Danilo Spagnuolo v Mantra IP Pty Ltd

[2010] ATMO 110

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Danilo Spagnuolo to registration of trade mark applications 1228706(36), 1228707(39), 1228708(35, 43) - Q1 - in the name of Mantra IP Pty Ltd.

Delegate:	Claudia Murray
Representation:	Opponent: Ms Cassandra Voller of IP Wealth Pty Ltd did not appear at the hearing, but provided written submissions. Applicant: Mr Andrew Musgrave of Counsel, instructed by Ms Carly Long from Mallesons Stephen Jaques, Brisbane.
Decision:	2010 ATMO 110 Section 52 oppositions – section 43 ground established – existence of geographical connotation means that trade mark use on relevant services likely to deceive or cause confusion - registration refused – costs awarded against applicant.

Background

1. Trade mark applications 1228706, 1228707 and 1228708 were filed on 10 March 2008. They are all in respect of the trade mark:

Q1

1. Trade mark number 1128706 was filed in class 36 of the International (Nice) Classification of Goods and Services. It covers the following services:

   Leasing of accommodation; rental of accommodation; accommodation letting agency; accommodation bureaux (apartments); apartment rental services; apartment letting agency; management and administration of buildings; real estate management; provision of long-term accommodation; apartment house management; management services including property management and administration; acquiring and managing real estate for investors; leasing of real estate; renting of apartments; real estate agency services; body corporate management services; insurance and financial services in relation to real estate and investment; financial management services for apartments, resorts and hotels; financial sponsorship of education, training, entertainment, sporting or cultural activities; and management, sale and financing of real estate

2. Trade mark number 1228707 is in class 39 and covers:

   Holiday travel reservation services; advisory services relating to travel; agency services for arranging travel; arrangement of travel; booking agency services for travel; computerised reservation services for travel; consultancy for travel; information services relating to travel; provision of information relating to travel; provision of tourist travel information; provision of travel information; reservation services for travel; ticket booking services for travel; tourist travel reservation services; travel agents services for arranging travel; travel information services; travel reservation; computerised reservation services for travel; computerised transport information services; luggage storage services; organising of excursions; parking of cars; parking services for vehicles; provision of parking facilities; reservation services for tours; services for the arranging of excursions for tourists; tour organising; and arranging rental of cars

3. Lastly, trade mark number 1228708 covers services in two classes as follows:

   Class: 35 Advertising services for accommodation, including providing these services online

   Class: 43 Hotel and resort services; accommodation reservations; provision of accommodation including hotel, motel, apartment and resort; provision of temporary accommodation; administration and booking services for accommodation; rental of temporary accommodation; accommodation reservations; accommodation management services; provision of food and drink; restaurant services; reservations (temporary accommodation); hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings; accommodation letting agency services (holiday apartments); arrangement of accommodation for holiday makers; arranging holiday accommodation; holiday home services (accommodation); holiday information (accommodation); holiday lodgings; holiday planning (accommodation); letting of holiday accommodation; provision of self catering holiday accommodation; reservation of places at holiday resorts; travel agencies for arranging accommodation; travel agency services for booking accommodation; travel agency services for making hotel reservations; accommodation finding services for tourists and travellers; accommodation letting agency services (holiday apartments and hotels); accommodation reservation services; arranging holiday and temporary accommodation; booking of accommodation for travellers; booking services for accommodation; hospitality services (accommodation); information services relating to the provision of temporary accommodation; letting of holiday and tourist accommodation; providing information, including online, about services for providing food and drink, and temporary accommodation; provision of self catering holiday or temporary accommodation; and resort accommodation

4. All three trade mark applications initially had grounds of rejection under section 44 raised against them, but these were withdrawn when the prior cited trade marks were assigned to the trade mark applicant, Stella IP Pty Ltd. The applications were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 13 November 2008. Stella IP Pty Ltd notified this Office that it had changed its name to Mantra IP Pty Ltd (‘Mantra IP’ or ‘the applicant’) in October 2009.

5. Mr Danilo Spagnuolo (‘the opponent’) filed notices of opposition to registration of the applications on 12 February 2009. Six grounds of opposition were listed.

6. Evidence in support, answer and reply was duly served and filed, after which I heard all three matters, as a delegate of the Registrar of Trade Marks, on 8 September 2010 in Brisbane. Mr Andrew Musgrave of Counsel, instructed by Ms Carly Long from Mallesons Stephen Jaques, Brisbane, represented the applicant. The opponent’s representative, Ms Cassandra Voller of IP Wealth Pty Ltd, did not appear at the hearing, but provided written submissions for my consideration.

   Evidence

7. The evidence is the same for all three trade mark oppositions. It comprises:

   Evidence in Support

   ØStatutory declaration of Danielle Jepson, with Exhibits A to D, dated 12 May 2009.

   Evidence in Answer

   ØStatutory declaration of Carly Long, with Exhibit CL-1, dated 7 October 2009.

   ØStatutory declaration of Bryan Luke Jamieson, with Exhibits BLJ-1 to BLJ-10, dated 3 December 2009 (‘Jamieson Declaration’).

   Evidence in Reply

   ØStatutory declaration of Danilo Spagnuolo, with Exhibits 1 to 6, dated 6 May 2010 (‘Spagnuolo Declaration’).

8. The evidence shows that ‘Q1’ (for ‘Queensland 1’) is the name of an ‘iconic’ high rise apartment building situated in Surfer’s Paradise, on Queensland’s Gold Coast. When it was opened in 2005, it was the world’s tallest residential tower. It is the tallest building in Australia. The following excerpt from some of the advertising material in evidence paints a glowing picture of its attributes:

   Q1 SURFERS PARADISE RESORT Surfers Paradise

   With its stunning glass-encased structure Q1 Resort Surfers Paradise is quite possibly the most striking building to appear on the Gold Coast skyline. Standing 80+ levels and 322 metres high, with Australia's only beachside observation deck, the Q1 Resort caters for all holiday and business occasions. Starting with the Q Deck on level 77 you'll take in 360 degree views over the entire Gold Coast, serviced by an express elevator taking 43 seconds from top to bottom. Both levels 77 & 78 are available for functions and events with a capacity of 400 people. The facilities on level 2 are also ideal for conferences and events including a modern ballroom with audio visual technology and room for 400 guests, and the option to split into 3 smaller function rooms. Beneath the Surfers Paradise Q1 Resort is one of the Gold Coasts most stylish precincts of shops and dining. The Q1 Resort Day Spa is located in the poolside gardens and is operated by Exclusive Spas Australia, offering arguably the Gold Coasts best treatments. Q1 Resort facilities include 2 lagoon pools, a 25 metre heated indoor pool, steam & sauna rooms, a modern gym, in-house theatre, and bar-b-q areas.[1]

   [1] Spagnuolo Declaration, Exhibit E.

9. Mr Bryan Jamieson is the General Manager – Distribution of the Mantra Group (‘MG’), of which Mantra IP is a part. He declares that MG is one of Australia’s largest accommodation providers, and that it operates a leisure resort called ‘Q1 RESORT & SPA’ at the Q1 building, and promotes the resort under the trade marks ‘Q1’ and ‘Ql RESORT & SPA’. The building consists of several businesses and over 500 luxury self-contained apartments as well as sub-penthouses. MG offers guest facilities at the Q1 Resort & Spa, such as a 24 hour reception, daily mini service, concierge service, business centre, two lagoon swimming pools, an indoor lap pool, gymnasium, sauna and steam rooms and a day spa. Some of these facilities are only available to guests who book through MG.

10. Mr Jamieson explains that the building was developed by Sunland Group Limited (‘the developer’) and built by Sunland Constructions on an area comprising 1.2 hectares. He declares that it is the usual practice today for large scale buildings and developments for the developer to file trade mark applications at the time of construction, and transfer the trade mark to the exclusive letting agent once the building is complete. In this case, the ‘Q1’ name was chosen by the developer, to represent ‘the tallest or number one building in Queensland.’ The developer filed trade mark applications several months before construction commenced and almost four years before the building was completed. Mantra IP now owns those device trade marks, relevant details of which are:

TM No.	Priority Date	Trade Mark	Goods/services classes
898834	14 Dec 01	4, 14, 16, 18, 20, 21, 24, 25, 28, 30, 35, 36, 41, 42
898835	14 Dec 01	4, 14, 16, 18, 20, 21, 24, 25, 28, 30, 35, 36, 41, 42

1. Mr Jamieson further elaborates that construction of the building commenced in around June 2002, and was completed in October 2005. The building is strata-titled, containing approximately 520 separate residential apartments. Each lot was originally purchased from the developer, and is owned individually. He observes that, as the world’s tallest residential building, Q1 received a significant level of media attention and publicity.

2. Mr Jamieson then explains that the developer selected the name – ‘Q1 CTS 34498’ - for the building’s Body Corporate, or ‘owners’ association’. This is a legal entity created when land is subdivided and registered to establish a community titles scheme. Every lot owner in a community titles scheme is automatically a member of the body corporate. In November 2004, the developer sold its management rights to an entity now known as Sunleisure Hotels & Resorts Pty Ltd (‘Sunleisure’) (which is part of MG) and the body corporate officially appointed that entity resident caretaker and on-site letting agent of Q1 in September 2005.

3. Also of relevance from Mr Jamieson’s declaration is the information that the developer filed trade mark applications in relation to the various Q1 businesses subsequently owned and operated by Sunleisure. These are the Q1 Store, Q1 Skybar and Q1 Observation Deck, which are open to the general public and are popular Gold Coast tourist attractions. Details of these device trade mark applications are:

TM No.	Priority Date	Trade Mark	Goods/services classes
1031747	25 Nov 04	4, 14, 16, 18, 20, 21, 24, 25, 28, 30, 35, 36, 41, 43
1093076	3 Jan 06	41, 43
1093077	3 Jan 06	41, 43

1. The first of these registrations is currently owned by the applicant. However, in accord with Mr Jamieson’s explanation that Sunleisure has recently sold its interest in the Observation Deck and Skybar businesses, I note that ownership of the latter two registrations, having previously passed to the applicant, has since been assigned to an unrelated company.

2. Mr Danilo Spagnuolo explains that his interests within the Q1 building are as a long term owner of two lots within the property, and that he also acts on behalf of other lot owners of the building for the letting of property within the Q1 as holiday accommodation. He has done this for two years, operating as the business ‘Q1 Holidays Gold Coast’. Mr Spagnuolo’s position is that the applicant is not entitled to assume exclusive rights in the name Q1, which is required for use by all of the businesses who operate in the building and all the individuals who advertise their properties for holiday letting purposes. He disputes the applicant’s suggestion that it is common practice for the developer of a building to file trade mark applications for the building’s name, to be later transferred to the exclusive letting agent. Instead, he believes the true owner of any trade marks relating to the building’s name should be the body corporate ultimately charged with managing upkeep of the building for the whole of its life.[2] By contrast, the association of the party contracted by the body corporate to provide caretaking and letting services for a building such as Q1 may be relatively short, lasting only the life of the initial contract period, should the body corporate choose not to renew after that time.

   [2] Mr Spagnuolo lists a number of trade mark registrations in his declaration (para 42 and Exhibit 2), purported to be the names of buildings, and owned by body corporate entities.

3. Mr Spagnuolo points out that, under the letting and caretaker agreement, body corporate members are able to engage the onsite provider to let their property within the Q1 establishment, but that they are equally at liberty to use other offsite providers such as real estate agents, or online accommodation websites. He has annexed to his declaration copies of two emails he has received which show that the applicant is taking action to deter use by others of the building’s name in online advertising of accommodation. Exhibit 4 to the Spagnuolo Declaration is a copy of an email from advising Mr Spagnuolo that the Mantra Group has complained that his advertisements on the accommodation website are infringing their trade marks. Stayz.com.au advises Mr Spagnuolo that, unless he can show that he has permission to use Mantra’s trade marks, he must ‘change your property name and update your descriptions and photographs accordingly.’ Exhibit 6 is a copy of an email from Mr Spagnuolo’s website provider, showing that Google Australia & New Zealand had ‘disapproved’ his advertising campaign, due to ‘a complaint from the trade mark owner of Q1’. The website provider’s representative comments at the end of his email that having to redo the advertisements without the ‘Q1’ name will be an ‘enormous disadvantage in the campaign’.

   Grounds of opposition

4. Prior to the hearing, the opponent provided written submissions, which indicated an intention to press grounds of opposition to all three trade mark applications in respect of sections 58, 60, and 62A. The grounds originally nominated in the notices of opposition were sections 39, 43, 58, 60, 62 and 62A. The submissions also covered grounds which had not been raised previously, under sections 41 and 61. At the hearing, Mr Musgrave reasonably objected to the inclusion of submissions relating to grounds not nominated in the notices of opposition. I said that I would not be taking notice of these submissions, as the opponent was not entitled to ambush the applicant at this point with new grounds when the applicant had obviously had no opportunity to address these in its evidence. Mr Musgrave suggested that the opponent had also clearly abandoned those remaining grounds raised in the notice but not pressed in his written submissions. I disagreed with that observation, as the written submissions were silent upon the matter. Mr Musgrave then went on to respond to the full gamut of grounds available to the opponent, as well as briefly addressing those grounds under section 41 and 61, saying his client was ‘not embarrassed’ to respond to those grounds also.

5. After careful consideration of all the evidence and submissions put before me, I have concluded that the most relevant ground of opposition which exists in relation to the applied-for trade mark is that provided for by section 43. An opponent’s success in relation to a single ground of opposition usually renders unnecessary any further consideration of other grounds, although, of course, those grounds would still be available to an opponent in the event of an appeal from a delegate’s decision. I propose to confine my further deliberations here to the opponent’s ground of opposition under section 43.

   Section 43 – Trade mark likely to deceive or cause confusion

6. Section 43 provides:

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

7. The word ‘connotation’ is defined in the Macquarie Dictionary as:

   That which is connoted; secondary implied or associated meanings (as distinguished from denotation).[3]

   [3] The Macquarie Dictionary Online © Macquarie Dictionary Publishers Pty Ltd, 2010.

8. ‘Denotation’ is then defined in the following manner, the third option being clearly the most appropriate in this context:

   1. the meaning of a term when it identifies something by naming it (distinguished from connotation).

   2. the act or fact of denoting; indication.

   3. something that denotes; a mark; symbol.

   4.  Logic the class of particulars to which a term is applicable.

9. Section 43 requires that a delegate of the Registrar must reject a trade mark, should he or she find there to be a meaning within it, additional to its intended denotation as an identifier of a trader’s goods, which renders its use on the relevant goods or services likely to deceive or cause confusion.

10. The underlying principle enshrined in section 43 was described by Lord Macnaughten in Dunn's Trade Mark (1890) 7 RPC 311 at 318:

    Unfortunately in the competition for business a trader not infrequently endeavours to attract custom by representing that the goods which he offers for sale are different in origin, composition or character from what they really are. The public are constantly tempted to buy one thing when they think they are buying another. It is not, as has been observed, the province of the court to protect speculations of this kind. Between rival traders the application of the principle is necessarily a matter of extreme difficulty. But as between the innocent public and a trader seeking registration of a proposed trade mark, there is, I think, no room for hesitation or doubt.

11. The VITAMIN[4] and ORLWOOLA[5] cases also illustrate some of the issues addressed by section 43. In those cases, there was a danger the public might make a reasonable, but incorrect, assumption about a product based upon a connotation within the trade mark, which could not easily be confirmed or discounted by even close inspection of the product. In ORLWOOLA,[6] Cozens-Hardy MR commented:

    If the goods are wholly made of wool the words are the natural and almost necessary description of them. If they are not made wholly of wool it is a misdescription which is so certain to deceive that its use can hardly be otherwise than fraudulent. In either case the words are utterly unfit for registration as a trade mark.

    [4] J. Kitchen & Sons Pty LTD v Inman (1939) 9 AOJP 1383 (Reg).

    [5] Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.).

    [6] Ibid, at 860.

12. Hearing Officer Iain Thompson discusses section 43 with reference to more recent cases in Commitee Marc Chagall v Elite Wine and Spirits[7]:

    The 'connotation' referred to in section 43 is something inherent to the trade mark in question: Big Country Developments Pty Ltd v TGI Friday's Inc (2000) IPR 513 at 521. It refers to that which is implied within the trade mark itself, as a secondary implied or associated meaning. As was said in Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644:

    'considerations under s43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to the character of the services (or goods) or the implied endorsement or licence of services (or goods) by a person or organisation'.

    See also the Federal Court decision of Kenny J in McCorquodale & Ors v Masterton (2005) 63 IPR 582 (‘McCorquodale’) and the Office decisions of Amalgamated Television Services Pty Limited v Pickard (2000) 48 IPR 133 (Summer Bay), Amalgamated Television Services Pty Limited v Sylvia Margret Clissold [2000] ATMO 14 (Home and Away), the discussion of the section by the Hearing Officer in Kellogg Company v Premium Brands Pty Ltd (2000) 49 IPR 108 at 116-118 (among other cases). Indeed, as was said by the High Court in Radio Corporation v Disney (1937) 57 CLR 448 at 453 (the Mickey Mouse case) a trade mark should not be registered if it involves 'a misleading allusion or a suggestion of that which is not strictly true'.

    [7] [2007] ATMO 29 (31 May 2007), para11.

1. Mr Musgrave addressed the opponent’s ground of opposition under section 43 in his hearing submissions. He argued:

   The Opponent has not pointed to any “connotation” that the Q1 Marks have that would make them likely to deceive or cause confusion.

   At the highest the Opponent intends to suggest that the connotation is “Q1”, being a reference to the building. This is neither deceptive nor likely to cause confusion.[8]

   The Applicant is the exclusive onsite letting agent for the Q1 building and no other entity is allowed to perform such services. Use of the name “Q1” in the Q1 Marks simply identifies the building in relation to which the Applicant is exclusively entitled to provide onsite letting services and is use in word form of a trade mark registration it already owns.

   The Q1 Marks as a whole are used to identify the unique role played by Sunleisure in relation to onsite letting services.

   There is therefore no risk of confusion arising between Sunleisure and other persons in respect of letting services should Sunleisure continue to use the Q1 Marks.

   The Applicant relies on the submissions made above in respect of section 60 under the subheading “Likely to Deceive or Cause Confusion”. [These submissions relate to the applicant’s claim that any reputation existing in the Q1 trade marks belongs to the applicant.]

   The grounds required for opposition based on section 43 cannot be made out.

   [8] Mantra Group Pty Ltd v Tailly Pty Ltd (2010) 83 FCR 450 (The Circle on Cavill case).

2. Elsewhere in his submissions, in addressing the grounds under sections 41 and 61 which the opponent’s written submissions had unsuccessfully attempted to bring in, Mr Musgrave also said:

   To succeed under these grounds, the Opponent must establish that “Q1” is a geographical place. They cannot and have not done so.

   “Q1” is not a country, State, city, town or suburb.

   In MID Sydney Pty Ltd v Australian Tourism Company Ltd & Ors[9], the applicant owned an office building which it named “The Chifley Tower” and had registered trade marks for “The Chifley Tower” in relation to property management services. The respondents wanted to establish a hotel business which used “Chifley” in the name of its hotels.

   The Court distinguished the concept of a privately owned office building from a town or district. The Court held that “The Chifley Tower” was not part of the common heritage in the way that a town, suburb or municipality is. There was no public policy against the applicant restricting the way that tenants in its building used the name “The Chifley Tower”. The Court also found that, unlike a town, suburb or municipality, it was not likely that a tenant in the building would, acting properly, want to use “Chifley Tower” other than as its place of business, in relation to the services for which the trade mark was registered. This case was cited with approval in Mantra Group Pty Ltd v Tailly Pty Ltd.[10]

   These principles should be applied to the present case. The Q1 Marks are for an invented phrase, “Q1”, which is a brand that has been applied to a privately owned resort hotel and retail complex. The Q1 Marks do not relate to any recognised “place”.[11] Prior to the developer’s decision to build the complex, some time around 2001, it could not be said that there was any physical location “Q1”, whether as a formally recognised place or otherwise. The developer and Applicant took all steps to protect the Q1 Marks as a brand, and treated “Q1” as a brand rather than as a generic term for a geographical place.

   [9] (1998) 42 IPR 561 (The Chifley Tower case).

   [10] Op cit.

   [11] Section 4 of the Place Name Act 1994 (Qld).

3. Mr Spagnuolo takes a different view. His declaration argues that the applicant does not in fact use ‘Q1’ as a brand at all, but identifies itself in the market by the names ‘MANTRA’, ‘BREAKFREE’ and ‘PEPPERS’. He comments:

   [T]he Applicant claims that it has solely contributed to the goodwill and reputation of the 'Q1' and 'Q1 RESORT & SPA' trade mark for various goods and services. I submit that due to the significance the building has as a landmark in Queensland, the use of the Q1 name by various means such as my own business, individual owners, offsite letting agents, the media, the developers of the building, retail store owners within the building, and the fact that the Applicant does not own any property or lots within the Q1 building (except the managers lot), the Applicant cannot claim to have attributed [sic] exclusively to the goodwill and reputation of the 'Q1' or similar variations, being 'Q1 RESORT & SPA' trade marks on its own accord…

   The Q1 building is a landmark on the Gold Coast location map, and is a Queensland tourism icon. On an international scale, the building has the reputation as being the 'worlds tallest residential tower' and visitors come from all over the world to view the Gold Coast from high above at the top level of the building. As such, the 'Q1' is deemed by many as a geographic location on the Surfers Paradise map.[12]

   [12] Spagnuolo Declaration, paras 30 and 40(f).

4. Section 43 is a mandatory provision. In the context of opposition, I must refuse to register the applied-for trade mark, if I find that it has a connotation which results in its use in relation to the relevant services being likely to deceive the public, or cause it confusion. I note Mr Musgrave’s references to the Chifley Tower and Circle on Cavill cases. In the latter case, to which the applicant was also a party, Reeves J cited the Chifley Tower discussion distinguishing the concept of a privately owned office building from a town or district with approval. However, it is highly relevant that he also observed that the Full Federal Court had identified what he called ‘a borderline exception’, where ‘a plaza or other public space adjoining a building had become part of the common heritage’.[13] The Chifley Tower case dealt with trade marks comprising the words ‘Chifley Tower’ with or without a stylized tower device. In the introduction to their decision, Burchett, Sackville and Lehane JJ describe the property connected to the trade marks in the following manner:

   The appellant (MID) is the owner of a property known as The Chifley Tower. It is situated in Chifley Square, Sydney and has frontages to Elizabeth, Bent and Phillip Streets. The Chifley Tower is a large, modern and impressive office building consisting of 42 storeys, excluding the basement car park. Its tenants are substantial corporations and firms. It incorporates also, on Level 41, a well-known restaurant. Three floors are given over to restaurants and shops of a standard appropriate to their association with The Chifley Tower. The three floors are known as the "Chifley Plaza".

   [13] Op. cit. para 87.

5. They refer to the ‘Chifley Plaza’ part of Chifley Tower later in their decision thus:

   MID acquired a building approaching completion and chose a name for it; at about the same time MID applied for the first of its registered marks in relation to property management services intending, no doubt, to provide those services, principally if not exclusively, in relation to the building. The Chifley Tower is not part of the common heritage in the sense that a town, suburb or municipality is. Chifley Plaza perhaps might answer that description, but the registered trade mark does not incorporate that expression. (My emphasis added)

6. The Courts declined in both cases to be persuaded that either the ‘large privately owned city office building’ known as Chifley Tower or the ‘large privately owned residential apartment building’ known as Circle on Cavill could be described as ‘geographical locations’. However, far from shutting the door completely on the possibility, they suggested that a building containing well-known public spaces such as those of Chifley Plaza may indeed ‘answer that description’ and ‘form part of the common heritage’. The evidence demonstrates, (and indeed this is supported by my own experience) that this is precisely the situation which exists here. The name of the property at 9 Hamilton Avenue Surfers Paradise was registered at the Queensland Department of Natural Resources in 2005 as ‘Q1’[14]. The tallest building in Australia and popular Surfers Paradise tourist icon, a building which, in addition to providing residential accommodation, also caters for the public in a myriad of ways, has just one name by which it is identified, and that is ‘Q1’. I believe that these circumstances satisfy the criteria which the Federal Court had in mind when considering the type of building which might validly be described as having earned the status of being a ‘geographical location’. I conclude here that the sign ‘Q1’ has a geographical connotation which it has borne, arguably from its inception as the chosen name for what was always intended to be a prime tourist attraction, and at the least from the date the building opened to residents and the public.

   [14] Spagnuolo Declaration, Exhibit 1.

7. Of course, a finding that the opposed trade mark has a geographical connotation is not sufficient, of itself, for an opponent’s success under section 43. Kenny J remarked in McCorquodale & Ors v Masterton (‘McCorquodale’)[15]:

   As the delegate aptly observed, "without more, merely invoking a reference to a deceased celebrity cannot deceive or confuse": Masterson[16] at 272. The question is whether, because of this connotation, the respondent’s proposed mark is likely to deceive or cause confusion. In considering this question, the Court has the benefit of the uncontroverted evidence which the applicants tendered…

   In considering the meaning of "likely to deceive or cause confusion" in Woolworths[17] at 380, French J said:

   The use of the word "likely" in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring".

   See also Southern Cross[18] at 594-595 per Kitto J.

   [15] (2005) 63 IPR 582, paras 33 and 35.

   [16] Executors of the Estate of Diana, Princess of Wales (Deceased) v Masterson (2001) 52 IPR 264

   [17] Registrar of Trade Marks v Woolworths Ltd  [1999] FCA 1020; (1999) 93 FCR 365

   [18] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592

8. The evidence shows that, because of its geographical connotation, use of the opposed trade mark in relation to those services specified in the applications has the potential to cause significant deception and confusion in the marketplace, bearing in mind that the question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.[19] My reasons for this finding can be addressed under the following headings:

   Applicant’s current use of the Q1 sign

   [19] McCorquodale, op. cit. para 27.

9. Use of any particular sign by a trader will not necessarily constitute use ‘as a trade mark’. A majority of the High Court in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited[20] recently approved the following definition of trade mark use set out by the Full Federal Court in Coca-Cola Co v All-Fect Distributors Ltd[21]:

   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.

   [20] [2010] HCA 15

   [21] [1999] FCA 1721

10. Context is all important in determining whether a sign has been used as a trade mark or for some other purpose.[22] In Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH,[23] Hill J said:

    In most, if not all cases, the question whether there has been use as a trade mark will be determined by an objective examination of the use in the context in which it appears.

    [22] Shell Co of Australia v Esso Oil (Aust) Ltd (1963) 109 CLR 407

    [23] [2001] FCA 1874

11. The applicant’s evidence shows that, in practice, the ‘Q1’ name is predominantly used to identify the location of the services provided, rather than as a badge of origin. A typical example of such use appears in Exhibit BLJ-8 of the Jamieson Declaration:[24]

    [24] Compare with Circle on Cavill, op. cit. paras 57-61

12. It is hardly surprising that use of the sign by the applicant’s agent would seek to reinforce rather than compromise its geographical connotation, at the expense of representation as a badge of origin. But it suggests that the applicant itself is aware of the need to avoid the potential deception and confusion of the public likely to result from any use of ‘Q1’ intended to separately identify the applicant’s services in isolation from any association with the Q1 building.

13. Notwithstanding its own use of the Q1 sign as a geographical indicator rather than as a trade mark, the applicant has sold its interests in two of the prime public spaces in the building, and has assigned ownership of the Q1 Observation Deck and Q1 Skybar device trade marks to an unrelated party. The applicant might expect that the new trade mark owner will also use the Q1 sign primarily as a geographical indicator in relation to its services, rather than as a badge of origin. Otherwise, deception and confusion of the public could easily result from, in this instance, parallel use of deceptively similar trade marks on similar services by different parties.

    Potential for confusion if registration was attained

14. As I have described above, the opponent’s evidence highlights that the applicant has already moved to prevent other accommodation service providers in the Q1 building from using the Q1 sign. Mr Musgrave commented on the situation thus:

    If the Opponent, other lot owners or the Body Corporate have been offering services under that same mark, they have done so at their own risk as the mark belongs to the Applicant.

    They cannot hold themselves out to be providing the same services onsite by virtue of the legal arrangement subsisting between the Applicant and the Body Corporate…

    The Body Corporate and the lot owners are entitled to offer any services and engage any service providers under any number of trading names provided this is not done onsite or under the brand created and owned by Sunleisure.

15. The issue here is simply that, regardless of the agreement between the applicant and the body corporate, other parties with an interest in advertising the provision of accommodation in the Q1 building must be able to use its name do so. The applicant itself uses the name as a geographical identifier in the first instance, yet it seeks to prevent others from doing the same by applying for trade mark registration of the Q1 sign solus. Nothing short of deception and confusion of the holidaymaking public would be the likely result from the attempts of the applicant’s competitors to identify the location of their rental accommodation without straying into what it claims as the territory of its ‘brand’.

16. Further, as Mr Spagnuolo has observed, the applicant’s current contract with Q1’s body corporate may not be renewed. Should the applicant have in the meantime succeeded in achieving registration of the opposed trade mark, it would then be in the very confusing position of retaining trade mark rights to identify its accommodation leasing and numerous related services by the Q1 sign, even though resident caretaker and exclusive on-site letting agency rights to the Q1 building may have passed to a competitor.

17. Mr Musgrave argued that the applicant is presently entitled to ‘all goodwill subsisting in the Q1 brand’ and that, should use of the trade mark registrations become deceptive at a future date, their cancellation may then, and only then, be an appropriate course for the opponent to pursue. For all the reasons I have discussed above, I do not agree. I find that, because of the geographical connotation contained in the Q1 sign, there is a real likelihood that its use as a trade mark by the applicant in respect of the very wide range of services specified in its applications will cause deception and confusion of the public. The Q1 sign is the only name of a building which, by virtue of its multi-faceted identity, has in the words of the Full Federal Court ‘become part of the common heritage’. As such, it has a connotation that effectively eclipses any function it might otherwise have performed in denoting any single trader, and which renders it simply unsuitable for use as a trade mark. Even with the best of intentions, any use of ‘Q1’ intended to denote a single trader cannot avoid creating deception and confusion in the marketplace, as it is a name patently required for use by all of the many traders with a connection to the building. The very nature of the sign means that it is, to return to the words quoted earlier from the ORLWOOLA case, ‘utterly unfit for registration as a trade mark’.[25]

    [25] Re Trade Mark "Orlwoola", op. cit.

18. I find the ground of opposition in terms of section 43 to be established.

    Decision

19. Subsection 55(1) of the Act provides:

    (1)     Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a)     to refuse to register the trade mark; or

    (b)     to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

20. The onus is upon an opponent to establish one or more grounds of opposition, according to the balance of probabilities.[26] The opposition has succeeded in relation to the ground under section 43 nominated in the notices of opposition. I therefore refuse to register trade mark numbers 1228706, 1228707 and 1228708.

    [26] Pfizer Products Inc v Karam (2006) 70 IPR 599; Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13 (at [22] to [26]).

    Costs

21. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant, Mantra IP.

    Claudia Murray
    Hearing Officer
    Trade Marks Hearings
    5 November 2010