Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd

In the matter of Metro Business Centre Pty Ltd and others v Centrefold Entertainment Pty Ltd and others, the Federal Court of Australia considered an application to remove a trade mark from the Trade Marks Register and allegations of misleading and deceptive conduct under the Australian Consumer Law (ACL). The trade mark "centrefold" was registered in respect of adult entertainment and promotional model services. The applicant companies, Metro Business Centre and Centrefold Strippers, sought to have the trade mark removed from the Register and alleged that the registrant, Centrefold Entertainment, engaged in misleading and deceptive conduct by using the word "centrefold" in its branding.

The court was required to decide whether the trade mark "centrefold" was inherently capable of distinguishing the registrant's services from those of other persons, whether the registrant used the trade mark in connection with its services in a way that enabled the conclusion that the usage had developed a secondary meaning related only to the registrant's designated services, and whether the use of the word "centrefold" amounted to misleading or deceptive conduct. The court also had to determine whether the registrant passed off its business as that of the applicants.

The court held that the word "centrefold" should not have been registered as a trade mark because it was not capable of distinguishing the registrant's designated services from those of other persons. The court found that the registrant's use of the word "centrefold" was not a use of a trade mark in relation to services, but rather, a description of its services. The court concluded that the registrant's use of the word "centrefold" was not inherently adapted to distinguish its services from those of other persons, and that the registrant's use of the word "centrefold" was a mere description of its services. The court also held that the respective claims based on alleged contraventions of s 18 of the ACL, and the applicants' claim that the registrant passed off their business as its own, must be dismissed.

The court ordered the parties to provide short minutes of order to give effect to these reasons and, if they cannot agree on such orders and orders as to costs, to relist the proceedings for the making of final orders and orders as to costs. The parties were also required to file and serve written submissions on costs, limited to three pages.