my consideration of the cross-claim with the cross-claimants’ argument that CHL is not the owner of the trade marks.

    Section 58 TMA – Ownership of the trade marks

21. One of the grounds for opposition of the registration of a trade mark, and therefore for cancellation or removal or amendment of an entry in the Register, is set out in s 58 of the TMA. That section provides:

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

22. The cross-claimants argue that Ms Bradnam is the owner of the trade marks 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 the trade marks are registered. That first use is alleged to have occurred in October 2006 when her website went “live” and she commenced advertising three apartments in the development for rental or letting.  Ms Bradnam then started renting or letting the apartments in about July 2007 using the business name “Harbour Lights Property Management and Sales”.

23. The cross-respondents, CHL and Accor, dispute that the marks used by Ms Bradnam are substantially identical to the registered trade marks and dispute that she used the marks in relation to the same kind of services as those in respect of which the trade marks are registered. I will call the services in respect of which the trade marks are registered the “Class 36” and “Class 43 services” for convenience.

24. The cross-respondents submit that CHL used the trade marks in relation to each of the Class 36 and Class 43 services as early as 2004, and that Accor did so from 2005.  The cross-claimants dispute that the cross-respondents used substantially identical trade marks prior to October 2006 in relation to all but one of the Class 36 and Class 43 services and dispute that the marks were used as trade marks. 

    The case law concerning ownership of trade marks

25. Section 58 does not define who the owner of a trade mark is, or specify how ownership is to be determined. The principles stem largely from the case law rather than directly from the TMA. However, there is an overlap with the law concerning infringement under the TMA.

26. In Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 Dixon J, speaking of previously unused trade marks, said at 627:

    [I]t is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship.  The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration.

27. Dixon J said at 628 that “Authorship … involves the origination or first adoption of the word or design as and for a trade mark.”

28. Where a person has used a trade mark prior to the application for registration, the person is regarded as the owner of the mark, providing that another person has not made first use of it: Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 at [5] per Kenny J. In Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, Jacobs J said at 602:

    [R]egistration by another of the trade mark prevents the further use of the mark by the person who had been the first to use it. That is not permissible because it bars the true proprietor of the mark in Australia, the person who had first used the mark to distinguish his goods in the course of trade in this country.

29. In Winton Shire Council v Lomas (2002) 119 FCR 416, Spender J noted at [37], by reference to High Court decisions, that “a very small amount of use will suffice”.

30. The person claiming to be the owner of a trade mark may rely on authorised use of the mark by another person: s 8(2) TMA.

31. There is an onus on the party seeking removal of a trade mark from the Register to disprove the registered owner’s claim of first use:  Colorado Group at [8] per Kenny J, [73] per Allsop J, Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [61].

32. Ownership is not established by earlier use of a trade mark unless it is the same as or substantially identical to the trade mark the subject of the application for registration: Colorado Group at [107] – [108] per Allsop J, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [69]. In Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 120 ALR 495, Gummow J, discussing Shell Co of Australia v Rohm & Haas Co said at 513:

    [I]t does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.  The phrase “substantially identical” as it appears in s 62 (which is concerned with infringement) was discussed by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible. There is, as Mr Shanahan points out in his work, p 158, real difficulty in assessing the broader notion of deceptive similarity in the absence of some notional user in Australia of the prior mark (something postulated by s 33) or prior public recognition built up by user: s 28(a).

    In the present case there would, in my view, be no material distinction to be drawn between FUN SHIP and FUNSHIP or between the addition of the definite article or the use of the plural.  However, FUN SHIP is for this purpose a substantially different trade mark to SITMAR’S FUNSHIP and FAIRSTAR THE FUNSHIP.

33. The earlier use of the trade mark must also be in relation to the same services or the same kind of services as those in respect of which the trade mark is registered.  In Colorado Group, Kenny J at [6] said:

    The owner of a mark does not have rights at large in relation to the mark. The effect of the 1995 Act, which, in this regard, is much the same as earlier trade mark legislation, is that a trade mark must be registered in respect of particular goods or services as set out in Sch 1 to the Trade Marks Regulations 1995 (Cth): see regs 3.1 and 4.4 and Sch 1; also the 1995 Act, ss 19 and 27. Ownership by first use is therefore ownership (or proprietorship) in relation to the goods or classes of goods on which the mark has first been used. The owner’s right to registration in this circumstance is not limited to the identical goods or classes of goods but extends to goods or classes of goods “of the same kind”: see Jackson & Company v Napper (1886) 35 Ch D 162 at 178 and Re Hicks’ Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636 at 640.

34. The use must be 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.  In Lomas v Winton Shire Council [2002] FCAFC 413, the Full Court said at [39]:

    However, where there is no actual trade or offer to trade in goods bearing the relevant mark in Australia or any existing intention to offer or supply such goods in trade, but merely preliminary discussions and negotiations about whether the mark would be so used, there is no use so as to constitute ownership of the mark (see Moorgate Tobacco (No 2) at 434).

35. The earlier use must be use of the mark as a trade mark:  Moorgate Tobacco Ltd v Philip Morris Ltd [No 2] (1984) 156 CLR 414 at 432 per Deane J, King Par LLC v Brosnan Golf Pty Ltd (2014) 106 IPR 457 at [180] per Greenwood J. As the issue of use as a trade mark is particularly significant to the disposition of the ownership issue in this case, I will set out the relevant principles in some detail.

36. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd, the High Court at [43] approved the following passage from Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [19]:

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

37. In Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97, the Full Federal Court said at [77]:

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

38. In Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326, Gummow J said at 347-348:

    Where the trade mark allegedly used by the defendant comprises ordinary English words … then … that circumstance may be taken into account by the court in the process of reasoning by which it accepts or rejects a submission that the use in question is not a trade mark use but a description of the goods in question. To say that is not to gainsay the point made by Dixon CJ in Mark Foys Ltd v Davies Coop and Co Ltd (the Tub Happy case) (1956) 95 CLR 190 at 194-195 that language is not always used to convey a single, clear idea; a mark may have a descriptive element but still serve as a badge of trade origin. However, where the issue is one of infringing use by use of a word mark (as in the present case), the fundamental question remains, to paraphrase what was said by Williams J in the same case (supra) (at 205), whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “partly because” (emphasis supplied) they are described by the words in question.

39. In Johnson & Johnson, Lockhart J stated at 336:

    Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor's goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the identity of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff's goods as coming from one trade source.

40. In Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185, Hill J said at [23]:

    Where the sign or mark is an invented word or invented combination of words, it will usually be easy to conclude that use on packaging or on the goods themselves is a trade mark use … Where the word has or a combination of words have a clear meaning in ordinary use, the question will be much more difficult as the word or combination of words may either have taken on a secondary meaning indicating the origin of the goods or may simply convey an ordinary meaning (that is, some message other than the trade origin of the goods): see Top Heavy Pty Ltd v Killin (1996) 34 IPR 282 at 286. It is well established that there is not a true dichotomy between words capable of being used as a badge of trade origin and words that are descriptive: see Johnson & Johnson at FCR 347 per Gummow J and at FCR 339 per Lockhart J.

41. The legal principles concerning the use of a sign as a trade mark were succinctly summarised by Reeves J in Mantra Group Pty Ltd v Tailly Pty Ltd(No 2) (2010) 183 FCR 450 at [50]:

    (a)Use as a trade mark is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods or services and the person who applies the mark to those goods or services.  It has been described as “planting a flag to identify the fact you are in a particular trader’s territory”; 

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

    (c)The latter question is the question that has to be determined at this threshold stage.  The determination of this threshold question only involves an examination of the impugned mark, not the registered trade mark;

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

    (e)This assessment of the purpose and nature of the use of the sign is objective, ie by reference to what a member of the public could be expected to understand by its use;

    (f)The words (of a mark) may be used to describe the goods or services concerned, but still serve as a badge of trade origin.  The question is whether consumers are being invited to purchase the services on the basis that they are to be distinguished from that of other providers of those services partly because they are described by the words used;

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

    (Citations omitted.  Emphasis in original.)

1. 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.

   The services in respect of which the trade marks are registered

2. The trade marks are registered in respect of six types of services in each of Class 36 and Class 43. In Class 36 those services are:

   (a)agency services for the leasing of real estate properties;

   (b)commercial real estate agency services;

   (c)apartment letting agency;

   (d)apartment rental services;

   (e)rental of apartments;

   (f)rental of accommodation.

3. In Class 43 the services are:

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

   (b)accommodation letting agency services (hotel);

   (c)hotel accommodation services;

   (d)accommodation reservation services;

   (e)booking services for accommodation;

   (f)hotel services.

4. The cross-claimants do not dispute, or only faintly dispute, that CHL was the first user of the trade marks in respect of some of the Class 36 and Class 43 services.

5. Ms Bradnam specifically deposed that the services her business provided and marketed were apartment letting services, but not hotel services. She said:

   While I let some apartments in the hotel section (i.e. Harbour Lights Managed Apartments CTS), the actual services that my business provided were strictly apartment letting services; not hotel services. For example, I did not provide onsite baggage storage services, room service, concierge services or other services typically offered by hotel operators. I was aware these services were provided by Mirvac as part of its hotel service. At no time did I ever advertise my business as providing hotel services. The service I provided and marketed was private apartment letting services.

   (Emphasis in original.)

6. Ms Bradnam therefore disclaims first use and ownership of the trade marks in respect of “accommodation letting agency services (hotel)”, “hotel accommodation services” and “hotel services” in Class 43. I accept that CHL is the owner of the trade marks in relation to those services.

7. In addition, there is little or no dispute that CHL was the first user of the trade marks in relation to “commercial real estate agency services” in Class 36 by its use of the trade marks in connection with the sale of lots.

8. Ms Bradnam claims ownership by first use of the trade marks in relation to the remainder of the services. There was little evidence and attention directed to what most of those services entail, but it is a question of some importance.  It is convenient to set out my assessment of those services at this stage in order to avoid repetition later.

9. I consider that, for the purposes of this case, there is no distinction to be made between “apartment letting agency”, “apartment rental services”, “rental of apartments”, “rental of accommodation” and “accommodation letting agency services (holiday apartments)”. The accommodation in the Harbour Lights complex consisted solely of apartments. Although those in the Managed Scheme were smaller and did not have full kitchen facilities, they were sold as “managed apartments”. The Macquarie Dictionary seems to treat “let” and “rent” as synonyms, defining “let out” as “to grant the occupancy or use of (land, buildings, rooms, space, etc., or moveable property) for rent or hire”, while defining “rent”, relevantly, as  “to be leased or let for rent”.  While the word “let” may generally refer to shorter term occupancy than “rent”, there can be short-term rentals. No distinction between these categories of services was suggested by the parties.

10. In providing the services described in the preceding paragraph, it is to be expected that a business would advertise the availability of the accommodation and take bookings or reservations from guests.  That is certainly what Accor and Liv do. I consider that the provision of the services described above will also involve the provision of “accommodation reservation services” and “booking services for accommodation”.  I will refer to these services collectively as “rental and letting services”.

11. I consider that there is some distinction between “agency services for the leasing of real estate properties” and the rental and letting services. The former suggests a formal lease for medium to long-term accommodation. It refers to accommodation leased for a longer period than rental for short-term holidays, business travel and the like.

12. It is convenient to refer to the services other than “commercial real estate agency services” “accommodation letting agency services (hotel)”, “hotel accommodation services” and “hotel services” collectively as “leasing, letting and rental services”.

13. It is also necessary to consider what “accommodation letting agency services (hotel)”, “hotel accommodation services” and “hotel services” involve in order to distinguish those services from the leasing, letting and rental services. Dino Mezzatesta, a senior executive with Accor, expressed the opinion that guests booking a hotel room would expect, unless expressly notified otherwise, the following:

    (a)the ability to check-in and check-out at a reception on-site;

    (b)supply of a furnished room with linen and towels;

    (c)a daily room clean or tidy, with the making of the bed and replacement of towels each day;

    (d)the ability to call someone who is in the hotel on a 24 hour basis, so that if there is an issue or problem, that person would come promptly to the guest room;

    (e)an on-site person monitoring the security and safety of the hotel on a 24 hour basis, for example, in relation to smoke and fire issues, and to monitor the behaviour of other guests;

    (f)the ability to get extra keys, toiletries and towels, if needed, from a person on-site;

    (g)room service, or at least the ability to have breakfast delivered to the room;

    (h)on-site luggage storage;

    (i)the ability to collect mail, packages and messages at the front desk.

14. These are services that Accor provides in its hotel business at the Harbour Lights complex.  The quality of the hotel is described as 4½ stars and my impression is that the features that Mr Mezzatesta described are those that a guest would expect at a hotel of that quality. 

15. David Catterall, a provider of management services for hotels and resorts who gave expert evidence, indicated that “hotel” does not have a fixed meaning in the industry. He indicated, however, that the characteristics that people commonly use to define a modern hotel include:

    (a)24 hour reception;

    (b)tour desk;

    (c)concierge;

    (d)daily housekeeping service;

    (e)mini-bar;

    (f)room service;

    (g)extra facilities and services.

16. Again, these are services that guests would expect at a high quality hotel. Some hotels are “dives” and would not provide all these services, but they are nevertheless hotels. 

17. In my opinion, 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 services described as “accommodation letting agency services (hotel)”, “hotel accommodation services” and “hotel services” have corresponding meanings. I add that it may be possible for an accommodation facility that does not have on-site reception and check-in to still be regarded as a hotel if it has some of the other features of a hotel indicated above.

18. It is convenient to refer to “accommodation letting agency services (hotel)”, “hotel accommodation services” and “hotel services” collectively as “the hotel services”.

    First use by CHL and Accor

19. I will consider when CHL and Accor first used the trade marks. Then I will consider Ms Bradnam’s claim to have used the trade marks first.

20. The name “Harbour Lights” was created by George Chapman, a director and shareholder of CHL, for the proposed development in December 2003.  CHL was originally named Citiport Developments Pty Ltd, but changed its name to Cairns Harbour Lights Pty Ltd on 22 December 2003. 

21. Mr Kenneth Chapman, a director of CHL, deposed that:

    The intention of CHL was that the Managed Scheme would operate as a hotel.  The lots were generally smaller than residential lots and were sold by CHL fully furnished.  The Residential Scheme had larger apartments, which were two and three bedroom apartments, and these apartments were designed for owner-occupiers and longer term tenants. 

22. CHL sold the caretaking and letting rights for both the Managed Scheme and Residential Scheme to Mirvac (now Accor) on 21 December 2004.  Mirvac operated a chain of hotels in Australia known as “Sebel”. Mirvac used the name “The Sebel Harbour Lights” to describe both its letting business and the Harbour Lights complex until early 2009.  After that, Mirvac used the name “Cairns Harbour Lights”. 

23. A wholly owned subsidiary of CHL started providing a service involving long-term rentals of apartments in the Managed Scheme and the Residential Scheme in late 2008 after obtaining a real estate agent’s licence.

24. The cross-respondents give fifteen “Examples of the early use of the Trade Marks” which are said to demonstrate their use of the trade marks in relation to hotel services, accommodation reservation services, apartment rental services, accommodation letting services and services relating to the rental of accommodation prior to October 2006.  The cross-respondents also appear to rely on CHL’s use of its domain names and its website.

    CHL’s use of domain names and website

25. On 28 January 2004, the following domain names were registered:

    (a)harbourlights.com.au; and

    (b)cairnsharbourlights.com. 

26. Although Skyrail Pty Ltd and “Brightfox” were the registrants, CHL used the domain names to resolve to its website. In other words, when the domain names were typed into a web browser, the viewer was taken to CHL’s website.  In early 2004 CHL’s website went “live”. From early 2005, CHL also used the domain name cairnsharbourlights.com.au, but the registration of that domain name lapsed, and the name was subsequently registered by Ms Bradnam. Mr Chapman’s evidence was that the website was “branded as ‘Harbour Lights’ since its first launch”.

27. I will consider whether the use of the domain names to resolve to CHL’s website and the content of the website itself amounts to trade mark use in relation to the Class 36 and Class 43 services.

28. In Mantra Group v Tailly, Reeves J said at [50]:

    [I]f the registered domain name is linked to a website that contains advertising material that promotes goods or services in relation to which the trade mark is registered, this combination of use could constitute use as a trade mark under s 120 of the Trade Marks Act.

29. In Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd (2012) 98 IPR 1, Reeves J was concerned with a case in which the respondent had registered domain names that incorporated or were similar to the applicant’s registered trade marks and linked those domain names to a website which advertised the respondent’s goods and services. His Honour held at [24]:

    I consider this is trade mark use of those signs or words.  That is so because this use of a domain name to redirect potential customers to a website displaying one’s goods and services is analogous to using those words as a sign on the front of a shop to indicate the goods and services that are sold within.

30. When deciding whether domain names are substantially identical to the trade marks, the prefix “www” and the suffix “.com” or “.com.au” do not substantially affect the identity of the trade mark:  The Architects (Australia) Pty Ltd v Witty Consultants Pty Ltd [2002] QSC 139 at [21] per Chesterman J, Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 at [155] per Kenny J.

31. Mr Chapman deposed that CHL “operated a website to promote sales of apartments”.  That is consistent with other aspects of his evidence demonstrating that CHL used the names “Harbour Lights” and “Cairns Harbour Lights” as trade marks in respect of sales of lots in the development from 2004.  For example, CHL engaged real estate agents who were provided with business cards that contained the words “Harbour Lights”.  The agents each had an email address in the form “[email protected]”. 

32. Mr Chapman said later in his affidavit that the website was used by CHL both to sell apartments and to “encourage potential owners to use the services of the onsite letting agent”. He explained under cross-examination that it was in CHL’s interests to encourage apartment owners to use Mirvac’s services.

33. Mr Chapman’s evidence did not explain how the website was used to encourage potential owners to use Mirvac’s letting agency services or indicate the words that were used to do so. His evidence was somewhat evasive through omission in that respect. While Mr Chapman annexed a document showing the current home page of the CHL website, he produced no version demonstrating encouragement of the use of Mirvac’s services. In contrast, Ms Bradnam was able to produce screen shots taken from CHL’s website on 16 July 2007, 19 July 2008 and 11 September 2009. Those screen shots refer only to sales of apartments, not to letting of them. In these circumstances, I do not accept Mr Chapman’s assertion that the website was used to encourage potential owners to use Mirvac’s letting agency services.

34. Even if Mr Chapman’s evidence is accepted, it does not go far enough to support a conclusion that the words “Harbour Lights” were used on the website as a trade mark in relation to Mirvac’s letting agency services. His evidence does not indicate that those words were used as a badge of origin, rather than, for example, merely as descriptive of the complex. I cannot reach such a conclusion from the vague evidence that the website was “branded as ‘Harbour Lights’” and was used to encourage potential owners to use Mirvac’s letting services.  The use of CHL’s domain names to resolve to the website, therefore, is not trade mark use in relation to letting services.

35. An additional problem is that there is no evidence of precisely when the website encouraged owners to use Mirvac’s services. Mr Chapman’s oral evidence was merely that it occurred “at different stages” prior to the completion of the building. The problem lies in comparing the timing of CHL’s claim of first use of the trade marks with Ms Bradnam’s claim that her first use was in October 2006.

36. I find that CHL’s website advertised or promoted sales of apartments, but not leasing, rental or letting of apartments or hotel services. The use of the domain names to resolve to CHL’s website was not use in connection with the Class 36 and Class 43 services, other than “commercial real estate agency services”.

37. Some of the documents containing the cross-respondents’ fifteen examples of early use, which I will discuss below, refer to CHL’s domain names. To avoid repetition, I will indicate that my conclusion applies equally to those uses of CHL’s domain names. That is, the use of CHL’s domain names to resolve to its website was not trade mark use in connection with the Class 36 and Class 43 services, other than “commercial real estate agency services”.

    Media release 30 June 2004

38. The first of the cross-respondents’ fifteen examples is a media release dated 30 June 2004.  It is quite lengthy and I do not propose to set out its contents in full.  The cross-respondents submit that the use of the terms “managed apartments”, “guests” and “investors” demonstrates preparatory use in relation to apartment letting agency and accommodation letting agency services.

39. It must be borne in mind that the use must be use as a trade mark and that it is necessary to consider that issue in accordance with the understanding of an ordinary person. To avoid repetition, I will indicate that is the way I will approach my consideration of the issue of use as a trade mark throughout these reasons.

40. The media release was presumably sent to members of the media. There is no reason to suppose that such persons would have a different understanding of the Harbour Lights development and the content of the media release to ordinary members of the public. An ordinary person may be taken to have had no knowledge of the Harbour Lights development prior to reading the media release.

41. The media release aimed to promote sales of apartments in the development. It set out the range of sale prices for “residential apartments” and “managed apartments”. It stated that “Harbour Lights” has “101 residential and 92 managed apartments”.  The media release also stated that the “Harbour Lights Display and Sales Office” can be contacted at [email protected].

42. I accept that the reference to “Harbour Lights Display and Sales Office” was use as a trade mark of a mark substantially identical to “Harbour Lights” in relation to “commercial real estate agency services”, although not in relation to any of the other Class 36 or Class 43 services.

43. The email address [email protected] is substantially identical to “HARBOUR LIGHTS”, ignoring the “.com.au” and “info@”, but it was used as a trade mark only in connection with sales. That is evident from the press release being directed to sales, the absence of any reference to letting services in the press release and the stated use of the email address which was to contact the “Harbour Lights Display and Sales Office”.

44. In my opinion, the references to “managed apartments” were to the sale of apartments in the Managed Scheme. They were not references to any service involving the leasing, rental and letting of apartments or the hotel services.

45. Even if it is assumed that “managed apartments” also referred to management of the apartments, in the sense of managing their leasing, rental or letting, that does not assist the cross-respondents. The words “Harbour Lights” and “Cairns Harbour Lights” were not used as trade marks, whether wholly or in part. The media release used “Cairns Harbour Lights” to describe the name of the 12 story, 193 apartment development. It also used “Harbour Lights” as the name of the development. It said, “Harbour Lights is one of the most exciting property developments in Australia today” and “Harbour Lights is in the best location in Cairns ever”. None of the uses of “Harbour lights” and “Cairns Harbour Lights” were to show a connection between the user of the mark and any leasing, rental and letting services.

46. The cross-respondents rely on the reference to “guests” in the phrase “Harbour Lights is positioned to provide residents and guests alike with unparalleled views” to demonstrate that “Harbour Lights” was preparatory use in relation to apartment and accommodation letting services. The cross-respondents also rely on references to “investor response” and “investors…needing to get in quick”. However, these references would suggest to an ordinary reader no more than that some purchasers may want to lease, rent or let their apartments and that guests would find the apartments attractive. They do not indicate that any leasing, rental or letting service was being offered, let alone that there was a connection between the user of “Harbour Lights” and such a service.

    Advertisement in The Financial Review 28 October 2004

1. The cross-respondents rely on an advertisement placed by CHL in The Financial Review on 28 October 2004.  The advertisement had the heading “Australia’s best waterfront location now available in Cairns”.

2. The advertisement referred to “managed” and “residential” apartments.  Again, the advertisement was for the sale of apartments in the Managed Scheme, not for the letting of apartments. The reference to “investment opportunity” would be understood to mean no more than that buying an apartment was a good investment.

3. Even if the use of “managed apartments” were taken to be a reference to letting services, “Cairns Harbour Lights” was not used as a trade mark because those words would be understood as used only to describe the name of the development. The advertisement stated that “Cairns Harbour Lights is a once in a lifetime investment opportunity”. It also stated that “Cairns Harbour Lights boasts 95 metres of absolute water frontage”. That was not use as a trade mark because it was used as the name of the property, and not used to show a connection between the user of the mark and any letting service.

4. In the advertisement, the words “HARBOUR LIGHTS” appeared below the heading. Immediately above the words “HARBOUR LIGHTS” appeared an image of five gold-coloured stars in a horizontal line and immediately below appeared some words that are indecipherable in the copy of the advertisement in evidence.  There are a number of other advertisements in evidence which contain a mark that looks similar. I infer from these other advertisements that the indecipherable words are “A New Star Shines”.

5. The cross-respondents submit that “HARBOUR LIGHTS” was used as a trade mark in its own right. The cross-claimants submit that the words “HARBOUR LIGHTS”, the device and the words “A New Star Shines” were used as a composite trade mark.

6. In E & J Gallo, the registered trade mark consisted of the word BAREFOOT.  The High Court considered whether the word “Barefoot” in combination with a device of a drawing of a bare foot was substantially identical. The High Court said at [69]:

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

7. The High Court contrasted the outcome in Colorado Group, saying at [68]:

   The registered trade mark in that case was for the word “Colorado”, which, by reason of its geographical significance, was not inherently adapted to distinguish the owner’s goods from the goods of other persons as required by s 41(3) of the Trade Marks Act. As noted by Gyles J, it was difficult to obtain registration of a geographical name as a trade mark under the Trade Marks Act 1955 (Cth) by reason of s 24(1)(d) of that Act. The trade mark for the word “Colorado” had been used in conjunction with a mountain peak device, which reinforced the geographical connotation of the word. Allsop J found that the mark used was a composite mark and that the mountain peak device was not a mere descriptor but a distinguishing feature.

8. 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.

9. As a general rule, an owner of a composite mark is not the owner for trade mark purposes of the marks comprising each separate component of it: Re JB Palmer’s Trade Mark (1883) 24 Ch D 504, Richards v Butcher [1891] 2 Ch 522, Colorado Group at [7] per Kenny J. The question is whether the composite mark used is substantially identical to “Harbour Lights” or “Cairns Harbour Lights”.

10. In The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 (“Shell Company”), Windeyer J discussed at 414 how it is to be judged whether one mark is substantially identical to another (Windeyer J’s judgment was reversed by the Full Court, but not on this point):

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

11. 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.

12. Even if the mark used in the advertisement is considered substantially identical to the registered trade marks, it was not used in relation to any of the Class 36 and Class 43 services, other than “commercial real estate agency services”.

    Press release 20 November 2004

13. The cross-respondents rely on a press release issued by CHL which was published in the Weekend Post Realtor.  The article was entitled “A New Star Shines”. It referred to “Harbour Lights” a number of times, but always as the name of the development.

14. The article dealt with the sales of lots, not the letting of the apartments.  The use of “managed apartments” was a reference to the sale of apartments in the Managed Scheme. It did not use “Harbour Lights” in relation to services other than “commercial real estate agency services”.

15. I consider that “Harbour Lights” is substantially identical to “Cairns Harbour Lights” because “Cairns” is a geographical reference and is not distinctive in its own right. Therefore, this was use of a sign substantially identical to CAIRNS HARBOUR LIGHTS in relation to “commercial real estate agency services”.  It was not used in relation to the leasing, rental and letting services and hotel services.

16. “Harbour Lights” was not used as a trade mark as it did not indicate a connection between the user and any services.

    Advertisement 16 April 2005

17. On 16 April 2005, CHL placed an advertisement in The Sydney Morning Herald.  It stated:

    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!

18. 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”.

19. The issue is whether “Harbour Lights” was used as a trade mark in relation to the management services to be provided by Mirvac. 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 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 the 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.

20. The advertisement also used the composite mark consisting of the words “Harbour Lights” and “A New Star Shines” and the image of five stars, but, for the reasons already given, it was not substantially identical to either of the registered trade marks in dispute.

    Brochure May 2005

21. The cross-respondents next rely on a brochure described as a “Hotel Fact Sheet” created by Mirvac in May 2005 entitled “Splendour by the sea…the facts”.  The brochure referred to “The Sebel Harbour Lights”, but did not use the words “Harbour Lights” by themselves.  It set out features of the development including its location, accommodation, guest services and nearby attractions.  By the use of headings such as “Guestroom layouts”, “Guest services” and “Guestroom features and facilities”, the brochure promoted the rental and letting services and hotel services offered by Mirvac. 

22. 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”.

23. The cross-claimants submit that the trade mark used by Mirvac was “The Sebel Harbour Lights”.  The cross-respondents submit that they used “The Sebel” and “Harbour Lights” as separate trade marks.  The cross-respondents advance their submission by reference to the evidence of Mr Mezzatesta, who deposed that:

    [T]he Cairns Harbour Lights hotel was initially branded using two brands, namely “Sebel” and “Harbour Lights”.  Thus, on opening, it had a dual brand of “Sebel Harbour Lights”. 

    …

    This dual branding strategy changed in 2009 for the Sebel Harbour Lights property and Accor thereafter branded it as “Cairns Harbour Lights”.

24. The cross-respondents submit that there are a number of factors that support the conclusion that “Harbour Lights” was used as a trade mark separately from “The Sebel”.  They note that “Sebel” is a registered trade mark in its own right as, of course, is “Harbour Lights”.  They point out that the initial advertising by CHL was for “Harbour Lights” and “Cairns Harbour Lights”, without “The Sebel”.  In some advertising, “The Sebel” was used on a different line to “Harbour Lights”.  The Sebel is a well known hotel chain with its own history and reputation, and was promoted separately in relation to other properties.  The “Harbour Lights” sub-brand focussed on a specific market segment, namely, consumers looking for accommodation near Cairns Harbour, and thus had its own attributes over and above that of the Sebel brand.  The Sebel brand was owned by a different entity to the “Harbour Lights” brand.  It would have been irrational for Mirvac to remove “The Sebel” from the branding of the hotel in 2009 if “Harbour Lights” was not a trade mark in its own right (although I note that from 2009 the property was branded as “Cairns Harbour Lights”).  The cross-respondents submit that “Harbour Lights” functions as a trade mark independently of the “Sebel” trade mark and, thus, use of “The Sebel Harbour Lights” is evidence of use of both “The Sebel” and “Harbour Lights”. 

25. 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 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 cross-respondents on brands tends to distract from the real issue, which is whether “Harbour Lights” was used as a trade mark in the brochure:  cf Unilever Aust Ltd v Karounos (2001) 113 FCR 322 at [53] per Hill J.

26. The cross-respondents’ submissions invite attention to Mirvac’s intention and purpose in using “The Sebel Harbour Lights”.  The effect of Mr Mezzatesta’s evidence is that Mirvac considered that it was using “The Sebel” and “Harbour Lights” as separate trade marks.  The cross-respondents’ submissions suggest that the test must be a subjective one or involve subjective elements.  They do not point to any authorities supporting that approach. 

27. The question under consideration is whether Accor used “Harbour Lights” as a trade mark in the brochure.  That involves an objective test.  The issue of precisely what words or combination of words were used as a trade mark is a slightly different question, but there is support for the proposition that this also involves an objective test. 

28. In Richards v Butcher, Kay J at first instance said at 536-537:

    Now, how can I possibly say that the purchaser of a bottle with this wrapper on it, “Monopole, Heidsieck & Co, Reims,” would know that “Monopole” was the trade-mark and “Heidsieck & Co., Reims,” was not? How can I say that? I should not know myself. If I were asked I should suppose that “Monopole” was a description of a special wine made by these gentlemen, and that “Monopole” was never intended to be a trade-mark; and I should be strongly fortified in that view by knowing, as I do know now, that on some other wines they put, not “Monopole,” but “Dry Monopole.” Surely that meant some particular character of wine. Then on some others they put, “Grand Vin Royal” and “Sillery Mousseux.” Therefore, it is clear enough that a purchaser buying a bottle of wine with that wrapper upon it would not know from that wrapper that “Monopole” was alone used there as the trade-mark. That is conclusive, because it is what the purchaser would know - not what the seller meant in his own mind – it is what the purchaser would know and judge was used as the trade-mark which must establish the user as a trade-mark of the word “Monopole” only.

29. The Court of Appeal dismissed an appeal from the judgment of Kay J and their Lordships’ judgments are consistent with the test being an objective one.  The judgment of Kay J was cited with approval by Lord MacMillan in Bass, Ratcliff and Gretton Limited v Nicholson and Sons Limited [1932] AC 130 at 156.

30. 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.  While Mr Mezzatesta’s evidence may have some relevance to how an ordinary person would understand the use of the words, that evidence is not persuasive.  In my opinion, Accor must be taken to have used “The Sebel Harbour Lights” as a trade mark, not “Harbour Lights”.

31. The next question is whether “The Sebel Harbour Lights” is substantially identical to “Harbour Lights” and “Cairns Harbour Lights”.  For marks to be substantially identical there must be a total impression of similarity emerging on a comparison of the two marks (see [110]). 

32. 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. I am assisted in this conclusion by the analysis of Gummow J in Carnival Cruise Lines at 513.

    Magazine Article 29 June 2005

33. The next publication relied upon by the cross-respondents is an article appearing in Traveltrade entitled “Cairns limelight for Mirvac”.  The article referred to “the Sebel Harbour Lights”.  Again, I consider that an ordinary reader would understand this mark to be used as a single mark. It is substantially different to “Harbour Lights” and “Cairns Harbour Lights”. 

    Advertisement October 2005

34. Mirvac caused an advertisement for “Sebel Harbour Lights Cairns” to be published in a brochure entitled Sunlover Far North Queensland printed in October 2005.  Again, the mark used would be understood as a single mark, and it is not substantially identical to the registered trade marks. 

    Press release December 2005

35. There are the same difficulties with a press-release issued by Mirvac in December 2005 which referred to “The Sebel Harbour Lights” and “The Sebel Harbour Lights Cairns”. 

    Article 17 December 2005

36. An article was published in the Cairns Weekend Post Realtor entitled “lighting up cairns” on 17 December 2005.  It appears that CHL paid for the article to be published.

37. The article said, relevantly:

    With 95 m of absolute water frontage, Harbour Lights allows the chance to turn that vision into reality. 

    …

    Nestled on the Cairns foreshore between the Hilton Hotel and Reef Fleet Terminal, Harbour Lights Apartments provide spectacular views of the Coral Sea, Cairns marina, Esplanade Lagoon, inner city Cairns and the surrounding rainforest clad mountains.

    …

    The property is divided into 101 residential and 92 managed apartments.  The managed operator is Mirvac Hotels and Resort, which will operate Sebel Harbour Lights to cater to the tastes of the most discerning guest.

    …

    In early 2006, an on-site display apartment will open allowing you to imagine life at Harbour Lights for yourself or how good an investment it will be. 

38. I accept that by the use of the term “managed operator” and the words that follow, “Sebel Harbour Lights” was used as a trade mark in relation to rental and letting services and hotel services.  The difficulty is that “Sebel Harbour Lights” was used as a single mark and is not substantially identical to “Harbour Lights”.

39. The references in the article to “Harbour Lights” are to the name of the development and do not amount to use as a trade mark.

    Advertisement 17 December 2005

40. The cross-respondents rely on an advertisement in Weekend Post Realtor on 17 December 2005.  It had the heading “Three year fixed rent lease option now available”.

41. The advertisement contained the composite mark consisting of the words “Harbour Lights” with the device consisting of five stars and the words “A New Star Shines”.

42. The advertisement stated “The Sebel Harbour Lights Cairns is the star performer in luxurious waterfront managed apartment investments”. That statement was followed by other statements including “3 Year Fixed Rent Leaseback Option now available”. 

43. 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. 

1. Later on the page there is a heading “Key Facts” with a subheading “Hotel Size”.  Under this subheading appear entries saying “This hotel has 30 rooms” and “This hotel is arranged over 12 floors”.  There is a heading “In the hotel”.  Under that heading are subheadings including “Services”, which include “Front Desk (Limited Hours)”.  There are other references to the property being a hotel, such as a link “Hotel Description” and “Guest Reviews” referring to the “Hotel”. 

2. These are representations that the accommodation being offered is hotel accommodation, particularly in the context that the operator of the website is called Hotels.com.  While the accommodation is earlier described consisting of apartments and there is an indication that there is no on-site reception or check-in available, those factors do not overcome the representations that the accommodation is hotel accommodation.  In my opinion, a not insignificant number of persons in the class would understand the entry to represent that the guest is booking a hotel room and is booking a room with an on-site accommodation manager.  These representations are untrue and the listing is misleading or deceptive.

3. I find that Liv’s conduct in placing the listing on the Expedia.com.au website when that information is then placed on the Hotels.com website and in failing to have the Hotels.com entry removed (for example, by removing the Expedia.com.au entry) contravenes s 18(1) of the ACL.

   Agoda.com

4. The applicants next complain about the listing on the website Agoda.com.  That listing is headed “Cairns Luxury Apartments – Harbourlights Complex”.  While referring to the rooms that are available as “apartments”, it also contains a number of references to a “hotel” in the listing.  For example there are reference to “Hotel Area”, “Show Hotel on Map”, guest references referring to the “Harbour Lights hotel” and the heading “Hotel Features” and “Hotel Policies”. 

5. In a block of text under the heading “Hotel Description” appear the words:

   Cairns Luxury Apartments – Harbourlights Complex is a 5 star hotel located on the Water Front of the Cairns Marlin Marina in the Harbour Lights complex. … Guests can check in at the check in lounge which is located in the Visitor Information Centre, with only 20 meters across the road from the Harbour Lights complex. 

6. Later, at the bottom of the last page of the website, under the heading “Important Notice”, appear the words:

   Please note that to check in, please proceed to our office, located in the Visitor Information Centre, located just 20 meters across the road from the Harbour Lights Complex crn of Marlin Parade & Esplanade – Keys cannot be collected from the on-site reception desk.  Any changes or questions, please contact our office direct – changes cannot be made with the on-site reception.  Our office is Opened between 8am – 9pm.  Urgent:  please call if arriving after hours – to arrange a representative to meet you.

7. The listing on the Agoda.com website expressly and repeatedly represents that the accommodation being offered consists of hotel rooms.  The effect of those representations is not overcome by the indications that there is no on-site reception or check-in.  While, I accept that, generally speaking, the minimum features of a hotel are on-site reception and check in, the listing seems to represent that this is a hotel with features of a hotel apart from on-site reception and check-in. I find that Liv represents that the potential guests are booking a hotel room.  I do not accept that Liv represents that the guest is booking a room with an on-site accommodation manager in view of its indication that the reception is off-site.

8. I find that Liv’s conduct in causing its listing in this form to be placed on the Agoda.com website is misleading or deceptive in contravention of s 18(1) of the ACL.

   Booking.com

9. The applicants’ next complaint is about Liv’s listing on the Booking.com website.  The website has a search facility on the same page as Liv’s listing headed “Search Hotels”.  Liv’s listing states:

   Cairns Luxury Apartments offer studio as well as 1, 2 and 3-bedroom apartments that are fully self-contained and offer panoramic views of the sea.

10. There are repeated references to the rooms as “apartments”.  There are no express references to hotel rooms.  Under the heading “Important Information” appears the following:

    Please note that these apartments are privately managed apartments, which are located in the same complex as the resort known as Cairns Harbor Lights.  Please note they are not part of the managed hotel and resort, and do not have access to the services provided by the managed hotel, such as on-site reception desk, luggage storage and concierge service. 

    Please note that reception opening hours are 08:00 to 21:00.  If you expect to arrive outside reception opening hours, please contact Cairns Luxury Apartments in advance, using the contact details found on the booking confirmation. 

    Please note that the check-in desk is located at the Visitor Information Centre, which is located directly opposite the Cairns Harbour Lights complex.  Guests are welcome to contact the property in advance for further details, using the contact details found on the booking confirmation. 

    Please note that housekeeping service is only offered on the third day of stays longer than 5 nights or more.  You can request daily housekeeping service at an extra charge. 

11. The presence of the facility on the website to search for hotel rooms may suggest that Cairns Luxury Apartments’ listing on the Booking.com website is for hotel rooms. The descriptions of the accommodation as apartments and the as express statements in the disclaimer that the apartments are not part of the hotel and that there is no on-site reception or check-in indicate the contrary.  Liv’s listing itself contains no suggestion that the rooms are hotel rooms.  In these circumstances, I do not think that Liv’s entry on the Booking.com website would be understood by ordinary consumers as representing that potential guests are booking a hotel room or booking a room with an on-site accommodation manager.

    Hotwire.com

12. The next listing is with Hotwire.com.  The search results bring up the words “Your Hotel Details for…” followed by the dates that were entered when making the search.  Under “Facilities” listed are “Express check-in” and “Front desk (limited hours)”.  There is no explicit indication that the rooms are not hotel rooms, nor is there any indication that there is no on-site check-in. 

13. In my opinion, a not insignificant number of consumers in the relevant class would understand the listing on Hotwire.com to represent that Cairns Luxury Apartments is offering guests hotel rooms with an on-site accommodation manager.  Those representations are not true.

14. However, Ms Patalano’s evidence was that she had never heard of Hotwire.com and had not had any contact with the operator of that website. Ms Thomas also gave evidence that she had never had contact with the operator. I accept that evidence. There is no evidence as to how Liv’s services came to be listed on Hotwire.com. It is enough that I find that Liv has not caused the listing to be made on Hotwire.com. It has not engaged in the conduct alleged by the applicants.

    Expedia .com.au

15. Liv’s listing on the Expedia.com.au website is reached by clicking on an entry that appears under “Hotels in Cairns and the Northern Beaches”. The listing contains a subheading “Hotel Amenities”, which is followed by a disclaimer stating that guests are not able to check in at the on-site reception desk and that the check-in lounge is located off site. There are other references to the property being a “hotel” under “Payment Types” and “Policies”.

16. The repeated references to “hotel” represent that the apartments are part of a hotel.  The effect of those representations is not overcome by the indication that there is no on-site reception desk or check-in.  In my opinion, a not insignificant number of consumers in the class would understand the entry to represent that the guest is booking a hotel room.  The representation is untrue. I do not accept that there is a representation that the guest is booking a room with an on-site accommodation manager. 

17. I find that Liv’s conduct in causing the listing to be made on the Expedia.com.au website is misleading or deceptive in contravention of s 18(1) of the ACL.

    Orbitz.com

18. Liv’s listing on Orbitz.com is almost identical to the listing on HotelClub.com. There are two references on the Orbitz.com website to “the hotel”. These indicate that the guest is booking a hotel room. They also indicate that the guest is booking a room with an on-site reception, or an on-site accommodation manager, available for part of the day.

19. I find that Liv’s conduct in causing the listing in this form to be made on the Orbitz.com website is misleading or deceptive in contravention of s 18(1) of the ACL.

    Tripadvisor.com

20. It is not clear whether the applicants rely upon a listing on Tripadvisor.com.  In any event, the printout of the listing in evidence is indecipherable. I also accept that the listing on Tripadvisor.com is not generated or contributed to by Liv.

    The ninth alleged misrepresentation

21. The applicants allege that Liv represents that Cairns Luxury Apartments provides five star hotel services or the benefit of five star hotel services.  The conduct relied upon is:

    (a)Using in an OTA listing the words “Cairns Luxury Apartments – Harbourlights Complex is a 5 star hotel…”

    (b)Advertising as providing “Five Star” accommodation services on a number of OTA websites, where the other listings of the OTA websites are for hotels.

    (c)Not disclosing to potential guests that the five star rating obtained by the Respondents is for an apartment, not a hotel.

22. Liv’s advertisements on the HotelClub.com, Hotels.com, Agoda.com, Orbitz.com, Expedia.com.au, Booking.com and Hotwire.com websites each depict five stars next to “Cairns Luxury Apartments” in the title for the webpage.  The applicants do not dispute that the apartments let by Liv have earned a 5 star rating from AAA Tourism.  That rating is in relation to self-catering apartments.  The applicants’ complaint is that it is misleading or deceptive to place a 5 star rating on an OTA listing which advertises hotel services. The applicants also complain that Liv advertises “studio rooms” which are not self-catering and in relation to which they do not have a 5 star rating. 

23. I have already ruled that Liv’s listing on each of the OTA websites set out above, other than Booking.com, is misleading or deceptive because it represents that a guest will be booking a hotel room.  I consider that the depiction of 5 stars in the heading for such listings is a representation that the booking is for a room in a 5 star hotel.  While Liv has a 5 star rating in respect of its self-catering apartments, it has no 5 star hotel rating.  I accept that by the use of the 5 stars, Liv represents that Cairns Luxury Apartments provides at least some 5 star hotel services or the benefits of 5 star hotel services or provides the benefit of at least some 5 star hotel services. Such representations are untrue.

24. I have found that Liv has not created or contributed to the listing on Hotwire.com.

25. Liv’s conduct in including the depiction of 5 stars is misleading or deceptive in its listings on the OTA websites, other than Booking.com and Hotwire.com, is misleading or deceptive. I consider that Liv’s conduct contravenes s 18(1) of the ACL.

    The tenth alleged misrepresentation

26. The applicants allege that Liv represents that guests of Cairns Luxury Apartments can check-in on-site and/or that they can check-in at 1 Marlin Parade, Cairns.  This representation is said to be made by the following conduct:

    (a)       Using the address “1 Marlin Parade” in the address field for OTA listings.

    (b)      Listing on OTA websites where the other listings are all for onsite operators.

    (c)Not disclosing to potential guests that the guest is unable to check-in or check-out onsite.

    (d)Using the address of “1 Marlin Parade” in a White Pages telephone listing.

    (e)Including a “disclaimer” on the Cairns Luxury Apartments website that falsely states “on-site reception desk” is “available”.

27. It is the case that each of the listings on the OTA websites gives an address of 1 Marlin Parade, Cairns.  It is unclear from the listings whether the address that is given is the address of the accommodation offered by Cairns Luxury Apartments, or the address for the office of Cairns Luxury Apartments.  The use of that address may cause confusion.  However, each of the OTA websites expressly indicate that guests must check-in off-site.  While the disclaimer on the Cairns Luxury Apartments’ website does incorrectly indicate that on-site reception is available, I have already indicated that this representation is ameliorated by the sentences that precede it.  While the applicants assert that the other listings on the OTA websites are all for on-site operators, I do not think this has been established, and, in any event, I do not accept that ordinary viewers would understand the listings to all be for on-site operators. 

28. In these circumstances while I accept that there may be some confusion as to whether guests can check-in at 1 Marlin Parade, Cairns, I do not think that such confusion amounts to a representation that is misleading or deceptive.

29. I find that the applicants have not established the tenth alleged misrepresentation.

    The eleventh alleged misrepresentation

30. The applicants allege that the respondents represent to users of the OTA websites that there is an accommodation property in Cairns called “Cairns Luxury Apartments”.  This representation is said to arise from:

    (a)Using the term “Cairns Luxury Apartments” or similar in the property name section for an OTA listing.

    (b)Using in an OTA listing the words “Cairns Luxury Apartments – Harbourlights Complex is a 5 star hotel…”

31. It is not apparent that there is a “property name section” for an OTA listing.  The listings on OTA websites in evidence show that the listing commonly gives the name of the hotel or apartment, but that is not always the case.  For example, on the Expedia.com.au website, there is a listing for “Cairns and Northern Beaches Hotels up to 40% off”. 

32. In the second aspect of conduct relied upon by the applicants, the words “Cairns Luxury Apartments – Harbourlights Complex is a 5 star hotel” on the Agoda.com website represent that “Cairns Luxury Apartments” is the name of a hotel or part of the name of a hotel.

33. I consider that this representation is misleading or deceptive conduct in the manner alleged by the applicants.  I note, however, that I have already found that the same words form part of the conduct relevant to misrepresentation that potential guests are booking a hotel room.

    The twelfth alleged misrepresentation

34. The applicants allege that Liv represents to users of OTA websites that its listing for “Cairns Luxury Apartments” is a listing by an operator of a property of that name. 

35. I reject the applicants’ allegation for the same reasons as the previous alleged misrepresentation.

    The thirteenth alleged misrepresentation

36. The applicants allege that Ms Patalano represents that she is associated with, is the agent of, or has the sponsorship or approval of, the entity called “Cairns Harbour Lights Pty Ltd”.  This representation is said to be made by her conduct in:

    (a)       Registering and owning the domain name harbourlightscairns.com.

    (b)Allowing the domain name harbourlightscairns.com to resolve to the Cairns Luxury Apartments website located at >

    As to the first aspect of the conduct alleged, the applicants do not specify who the representation is alleged to be made to and how it is communicated. I can only speculate upon what type of people are members of the relevant class and what characteristics are to be attributed to them.

37. Liv is entitled to register, own and use the domain name harbourlightscairns.com.  The domain name harbourlightscairns.com is registered in Ms Patalano’s name.  It is not clear what role Ms Patalano, as the registrant, has in the use of the domain name, or in what capacity she is the registrant.

38. Even accepting that Ms Patalano allows the domain name to resolve to the Cairns Luxury Apartments’ website, I cannot see that she represents to anyone that she is associated with, is the agent of, or has sponsorship or approval of Cairns Harbour Lights Pty Ltd.  As I have said, a person entering harbourlightscairns.com into a browser is very likely to be searching for accommodation in the Cairns Harbour Lights apartment complex. At best for the applicants, Ms Patalano may represent that she is the agent of some of the owners of apartments in that complex and that she has the sponsorship or approval of some of the owners; but I cannot see that she represents that she is the agent of, or has sponsorship or approval of, Cairns Harbour Lights Pty Ltd. 

39. I find that the applicants have not proved their thirteenth alleged misrepresentation.

    The fourteenth alleged misrepresentation

40. The applicants allege that Ms Patalano represents that she is associated with, is the agent of, or has the sponsorship or approval of, the hotel with the name “Cairns Harbour Lights”.  This is said to occur through registering and owning the domain name harbourlightscairns.com and allowing the domain name to resolve to the Cairns Luxury Apartments’ website. 

41. Even leaving aside the other problems I have alluded to, I cannot see that Ms Patalano’s conduct is capable of making the representations alleged. The Cairns Harbour Lights complex does not consist solely of a hotel. Accor operates a hotel business at that complex, but there are also many apartments that do not form part of Accor’s business. The mere registration and use of the domain name harbourlightscairns.com cannot represent that Ms Patalano is the agent of or has the sponsorship or approval of Accor’s hotel business. This contravention of s 18 of the ACL is not established.

    The fifteenth alleged misrepresentation

42. The applicants allege that Ms Bradnam represents that she is associated with, is the agent of, or has the sponsorship or approval of the entity called “Cairns Harbour Lights Pty Ltd”.  This representation is alleged to arise through the following conduct:

    (a)Registering and owning the domain names cairnsharbourlights.com.au, harbourlightscairns.com.au.

    (b)Allowing the domain names cairnsharbourlights.com.au and harbourlightscairns.com.au to resolve to the Cairns Luxury Apartments website located at >

    Ms Bradnam is the registrant for cairnsharbourlights.com.au and harbourlightscairns.com.au.  However, as I have already found, she is not the owner of those domain names.  They, or the rights to use them, are owned by Liv.  They were not transferred to Liv upon the sale because of an oversight. They have not been transferred since Ms Bradnam discovered that the domain names had not been transferred because she obtained legal advice that she should await the outcome of this proceeding. The evidence does not establish that Ms Bradnam has the power to prevent the use of the domain names.

43. For the same reasons I have given in relation to the thirteenth alleged misrepresentation, I find that Ms Bradnam’s conduct does not contravene s 18 of the ACL.

    The sixteenth alleged misrepresentation

44. The applicants alleged that Ms Bradnam represents that she is associated with, is the agent of, or has the sponsorship or approval of the hotel with the name “Cairns Harbour Lights”. 

45. For the reasons I have given in relation to the fourteenth alleged misrepresentation, I find that Ms Bradnam’s conduct does not contravene s 18 of the ACL.

    Accessorial liability

46. The applicants seek injunctions against each of the respondents pursuant to s 232(1) of the ACL. The precise basis upon which injunctions are sought against Ms Bradnam has not been made clear, but I understand the applicants to allege that she aided, abetted, counselled or procured Liv to contravene s 18(1), or that she was knowingly concerned in or a party to Liv’s contraventions.

1. In Yorke v Lucas (1985) 158 CLR 661, the High Court held that for s 75B of the TPA to apply to a person it must be shown that he or she intentionally aided, abetted, counselled or procured a contravention. The High Court held that to form the necessary intent, the person must have knowledge of the essential matters which make up the contravention, whether or not he or she knows that those matters amount to a contravention. It was also held that before a person can be said to be knowingly concerned in or a party to contravention, the person must be an intentional participant, the necessary intent being based upon knowledge of the essential elements of the contravention.

2. I have found that Liv contravened s 18(1) of the ACL by its conduct in causing listings to be made on the Agoda.com, Orbitz.com and Expedia.com.au websites that are misleading or deceptive and by failing to have its listings on the Hotelclub.com and Hotels.com websites removed. I have rejected the applicants’ allegations that Liv and Ms Patalano otherwise contravened s 18(1).

3. Ms Bradnam is the registrant for the domain names cairnsharbourlights.com.au and harbourlightscairns.com.au. The only possible connection of Ms Bradnam with any contraventions of s 18(1) of the ACL by Liv is through Ms Bradnam continuing to be the registrant. However, the breaches of s 18 that I have found are unrelated to any use of Liv’s domain names.

4. Accordingly, there is no basis for a finding of accessorial liability against Ms Bradnam. 

   SUMMARY

5. I have concluded that the cross-claim must succeed because the cross-claimants have proved that, under s 58 of the TMA, CHL is not the owner of the trade marks HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS in relation to the following services (see [205]):

   (a)agency services for the leasing of real estate properties;

   (b)apartment letting agency services;

   (c)apartment rental services;

   (d)rental of apartments;

   (e)rental of accommodation;

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

   (g)accommodation reservation services;

   (h)booking services for accommodation.

6. I have found that CHL is the owner of the trade marks in relation to the following services (see [205]):

   (a)commercial real estate agency services;

   (b)accommodation letting agency services (hotel);

   (c)hotel accommodation services;

   (d)hotel services.

7. I have decided that CAIRNS HARBOUR LIGHTS does not meet the requirements of s 41(2) of the TMA because it is not capable of distinguishing CHL’s and Accor’s services from the services of others (see [252]).

8. I consider that Ms Bradnam infringed CHL’s registered trade mark HARBOUR LIGHTS by her following uses of the trade mark:

   (a)in an outdoor advertising sign installed on a park bench, in relation to “commercial real estate agency services” (see [357]-[361]);

   (b)in an advertising flyer for sale of apartments, in relation to “commercial real estate agency services” (see [362]-[365]).

9. I have found that Liv infringed CHL’s registered trade mark HARBOUR LIGHTS by its following uses of the trade mark:

   (a)in a search result obtained through a Google search, in relation to “commercial real estate agency services” (see [381]-[384]);

   (b)on Liv’s website in its form at 30 June 2010, in relation to “accommodation letting agency services (hotel)”, “hotel accommodation services” and “hotel services” (see [396]).

10. I have also found that Liv has engaged, and continues to engage, in conduct in contravention of s 18(1) of the ACL by making misleading or deceptive representations in its listings on the following websites:

    (a)HotelClub.com;

    (b)Hotels.com;

    (c)Agoda.com;

    (d)Expedia.com.au;

    (e)Orbitz.com.

11. I will hear submissions as to the appropriate relief and as to what appears to be the most significant issue in this case, costs.

I certify that the preceding six hundred and fifty (650) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Rangiah.

Associate:

Dated:       5 June 2015

GLOSSARY

Term	Paragraph	Definition
Accor	[11]	Accor Australia & New Zealand Hospitality Pty Ltd
ACL	[254]	Australian Consumer Law
Applicants	[5] & [11]	Accor Australia & New Zealand Hospitality Pty Ltd and Cairns Harbour Lights Pty Ltd
BCCM Act	[2180]	Body Corporate and Community Management Act 1977 (Qld)
CHL	[5]	Cairns Harbour Lights Pty Ltd
Class 36 services	[90] & [36]	agency services for the leasing of real estate properties; commercial real estate agency services; apartment letting agency; apartment rental services; rental of apartments; rental of accommodation
Class 43 services	[90] & [36]	accommodation letting agency services (holiday apartments); accommodation letting agency services (hotel); hotel accommodation services; accommodation reservation services; booking services for accommodation; hotel services
CMLMC	[162]	Cairns Harbour Lights Management Company Pty Ltd
cross-claimants	[28]	Ms Patalano and Ms Bradnam
cross-respondents	[35]	CHL and Accor
hotel services	[72]	“accommodation letting agency services (hotel)”, “hotel accommodation services” and “hotel services”
leasing, letting and rental services	[66]	agency services for the leasing of real estate properties plus the “rental and letting services”
Liv	[19]	Liv Pty Ltd
Managed Scheme	[6(b)]	Harbour Lights (Managed Apartments) Community Titles Scheme 36770
Mirvac	[10]	Mirvac Hotels Pty Ltd
OTAs	[408]	On-line Travel Agents
Register	[1]	Register of Trade Marks
Regulations	[9]	Trade Marks Regulations 1995 (Cth)
rental and letting services	[64]	apartment letting agency, apartment rental services, rental of apartments, rental of accommodation, accommodation letting agency services (holiday apartments), accommodation reservation services and booking services for accommodation
Residential Scheme	[6(a)]	Harbour Lights Community Titles Scheme 36769
Respondents	[15] & [19]	Liv Pty Ltd, Ivana Patalano and Elise Wyandra Bradnam
TMA	[28]	Trade Marks Act 1995 (Cth)
TPA	[254]	Trade Practices Act 1974 (Cth)