Mantra Group Pty Ltd v Tailly Pty Ltd (No 2)

The case of Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) involves a dispute between two companies over the use of the trade mark "Circle on Cavill" in relation to accommodation services offered at the Circle on Cavill complex. The dispute was heard by the Federal Court of Australia, which was required to determine whether the respondents, Tailly, had infringed the trade mark rights held by the applicants, Mantra. The central legal issues that the Court had to decide related to the use of the sign as a trademark, the use of the sign in good faith to indicate the geographical origin of the accommodation services, and whether the words comprising the trade mark had become generally accepted within the relevant trade as the sign that describes or is the name of the apartment complex.

In determining whether the respondents used the sign as a trademark, the Court considered how the internet operates and the use by the respondents of words either substantially identical with or deceptively similar to the registered trade mark in domain names and on websites. The Court found that the use of the sign by the respondents amounted to their use as an emblem or a badge of origin for the accommodation services they were offering at the Circle on Cavill complex, which constituted an infringement of the applicants' trade mark rights.

Regarding the use of the sign in good faith to indicate the geographical origin of the accommodation services, the Court considered whether the respondents had used the sign to indicate the geographical origin of the services they were offering at the Circle on Cavill complex and whether they had used the sign in good faith. The Court concluded that the respondents had not used the sign in good faith as they had used it to take deliberate advantage of a secondary meaning and had given particular prominence to the sign.

Finally, the Court considered whether the words comprising the applicants' trade mark had become generally accepted within the relevant trade as the sign that describes or is the name of the apartment complex. The Court found that the trade marks had not become generally accepted within the relevant trade as the sign that describes or is the name of the apartment complex.

Based on these findings, the Court made several orders, including the transfer of registration of the Circle on Cavill domain names to the applicants, a permanent restraint on the respondents from using the Circle on Cavill marks or other similar marks in relation to the advertising, promotion, or supply of accommodation, and a permanent restraint on the respondents from assisting other persons in doing the same. The Court also ordered an account of profits for bookings sourced via the Circle websites or other websites or directly related to the infringing use of the Circle on Cavill marks.