Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) - [2021] FCA 328

FEDERAL COURT OF AUSTRALIA

Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328

File number(s): VID 330 of 2019

Judgment of: O’BRYAN J

Date of judgment: 9 April 2021

Catchwords: TRADE MARKS – validity – whether “Corner Hotel” and “Corner” marks capable of distinguishing applicant’s services of conducting a live music venue within s 41 of the Trade Marks Act 1995 (Cth) – whether use of those marks likely to deceive or cause confusion within s 88(2)(c) – infringement – whether respondents infringed applicant’s marks by using the “Jazz Corner Hotel” name and associated names and brands as trade marks in relation to live music services – whether marks have been used as trade marks in relation to live music services – whether marks are deceptively similar to “Corner Hotel” and “Corner” within s 120(1) – whether use in good faith to indicate a characteristic of the services within s 122(1)(b)(i) – whether entitled to obtain registration of marks for the purposes of s 122(1)(fa) – whether use of registered marks is the exercise of rights granted under the Trade Marks Act 1995 (Cth) and thereby satisfies s 122(1)(e) – whether the corporate respondents are joint tortfeasors – whether individual respondent, as director of the corporate respondents, is a joint tortfeasor

Legislation:
Trade Marks Act 1995 (Cth) ss 7(1), 10, 25, 41, 41(3), 41(4), 44(2), 44(3)(a), 44(3)(b), 44(4), 57, 88(1)(a), 88(2)(a), 88(2)(c), 120(1), 120(2), 122(1)(b)(i), 122(1)(e), 122(1)(fa), 126(1), 126(2)

Trade Marks Amendment Act 2006 (Cth) s 41

Federal Court Rules 2011 (Cth) r 14.03

Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)

Cases cited:
Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299; 83 IPR 210;
Aldi Foods Pty Ltd v Moroccanoil Israel Ltd (2018) 261 FCR 301
Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514
Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511
Australian Meat Group v JBS Australia Pty Ltd(2018) 268 FCR 623
Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862; 293 ALR 369
Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641
B Stone & Co Ltd v Steelace Manufacturing Co Ltd (1929) 46 RPC 406
Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50
Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235; 129 IPR 482
British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281
Britt Allcroft (Thomas) LLC v Miller (t/as The Thomas Shop) [2000] FCA 699; 49 IPR 7
Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417
CA Henschke v Rosemount Estates Pty Ltd [2000] FCA 1539; 52 IPR 42
Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337
Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511
Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107
Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506
Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; 209 ALR 1
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144
Eastman Photographic Materials Company Ltd v Comptroller-General of Patents, Designs and Trade Marks (the Solio Case) [1898] AC 571
F.H. Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537
Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605; 76 IPR 161
Health World Ltd v Shin-Sun Australia Pty Ltd [2005] FCA 5; 64 IPR 495
Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100; 75 IPR 478
In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193; 377 ALR 116
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326
JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20; 329 ALR 625
Keller v LED Technologies Pty Ltd (2010) 185 FCR 449
Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450
Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190
McCorqhadale v Masterson [2004] FCA 1247; 63 IPR 582
Mentmore Manufacturing Co Ltd v National Merchandising Manufacturing Co Inc (1978) 89 DLR (3d) 195
MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236
Oxford University Press v Registrar of Trade Marks (1990) 24 FCR 1
Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104 57 IPR 28
Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1
Re Bali Brassiere Co. Inc’s Registered Trade Mark; Re Berlei Ltd’s Application (1968) 118 CLR 128
Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84
Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365
Shell Co of Australia Ltd v EssoStandard Oil (Aust) Ltd (1963) 109 CLR 407
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
Starr Partners Pty Ltd v Dev Prem Pty Ltd [2007] FCAFC 42; 71 IPR 459
Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2020] FCA 396; 153 IPR 1
Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252
Trident Seafoods Corp v Trident Foods Pty Ltd [2019] FCAFC 100; 369 ALR 367
Unilever Aust Ltd v Karounos (2001) 113 FCR 322
Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCA 82; 150 IPR 11
Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89
Woolworths Ltd v BP Plc (No 2) (2006) 154 FCR 97

Date of hearing: 16 – 17 March 2020

Date of last submissions: 3 April 2020

Registry: Victoria

Division: General Division

National Practice Area: Intellectual Property

Sub-area Trade Marks

Category: Catchwords

Number of paragraphs: 295

Counsel for the Applicant: Mr E Heerey QC with Mr S Rebikoff

Solicitor for the Applicant: K&L Gates

Counsel for the Respondents: Mr C Golvan QC with Ms M Marcus

Solicitor for the Respondents: Brand Partners Commercial Lawyers

ORDERS

VID 330 of 2019

BETWEEN:
SWANCOM PTY LTD

Applicant

AND:
THE JAZZ CORNER HOTEL PTY LTD ACN 615 168 968 (and others named in the Schedule)

Respondents

ORDER MADE BY:

O’BRYAN J

DATE OF ORDER:

9 APRIL 2021

THE COURT ORDERS THAT:
1.The Applicant’s application be dismissed.
2.The First Respondent’s application by cross-claim be dismissed in so far as it concerns registered trade mark number 1388154 (for “CORNER HOTEL”) and registered trade mark number 1623364 (for “CORNER PRESENTS”).
3.Within 14 days, the First Respondent is to file and serve a notice stating whether it maintains its application by cross-claim in so far as it concerns registered trade mark number 1442211 (for “CORNER”) and registered trade mark number 1669900 for (“THE CORNER”).
4.Within 21 days, the parties are to file and serve an agreed timetable for the resolution of:
(a)the First Respondent’s application by cross-claim (if maintained by the First Respondent); and
(b)the costs of the proceeding,

or, in the absence of agreement, the timetable proposed by each party.

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

REASONS FOR JUDGMENT
O’BRYAN J:
A. INTRODUCTION

This proceeding concerns two live music venues located in Melbourne, one in the inner city suburb of Richmond and the other in the central business district of Melbourne, and the right to use trade marks which include the words “corner” and “corner hotel”.
Since 1995, the applicant (Swancom) has been the owner and operator of a live music and hospitality venue located at 57 Swan Street, Richmond, Victoria. It consists of the usual facilities associated with a public hotel (a front bar, a rooftop bar and restaurant and a number of other function rooms and other areas) as well as a live music area, known as the "bandroom", which can accommodate 750 to 800 patrons. The venue occupies a block that fronts (on three sides) each of Swan Street, Stewart Street and Botherambo Street and thus sits at the junction of two street corners. The venue has been called the Corner Hotel for a long time (and prior to its ownership by Swancom).
Swancom applied for and received registration for the following trade marks (collectively, the Swancom marks):
(a)trade mark number 1388154 for “CORNER HOTEL” (with a filing date of 11 October 2010) registered in respect of the following services:
Class 41: Organising, conducting, providing and providing information in relation to entertainment and cultural activities, being live music performances; providing facilities for live music performances; ticket booking and reservation services for entertainment and cultural activities being live music performances; publication services relating to these services; provision of all such services over a global computer network;
Class 43: Provision of food and drink; cocktail lounge, bar, cafe, snack bar and restaurant services; catering services; hospitality services
(b)trade mark number 1442211 for “CORNER” (with a filing date of 10 August 2011) registered in respect of the following services:
Class 41: Organising, conducting, providing and providing information in relation to entertainment, recreation, sporting and cultural activities, including live music performances; amusement services; entertainment services; providing facilities for entertainment, recreation, sporting and cultural activities, including live music performances; ticket booking and reservation services for entertainment, recreation, sporting and cultural activities; publication services relating to these services; provision of all such services over a global computer network;
Class 43: Provision of food and drink; cocktail lounge, bar, cafe, snack bar and restaurant services; catering services; hospitality services
(c)trade mark number 1623364 for “CORNER PRESENTS” (with a filing date of 16 May 2014) registered in respect of the following services:
Class 41: Music and entertainment booking services, including providing information about music and entertainment booking services; and
(d)trade mark number 1669900 for “THE CORNER” (with a filing date of 20 January 2015) registered in respect of the following services:
Class 41: Organising, conducting, providing and providing information in relation to entertainment, recreation, sporting and cultural activities, including live music performances; amusement services; entertainment services; providing facilities for entertainment, recreation, sporting and cultural activities, including live music performances; ticket booking and reservation services for entertainment, recreation, sporting and cultural activities; publication services relating to these services; provision of all such services over a global computer network.
Class 43: Provision of food and drink; cocktail lounge, bar, cafe, snack bar and restaurant services; catering services; hospitality services
In evidence and submissions, Swancom consistently referred to the hotel in Swan Street, Richmond from which it conducts its business as “The Corner Hotel” (i.e. including the definite article as part of the business name). However, as can be seen, the registered trade mark for CORNER HOTEL does not include the definite article as part of the mark. The evidence shows that Swancom has been inconsistent in its use of the definite article as part of the name of the hotel and business. As referred to below, the domain name for the business website and the name of the business Instagram account do not include the definite article, whereas the name of the business Facebook account does include the definite article. In these reasons, I will refer to the hotel and business as the “Corner Hotel”, consistently with the registered trade mark. However, nothing turns on this usage given that there is little difference visually or phonetically in referring to the Corner Hotel or The Corner Hotel.
Each of the first respondent, The Jazz Corner Hotel Pty Ltd (JCHPL), the second respondent, Bird’s Basement Pty Ltd (BBPL), and the third respondent, Saint Thomas Pty Ltd (STPL), conduct business from premises within a tall building that occupies the block at 330-360 William Street, Melbourne. That building is next door to a smaller building that is on the north‑east corner of the intersection of William and La Trobe Streets. Thus, the building at 330-360 William Street (which I will refer to as the William Street building) is close to the corner of William and La Trobe Streets, but not actually on the corner. There are other business occupants of the William Street building, including particularly Oaks Apartments.
The first to third respondents conduct three distinct but related businesses within the William Street building:
(a)JCHPL conducts a hotel business called “The Jazz Corner Hotel”, which has the street address 352 William Street, Melbourne;
(b)BBPL operates a jazz music venue called “Bird’s Basement” which is located in the basement of the building and which has its primary street entrance at 11 Singers Lane, Melbourne, which is at the rear of the building; and
(c)STPL operates a café business called the “The Jazz Corner Café” within the building.
The first to third respondents are described in the evidence given on behalf of the respondents as “part of” a group of companies referred to as the “Ubertas Group”. The Ubertas Group is described in the evidence as a “property development company” operating in real estate, accommodation, hospitality, technology and the entertainment industry in Australia. The evidence did not descend to details of the corporate ownership structure or the identity of the ultimate parent company of the group. Nevertheless, the evidence given on behalf of the respondents proceeded on the basis that the first to third respondents have common (ultimate) ownership, management and control under the Ubertas Group. The fourth respondent, Albert Dadon, is the Executive Chairman of the Ubertas Group and is also the sole director of each of the first to third respondents. The Development Director of the Ubertas Group, Simon Barr, deposed that he has day-to-day involvement in the operation of each of the businesses conducted by the first to third respondents, including overseeing the budget and marketing, managing staff and directing the operations of these businesses, and that the General Managers of each of the three businesses report to him on a daily basis on their day-to-day operations.
The fifth respondent, Ubertas Operations Pty Ltd (UOPL), also part of the Ubertas Group, owns the following registered trade marks:
(a)trade mark number 1825739 (Registered Jazz Corner Hotel device mark) for the mark
(with the filing date 14 February 2017) for the following services in class 43:
Accommodation bureaux (hotels, boarding houses); Rental of temporary accommodation; Hotels; Hotel reservations; Snack-bars; Bar services; Café services; Catering services; Club services for the provision of food and drink; Cocktail lounge services; Night club services (provision of food and drink); Preparation of food and drink; Providing food and drink; Restaurant services;
(b)trade mark number 1839135 for “JAZZ CORNER” (Registered Jazz Corner accommodation word mark) (with the filing date 19 April 2017) for the following services in class 43:
Accommodation bureaux (hotels, boarding houses); Rental or temporary accommodation.
Since it commenced business, JCHPL has used the UOPL marks under licence from UOPL, first using the unregistered marks and, from the relevant date of registration of each mark, the registered marks. The licence arrangement was formally documented by way of a licence agreement in or around May 2019.
STPL owns the following two registered trade marks:
(a)trade mark number 1893220 for “JAZZ CORNER” (Registered Jazz Corner café word mark) (with the filing date 8 December 2017) in relation to the following services in class 43:
Snack-bars; Café services; Providing food and drink; Restaurant services;
(b)trade mark number 1906026 for the mark
(Registered Jazz Corner Café device mark) (with a filing date of 9 February 2018) in relation to the same services as trade mark number 1893220.
I will refer to the registered trade marks owned by UOPL and STPL as the “Registered Jazz Corner marks”.
The evidence shows that STPL consistently refers to its business (in signage and promotional material) as “The Jazz Corner Café” (i.e. using the definite article as part of the name). JCHPL most frequently refers to its business (in signage and promotional material) as the “The Jazz Corner Hotel”, although on occasions it uses “Jazz Corner Hotel” (i.e. without the definite article). I will refer to it as The Jazz Corner Hotel to reflect the most common usage.
By its amended statement of claim, Swancom alleges that each of JCHPL, BBPL and STPL has infringed the Swancom marks by using, without the licence or authority of Swancom, the following trade marks (which I will collectively refer to as the “Jazz Corner marks”):
(a)THE JAZZ CORNER OF MELBOURNE and JAZZ CORNER OF MELBOURNE (Jazz Corner of Melbourne marks);
(b)THE JAZZ CORNER OF THE WORLD and JAZZ CORNER OF THE WORLD (Jazz Corner of the World marks);
(c)THE JAZZ CORNER HOTEL, JAZZ CORNER HOTEL and JAZZCORNERHOTEL (Jazz Corner Hotel marks); and
(d)THE JAZZ CORNER CAFÉ, JAZZ CORNER CAFÉ and THEJAZZCNRCAFE (Jazz Corner Café marks),
in Australia in relation to the following services (relevant services):
(e)services of organising, conducting, providing and providing information in relation to live music performances (live music services); and
(f)ticket booking and reservation services for live music performances (booking services).
In its closing submissions, Swancom placed sole reliance on s 120(1) of the Trade Marks Act 1995 (Cth) (TMA) and abandoned reliance on s 120(2) (which had been pleaded). Swancom also confined itself to an allegation that the Jazz Corner marks are deceptively similar to the Swancom marks and abandoned the allegation that the marks are substantially identical (which had been pleaded).
Swancom also alleges that:
(a)JCHPL, BBPL and STPL have engaged in a concerted and agreed common action being a joint marketing campaign to promote the services offered and provided by each of them including the live music services provided by BBPL and the booking services provided by JCHPL; and
(b)in furtherance of the concerted and agreed common action, one or more of JCHPL, BBPL and STPL has used, without the licence or authority of Swancom, the Jazz Corner marks in relation to the music venue services provided by BBPL and the booking services provided by JCHPL,
and that each of JCHPL, BBPL and STPL are joint tortfeasors in the trade mark infringements committed by the others in furtherance of the concerted and agreed common action.
Swancom further alleges that Mr Dadon is a joint tortfeasor in the trade mark infringements committed by each of JCHPL, BBPL and STPL on the basis that he has:
(a)directed or procured the infringing conduct of JCHPL, BBPL and STPL;
(b)been involved in invading Swancom's rights;
(c)had a close personal involvement in the infringing acts of JCHPL, BBPL and STPL;
(d)made the torts of JCHPL, BBPL and STPL his own; and/or
(e)used JCHPL, BBPL and STPL as an instrument of his own wrong.
Swancom seeks a range of remedies for the alleged infringing conduct including declaratory relief, injunctive relief, corrective advertising and an order for damages pursuant to section 126(1) of the TMA and an order for additional damages pursuant to sections 126(2) of the TMA or, at Swancom's election, an account of profits.
Finally, Swancom also seeks the cancellation or amendment of the Registered Jazz Corner marks under s 88(2)(a) of the TMA on the basis that they could have been opposed under ss 57 and 44(2) for being substantially identical with or deceptively similar to one or more of the Swancom marks which have been registered from an earlier priority date in respect of the same or similar services.

By their second further amended defence, the respondents deny infringement of the Swancom marks on the following bases:
(a)first, the respondents deny that they have used the Jazz Corner marks in relation to the services in respect of which the Swancom marks are registered;
(b)second, the respondents deny that the Jazz Corner marks are deceptively similar to the Swancom marks;
(c)third, the respondents deny that they have used the Jazz Corner of Melbourne marks or the Jazz Corner of the World marks as trade marks;
(d)fourth, the respondents contend that any use of the terms “Jazz Corner of the World” and “Jazz Corner of Melbourne” is use in good faith to indicate a characteristic of the services each provides, namely that the vicinity of the building from which each of JCHPL, BBPL and STPL operates is a pre-eminent centre for jazz music and culture associated with jazz music, and thereby satisfies s 122(1)(b)(i) of the TMA;
(e)fifth, the respondents contend that they would be entitled to obtain registration of the terms “Jazz Corner of Melbourne” and “Jazz Corner of the World” and the use of those terms thereby satisfies s 122(1)(fa) of the TMA; and
(f)sixth, the respondents contend that their use of the Registered Jazz Corner marks is the exercise of rights granted to them under the TMA and thereby satisfies s 122(1)(e) of the TMA.
Mr Dadon denies that he is a joint tortfeasor.
The respondents further deny that the Registered Jazz Corner marks are liable to be cancelled or amended under s 88(2)(a) and also place reliance on the matters in s 44(3)(a) and (b) of the TMA, namely that because of honest concurrent use of the marks or because of some other circumstance, those marks ought not be cancelled or amended.
JCHPL has also brought a cross-claim against Swancom under s 88(1)(a) of the TMA seeking rectification of the Register by cancellation of the Swancom marks in respect of the registered services in class 41. JCHPL relies on two principal grounds:
(a)first, relying on ss 88(2)(a) and 41 of the TMA, JCHPL alleges that the Swancom marks are not capable of distinguishing Swancom’s services; and
(b)second, relying on s 88(2)(c) of the TMA, JCHPL alleges that the use of the Swancom marks is likely to deceive or cause confusion.
Swancom denies those allegations and, in the alternative, contends that the Court should not cancel the Swancom marks in the exercise of the Court’s discretion.
The trial was limited to issues of trade mark validity, infringement, injunctive relief and declaratory relief, with the issue of pecuniary relief to be heard and determined separately. Evidence was heard on 16 and 17 March 2020. On 26 March 2020, I made various evidentiary rulings: Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2020] FCA 396; 153 IPR 1. The parties agreed to rely on written closing submissions, the last of which were filed on 3 April 2020.
For the reasons that follow, I dismiss Swancom’s application, including its application for cancellation or amendment of the Registered Jazz Corner marks. In relation to JCHPL’s cross-claim for cancellation of the Swancom marks in respect of the registered services in class 41, I dismiss the claim in respect of the CORNER HOTEL and the CORNER PRESENTS marks. In relation to the CORNER and THE CORNER marks, the parties will be afforded an opportunity to make further submissions on the question whether the registration of those marks in respect of services in class 41 should be amended, or a condition or limitation should be entered on the registration, to preserve the freedom of hotels, cafés, bars and restaurants, who may provide ancillary entertainment services (for example, free live music or sporting events shown on large screens) to use the word “corner” in their trading name.
B. OVERVIEW OF EVIDENCE
Evidence in the proceeding was given primarily by way of affidavit with relatively confined cross-examination. No challenge was made to the credit of any of the witnesses who were cross-examined, and no material challenge was made to their reliability. Documentary evidence was largely exhibited to the affidavits, and a small number of additional documents were tendered.
During the course of the applicant's opening submissions, senior counsel for the applicant, aided by a solicitor for the applicant, presented to the Court a live scroll-through view of certain pages of the website appearing at (The Jazz Corner Hotel website). Screenshots were made of the pages of the website that the Court was taken to and, with the agreement of the respondents, those screenshots were exhibited to an affidavit of Anthony Watson (a partner at the firm of K&L Gates, solicitors for the applicant) affirmed 19 March 2020.
In addition, on the application of the respondents and pursuant to rule 14.03 of the Federal Court Rules 2011 (Cth), the Court conducted a view of the businesses conducted by each of the first to third respondents at the William Street building on the morning of 17 March 2020. A video recording of the view was made by Mr Watson and was exhibited to his affidavit of 19 March 2020. A video recording was also made by Havva Celik, a legal representative of the respondents, and was exhibited to her affidavit sworn 19 March 2020.
Swancom adduced evidence from the following witnesses:
(a)Timothy Northeast is the managing director of Swancom. Mr Northeast affirmed two affidavits dated 11 December 2019 and 26 February 2020. He gave evidence about the history of the Corner Hotel, its acquisition by Swancom, its operations under the ownership of Swancom and the use of the Swancom marks. Mr Northeast also gave evidence about bands and musicians that have performed at both the Corner Hotel and Bird’s Basement in Melbourne. Mr Northeast was cross-examined.
(b)Fiona Duncan has worked in the Australian music industry for over 32 years, primarily as a general manager for various bands and musicians, including Spiderbait, The Breadmakers, Spazzys and The Puritans. Ms Duncan affirmed an affidavit dated 21 November 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Ms Duncan was cross-examined.
(c)Richard Moffat has worked in the Australian music industry for over 30 years, primarily working as a “Booker”, booking live music venues in Melbourne for artists to perform at and, since 2000, as a “Festival Programmer”, which involves booking artists to perform at live music festivals around Australia. Mr Moffatt affirmed an affidavit dated 26 November 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Mr Moffat was cross-examined.
(d)James Young has worked in the Australian music industry for over 35 years, principally as an owner/operator of live music venues, but also as a breakfast show presenter for Melbourne community station Triple R from 1990 to 1995, and later as a programmer for that station from 1995 to 1998, a booking agent for artists to perform at third party venues and a manager for various bands and artists. Mr Young affirmed an affidavit dated 4 December 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Mr Young was cross-examined.
(e)Leigh Treweek is a publisher with over 24 years' experience in the music industry. Since 2015, Mr Treweek has operated a music management business called "Handshake Management", working with a number of artists. Since 2018, Mr Treweek has also owned and worked in a business called "Handshake Media", which publishes one of Australia's largest music media publications called "The Music" and which has over 2.2 million subscribers. Prior to that, Mr Treweek was a director of Street Press Australia which owned Impress Magazine, which also included a comprehensive Victorian gig guide. Mr Treweek affirmed an affidavit dated 12 December 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Mr Treweek was not cross-examined.
(f)Michael Thomas has been a professional musician for over 40 years perhaps most famously as the lead singer and lead guitarist of the band Weddings Parties Anything, a multi-award winning band that received four Australian Recording Industry Association Music Awards, and as a solo performer after the band's break-up in 1999. Mr Thomas has also been a part-owner in three hotels and live music venues over various periods from 1998, being the Merri Creek Tavern in Melbourne, the Yarra Hotel in Abbottsford and the Oxford Hotel in Perth. Mr Thomas estimated that he had performed at the Corner Hotel at least 25 times from late 1986 to 2008. Mr Thomas affirmed an affidavit dated 12 December 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Mr Thomas was cross-examined.
(g)Daniel Rogers is a music promoter with over 18 years' experience in that role in Australia and overseas. He owns and works in the following businesses which operate within the music industry in Australia: Lunatic Entertainment (a music management company which has been operating for 18 years and provides services to artists that include the organisation of tours and other live music events); Laneway Presents (a music touring company which has been operating for eight years and provides services to artists that includes promotion and touring in small live music venues through to arena and outdoor field concerts); St Jerome’s Laneway Festival (an annual music festival which has been operating for 16 years and is currently held in six cities across Australia and New Zealand); and Fairgrounds Festival (an annual music festival which has been operating for four years). Mr Rogers affirmed an affidavit dated 13 December 2019, giving opinion evidence about the reputation of the Corner Hotel as a music venue. Mr Rogers was not cross-examined.
(h)Shane Homan has been an Associate Professor in Media and Cultural Studies in the School of Media, Film and Journalism at Monash University since 2008, where he is also a member of the Culture, Media, Economy research group. He has been researching Australian music venues since 1994. Mr Homan affirmed an affidavit dated 12 December 2019, giving opinion evidence about venues for live music in Melbourne and the role and reputation of the Corner Hotel in the live music industry. I admitted Mr Homan’s affidavit while reserving the assessment of the weight to be given to his evidence. As discussed further below, in my view Mr Homan’s evidence has limited significance to the issues to be determined in this proceeding. Mr Homan was cross‑examined.
(i)Leonard Hickey is a solicitor employed by the law firm K&L Gates, the solicitors for Swancom in the proceeding. Mr Hickey affirmed an affidavit dated 25 October 2019. Mr Hickey adduced evidence relating to the businesses conducted by the respondents including photographs of building signage, brochures and webpage screenshots. Mr Hickey was not cross-examined.
(j)Timothy Appleby is a solicitor employed by the law firm K&L Gates, the solicitors for Swancom in the proceeding. Mr Appleby affirmed an affidavit dated 26 February 2020. Mr Appleby gave evidence about the jazz club in New York which trades as "Birdland" and its use of the phrase "Jazz Corner of the World". Mr Appleby also gave evidence about Australian trade mark applications and registered trade marks that include the word "corner" or the words "the corner". Mr Appleby was not cross-examined.
The respondents adduced evidence from the following witnesses:
(a)Albert Dadon is director of each of the respondents, and describes himself as a businessman and musician. As Executive Chairman of Ubertas Group for over 17 years, he has been involved in property management and development including operating hotels and clubs. Under his stage name "Albare", Mr Dadon is a jazz guitarist and composer. He has recorded a number of albums including Midnight Blues (2007), After the Rain (2009), Travel Diary (2010), Long Way (2012), The Road Ahead (2013), 2 Decades of Jazz (2014), Only Human (2015) and Dream Time (2016). In 2002, Mr Dadon became Chair of the Melbourne International Jazz Festival and, in 2003, he founded the annual Australian Jazz Bell Awards. In 2008, Mr Dadon received an Order of Australia (AM) for service to the arts. Mr Dadon affirmed three affidavits dated 25 October 2019, 28 January 2020 and 17 February 2020. Mr Dadon gave evidence concerning the businesses conducted by the respondents. A considerable part of Mr Dadon’s evidence was directed to the reasons that he chose the trading names incorporating the use of the words “Jazz Corner” and “Bird’s Basement” in relation to the businesses conducted by the first to third respondents. Mr Dadon was cross‑examined.
(b)Simon Barr has been the Development Director of the Ubertas Group for 9 years. As part of his role, Mr Barr has day-to-day involvement in the operation of the businesses of each of the first to third respondents. Mr Barr affirmed an affidavit dated 13 December 2019, giving evidence concerning the physical signage and online marketing material used by the first to third respondents and their marketing expenditure. Mr Barr was not cross-examined.
(c)Jane Good is a legal representative of the respondents. Ms Good affirmed three affidavits dated 25 October 2019, 9 December 2019 and 20 February 2020. Amongst other things, Ms Good gave evidence concerning the use of the words “corner” and “corner hotel” in the course of trade. Ms Good was not cross-examined.
(d)Havva Celik is also a legal representative of the respondents. In addition to her affidavit sworn 19 March 2020 (referred to above), Ms Celik swore an affidavit dated 20 February 2020, giving evidence about her attendance at, and visual observations about, the business named "The Corner Hotel Alexandra" at 65 Grant Street, Alexandra in Victoria. Ms Celik was not cross-examined.
(e)Matthew Lagamba is a legal assistant in the casual employ of the solicitors for the respondents. Mr Lagamba affirmed an affidavit dated 20 February 2020, giving evidence about his attendance at, and visual observations about, various businesses trading under a name that included the word “corner”. Mr Lagamba was not cross‑examined.
C. FINDINGS OF FACT
C.1 The Corner Hotel
Prior to its acquisition by Swancom, the Corner Hotel had a long history as a live music venue. The venue was owned and operated by the Gale family and partners from the mid-1980s through to the mid-1990s. Live music was a strong focus of the business throughout this period, which included performances by notable artists including Mick Jagger and Dave Gilmour. Between 1993 and 1994, the business was briefly owned by Michael Geoghagen. Live music continued throughout this time. However, the business failed and the building came onto the market through a realisation sale in 1995. Swancom purchased the Corner Hotel business (principally goodwill) from the previous operator and took on a lease of the premises (the building was sold to another person).
As stated earlier, the Corner Hotel premises include the usual facilities associated with a public hotel (a front bar, a rooftop bar and restaurant and a number of other function rooms and other areas) as well as a live music area, known as the "bandroom", which can accommodate 750 to 800 patrons. The bandroom also has a bar serving drinks to customers during performances. However, the Corner Hotel does not provide accommodation services.
Under Swancom’s control, the Corner Hotel has attracted some of the best known Australian and international musical talent from a wide variety of genres. In his evidence, Mr Northeast listed some 68 well-known Australian and international acts that have performed at the Corner Hotel since 1995, including (as a sample): Ben Harper, Crowded House, Powderfinger, Weddings Parties Anything, Paul Kelly, Black Sorrows, Rene Geyer, Midnight Oil, The Living End, The Waifs, The White Stripes, John Butler Trio, You Am I, Dizzee Rascal, Killing Heidi, Hoodoo Gurus and Kasey Chambers. Many musicians have recorded live performances at the Corner Hotel for national and international releases on CD, DVD and digital albums. For example, Colin Hay, the lead singer from Men at Work, recorded a video of his performance at the Corner Hotel in 2010 and released a DVD of that recording entitled "LIVE at The Corner". Other artists that have released CDs titled “Live at the Corner Hotel” are Ash Grunwald and The Clutch in 2006, Jeff Martin and Something for Kate in 2008 and Bob Evans in 2009.
Further, since Swancom took over its operation in 1995, many noteworthy performances and events have happened at the Corner Hotel including:
(a)U2 recorded the film clip for their "Window in the Skies" single at the Corner Hotel in 2006;
(b)Crowded House chose the Corner Hotel as the venue for their final Melbourne shows in 1996 (a few days before the band played their televised goodbye show to the world on the steps of the Sydney Opera House) which was recorded and released as a DVD titled “Crowded House Live at The Corner”;
(c)Jack White of The White Stripes wrote the riff to the song "Seven Nation Army", which went on to become a number one hit in many countries, during a soundcheck at the Corner Hotel in 2002.
The Corner Hotel has won multiple industry awards including:
(a)Music Victoria Best Venue - 2013, 2014, 2015, 2016, 2017, 2018;
(b)National Live Music Awards Best Venue - 2016, 2019;
(c)AHA National Awards for Excellence Best Entertainment Venue - 2019; and
(d)AHA Victorian State Awards for Excellence Best Entertainment Venue - 2017, 2018, 2019.
Swancom previously operated a box office at the Corner Hotel for selling tickets to performances at the venue. Mr Northeast gave evidence that the box office also sold tickets to performances at another venue, the Northcote Social Club, of which he was also a part owner. However, as at the time of trial, Swancom no longer operated the physical box office. Tickets to performances at the Corner Hotel are now sold online through a third party ticketing service called Eventbrite, with the ticket being emailed to the customer. In the purchase transaction, the customer is diverted from the Corner Hotel website to the Eventbrite website to complete the sale and ticketing, and Swancom pays Eventbrite a commission on the sale for their services.
Swancom has for many years advertised the services it provides at and in relation to the Corner Hotel through a wide range of media including festival programs, radio, newspapers, magazines and posters. This advertising and promotion includes both the live music events at the Corner Hotel and the hospitality offering at the Corner Hotel. Mr Northeast’s affidavit exhibited a large sample of such advertising and promotional material. By reason of the challenge to the validity of the Swancom marks (which have different filing dates), it is necessary to have regard to the periods in which the Swancom marks have been used as trade marks and the manner and extent of their use.
The manner of Swancom’s use of the Swancom marks has not been consistent over time. As illustrated below, Swancom has used a graphic in conjunction with the CORNER mark, it has used a stylised version of the CORNER mark, and it has often added the word “Richmond” after the CORNER HOTEL mark. However, it has also used the Swancom marks on their own.
The Corner Hotel premises has a faded painted sign on its exterior stating CORNER HOTEL. Until about 2017, a prominent sign outside the hotel’s main entrance appeared as follows:
Mr Northeast said in cross-examination that the graphic displayed on the sign was in use before Swancom acquired the business and he did not know its origin or meaning. The evidence shows that both the graphic and the stylised rendering of the word “corner” were used by Swancom on signage, marketing material and business cards until at least 2017. However, the evidence shows that Swancom also used the words “corner” and “hotel” in plain text forms in marketing material.

Swancom has advertised the Corner Hotel on a national level in programs for The Big Day Out and Falls Festival. Mr Northeast exhibited a program for each of those festivals from 2010. The programs from that year show that Swancom used the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above.
Swancom has also advertised the Corner Hotel in Melbourne newspapers The Age and the Herald Sun as well as smaller local newspapers. Mr Northeast exhibited copies of such newspaper advertisements placed by Swancom in the period from June 1997 to September 2011. In those advertisements, Swancom used the CORNER, CORNER HOTEL and THE CORNER marks, sometimes followed by the word “Richmond”.
Swancom has produced posters and flyers to promote events and services offered at the Corner Hotel. Mr Northeast exhibited copies of such posters and flyers that Swancom has displayed at and distributed from the Corner Hotel. The earliest poster was used in 2009, with the other posters having been used in the period 2010 to 2014. The majority of the posters through to 2012 used the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above. The later posters (after 2012) typically used the CORNER mark in plain text form.
Swancom has placed advertisements promoting the Corner Hotel in various magazines, including: “Beat” which is a magazine that has a primary focus on Melbourne's live music scene; “InPress” which was a weekly street press that was published in Melbourne for many years until about 2013; “Rhythms” and “Time Out” (about which no evidence was given). Mr Northeast exhibited copies of such advertisements that have appeared in those magazine dating from 1996 through to 2013. In the advertisements in the 1990s, Swancom used the CORNER, CORNER HOTEL and THE CORNER marks in plain text form, sometimes followed by the word “Richmond”. In the mid-2000s, Swancom used the CORNER mark in stylised form, sometimes in conjunction with the graphic in similar manner to the signage depicted above. In the advertisements in the period from the late 2000s to 2013, Swancom used the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above.
Since at least 2005, Swancom has also sold merchandise, such as t-shirts, caps and stubby holders, to promote the Corner Hotel. Mr Northeast exhibited pictures of merchandise sold in the period 1996 to 2000 which bear the CORNER HOTEL mark, sometimes with the word “Richmond” added.
Tickets to events at the Corner Hotel have always included a reference to at least one of the Swancom marks. Similarly, menus for the food and drinks offerings at the Corner Hotel bear the name “Corner” (generally in the stylised form, and sometimes with the graphic added).
Since at least 2001, Swancom has operated a website with the domain name to promote the Corner Hotel and the services Swancom provides at and in relation to the Corner Hotel (the Corner Hotel website). Among other things, the Corner Hotel website includes information about the entertainment and live music performances held at the Corner Hotel, the food and drinks offering available, copies of marketing materials and links to merchandise which is available for purchase. Mr Northeast exhibited screenshots of pages of the website from 2011. The screenshots depict the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above.
Swancom has an email subscription list of over 100,000 subscribers which includes a significant number of interstate and international subscribers. Swancom sends regular newsletter emails to these subscribers to promote events and services at the Corner Hotel. Mr Northeast exhibited copies of such promotional banners and material which had been sent between 2011 and 2014. The copies showed that, on some occasions, Swancom used the CORNER mark in plain text format and, on other occasions, Swancom used the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above.
Since at least 2008, Swancom has operated a Facebook page for the Corner Hotel. In or around 2012, the name of this page was changed to “Corner Presents” and continued as until in or around 2016. The page was primarily designed to promote music performances at the Corner Hotel and at venues operated by related and non‑related companies of Swancom. Mr Northeast gave evidence that that business ceased in about 2016 and that the CORNER PRESENTS mark has not been used since that time.
Since about late 2013, Swancom has also operated a separate Facebook page for the Corner Hotel at The Corner Hotel Facebook page promotes the services provided at the Corner Hotel generally and includes sections which display the Corner Hotel's food menu and beer list. Mr Northeast exhibited screenshots of Facebook pages in the period 2011 to 2014. The screenshots from 2011 show that Swancom displayed the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above. The screenshots from 2013 and 2014 show that Swancom displayed the CORNER HOTEL mark in conjunction with a new device as follows:
Since 11 May 2011, Swancom has operated an Instagram page at which has over 19,000 "followers". Mr Northeast exhibited screenshots of Instagram pages in the period 2013 to 2018. The screenshots show that Swancom displayed the CORNER HOTEL mark in conjunction with the new device depicted above.
From between 2008 and 2016, Swancom also operated a Twitter page which, as at around 2011, had nearly 3,000 "followers". Mr Northeast exhibited a screenshot of a Twitter page taken in 2011. The screenshot shows that Swancom displayed the CORNER mark in stylised form and in conjunction with the graphic in similar manner to the signage depicted above.
In his evidence, Mr Northeast also referred to the use of tour posters, displayed in public areas, to promote upcoming performances by touring artists. Tour posters for national tours by local and international artists often state all of the venues at which the artists will be playing in Australia as part of their tour. Mr Northeast exhibited a number of such tour posters in the period 2000 to 2013 which listed the Corner Hotel as one of the venues at which the artist was to perform.
Over the years, the Corner Hotel has regularly been the subject of articles published in the mainstream and music media. Mr Northeast exhibited articles published from 2005 to 2018 in a range of publications including The Age and Herald Sun Melbourne newspapers, the Sydney Morning Herald newspaper and various music and entertainment publications including Beat, Inpress, Weekend Notes, Music Feeds and Broadsheet magazine. In these articles, the Corner Hotel is usually referred to as the “Corner Hotel". On some occasions it is referred to as “Melbourne’s Corner Hotel” or “Richmond’s Corner Hotel” (or grammatical variations of such phrases).
Mr Northeast gave confidential evidence of Swancom’s marketing expenditure from the 2006 financial year to the 2018 financial year. It is unnecessary to refer to the precise figures, but the expenditure is a substantial sum.
Each of the music industry witnesses, Ms Duncan, Mr Moffat, Mr Young, Mr Treweek, Mr Thomas and Mr Rogers gave consistent evidence about the reputation of the Corner Hotel. Their evidence was that the Corner Hotel has a very strong brand and reputation as one of the best and most well-known medium-to-large size live music venues in Australia. Mr Moffat added that the Corner Hotel balances the atmosphere of a pub (meaning a venue with a public bar) with a highly professional and sophisticated music performance venue. Mr Rogers and Mr Treweek both deposed that, because of its reputation as one of the best live music venues in Australia, the Corner Hotel has been one of the first venues considered by them when booking shows for an act that can draw a crowd of approximately 1,000 people in Melbourne and, if an artist has played at the Corner Hotel, they would use that in the promotion of the artist as it is indicative of that artist's success. Each of those witnesses gave evidence that, in the years in which they have worked in the live music industry, they have never heard of or become aware of another venue or business providing live or recorded music trading under the names "The Corner", "The Corner Hotel" or a name incorporating the word "corner".
Each of the music industry witnesses has extensive experience in the live music industry as musicians, managers, booking agents and promoters. I accept their evidence as indicative of the reputation of the Corner Hotel within the live music industry. While their evidence was given from their perspective as persons working within the live music industry, necessarily their perspective is reflective of the reputation of the Corner Hotel to that section of the public who attend live music performances of the kind typically staged at the Corner Hotel.
Mr Northeast and other witnesses called on behalf of the applicant were cross-examined about the styles or genres of musical acts that typically performed at the Corner Hotel and for which the Corner Hotel had gained a reputation. The witnesses referred to genres such as rock, punk, grunge, metal, roots and folk, and many variations on those genres, and provided broad descriptions of the typical characteristics of those genres. It is not necessary to dwell on the differences between those genres. It is sufficient to observe that the evidence showed that a reasonably wide variety of genres of bands and solo artists have performed at the Corner Hotel. Mr Northeast resisted the suggestion that the Corner Hotel is identified as a rock venue, and said that the Corner Hotel positions itself in the market as a live music venue catering to all genres of music. In my view, that is going too far. The evidence showed that the Corner Hotel has a reputation as a live music venue for bands and solo artists within the wide spectrum of popular musical genres that emerged from the twentieth century, from the roots of folk, blues and jazz music through to rock music in all its forms, variants and offshoots. In respect of jazz, Mr Northeast referred to a number of jazz bands or musicians that have performed at the Corner Hotel including The Necks, Marceo Parker, Trombone Shorty and Virgil Donati.
Mr Homan is an Associate Professor in Media and Cultural Studies in the School of Media, Film and Journalism at Monash University and gave expert evidence about the reputation of the Corner Hotel and its role in the music industry “infrastructure” in Melbourne. Mr Homan said that the Corner Hotel enjoyed a reputation as a music “incubator”, providing local Melbourne bands with visibility in local music pub circuits, a venue for fans of different musical genres or sub-genres and a venue for international acts. Mr Homan gave lengthy and somewhat esoteric descriptions of the “incubator” role of music venues and different music “scenes”. He also recited the music awards received by the Corner Hotel and its reference in Government and music industry reports. Mr Homan’s evidence generally confirmed the opinions expressed by the music industry witnesses, but did not take that evidence much further.
Mr Homan agreed in cross-examination that the Corner Hotel venue is closely associated with Richmond and is identified by music fans as being located in Richmond. A number of publications in evidence, including press articles, referred to the “Corner Hotel in Richmond”. Mr Homan also agreed that other similar live music venues in Melbourne are also associated with particular suburbs of Melbourne, including the Hotel Espy (a colloquial abbreviation for the Hotel Esplanade) in St Kilda and the Northcote Social Club in Northcote. Mr Northeast agreed in evidence that the Corner Hotel has, from time to time, advertised itself as being “The Corner Hotel Richmond” and a number of such advertisements were adduced in evidence. However, Mr Northeast did not accept that the hotel was closely associated with Richmond. He said that many people would associate the hotel with Richmond but others would not know its location.
Overall, I am satisfied on the evidence that the Corner Hotel has a strong reputation in Melbourne and beyond as a venue for professional live music performances with the following characteristics:
(a)the venue is located in Richmond;
(b)the venue is medium size (for about 800 people);
(c)the venue is in a hotel setting where patrons usually stand to watch and listen to the performance and alcoholic drinks can be purchased during the performance; and
(d)the styles of music performed at the venue are within the wide spectrum of popular musical genres that emerged from the twentieth century, from the roots of folk, blues and jazz music through to rock music in all its forms.
I am satisfied that that reputation existed as at the filing date for the earliest Swancom mark, but also that the reputation has continued to grow in the years subsequent to the filing date.
The following business activities are intrinsic to the conduct of a business providing a venue for professional live music performances: booking bands and artists to perform on specific dates; marketing and promoting the performance of the bands and artists on the given dates; selling tickets to the performances; and operating the venue for the performances, including providing all necessary sound equipment and personnel, safety and security personnel, bar staff and cleaning staff.
I consider below the question whether and to what extent the Swancom marks are inherently adapted to distinguish the services in respect of which the marks are registered and whether, as at their respective filing dates, the marks did distinguish or would become capable of distinguishing those services through use or other circumstances.
C.2 Use of the word “corner” in connection with hotels, bars and cafés
I take judicial notice of the fact that, in Australia, hotels or, more colloquially, “pubs” (a business licensed to serve alcoholic drinks on the premises) are often located on street corners. An article published in the online publication “Commercial Real Estate” on 4 March 2018 by Melissa Howard claimed that “69 per cent of our pubs are still on corner blocks”. The source of the figure was not provided and I place no reliance on the accuracy of that figure. Nevertheless, I accept as a fact that hotels often occupy a street corner. The respondents submitted that the reasons for that phenomenon included the business desire for prominence and visibility, as well as historical planning rules that required hotel premises to have a front or principal entrance that was separate from and in addition to the entrance to the bottle shop (in that respect, the respondents referred to s 30 of the Act to consolidate and amend the Laws relating to the Licensing of Public Houses and the Sale of Fermented and Spirituous Liquors of 1876 in Victoria). The submission involved speculation and it is unnecessary to make any determination as to the reasons that hotels in Australia are often located on street corners.
It is therefore unsurprising that the evidence showed that the word “corner” has been applied to hotels as a business name in Australia since the 19^th century. In addition to the Corner Hotel located in Richmond which is operated by Swancom, the evidence included reference to the following hotels operating (at least) as at the following dates (listed in chronological order):

Name Location Date

Overland Corner Hotel SA 1860 - 2019

Corner Hotel Ballarat, Vic 1869 - 1911

Corner Hotel (which also had different names over time) Castlemaine, Vic 1869 - 1978

Corner Hotel (which also had different names over time) Alexandra, Vic 1873 - 2020

Corner Hotel St Kilda, Melbourne, Vic 1879 - 1967

Stone’s Corner Hotel Stone’s Corner, Brisbane, Qld 1888 - 2019

Sunny Corner Hotel Mudgee, NSW 1900

Corner Point Hotel Cuthero, NSW 1903

Corner Hotel Prahran, Melbourne, Vic 1925

Corner Hotel (which also had different names over time, and was renamed Brown’s Corner Hotel in 2017) Coburg, Melbourne, Vic 1853

Chardons Corner Hotel Annerly, Brisbane, Qld 2019

The Corner Pub Liverpool, NSW 2020

The evidence concerning the above hotels was limited and incomplete, particularly as to the period in which each of the hotels has been in existence and the use of different business names over time.
The evidence also shows that the word “corner” is commonly used in connection with hotels as a descriptive term, both by hotel businesses and by journalists writing about hotel businesses for the interest of consumers. The following examples of such uses were referred to in the evidence:
(a)On 6 January 2015, Jeni Wilson published an article in the online publication “Weekend Notes” titled “Iconic Rejuvenated Historic Corner Pubs in Melbourne”. The article recommended various hotels to visit, commencing with the following description:
You can easily imagine these corner pubs in their infancy. In the good old days when a Holden was the car to buy and a twenty was enough to shout all your mates, these iconic hotels would have been in their glory. Now these corner pubs have been rejuvenated with love, and have broad appeal and possibilities. Steeped with history, stories to tell and varied entertainment, these pubs are much more than a stop on the way home. Reviewed in no particular order, these pubs are well and truly worth a visit.
(b)In an article published in The Age newspaper in Melbourne on 31 March 2017, Clay Lucas wrote that:
Almost 30 of Melbourne's most historic corner pubs have closed in the last five years, as the city's property boom sweeps all before it.
Developers are increasingly targeting corner pub sites for apartment projects, particularly in the inner city, a special report by The Age has found, with 27 pubs going since 2013 - most of them on busy intersections.
(c)On 5 September 2019, Andrea McGinniss published an article in the Melbourne‑focussed online publication “Good Food” titled “Five of the best classic corner pubs to watch the footy in”. The article commented that most of the teams in the AFL finals that year were “interstate teams” (i.e. non-Victorian) and asked:
So where are you going to watch it? Nervously from behind a cushion on the couch with a six pack and some dips and chips? Or at a classic corner Melbourne pub, over parmas and beers where you can cheer (or jeer) at the screen with your flock?
(d)In a similar vein, the website for the Market Hotel, located on the corner of Clarendon and Market Streets in South Melbourne, Victoria, describes itself as “a classic corner pub with a lot of heart”.
I also take judicial notice of the fact that, in Australia, hotels often provide entertainment to patrons, including viewing of live sporting events and live music. Mr Homan agreed in cross‑examination that “pubs” or public hotels often provide live music as part of the services of the business. However, I also accept the evidence given by Mr Northeast that there is a significant difference between a hotel providing entertainment to patrons in the form of a solo artist playing the guitar or piano, which entertainment is typically provided free of charge to patrons to attract their custom (for food and beverages), and a hotel conducting a professional live music venue where patrons attend to view the musical performance and must purchase a ticket to attend. An example of the former that was referred to in the evidence was The Corner Hotel in Alexandra, Victoria. Ms Celik deposed that, on 16 February 2020, she attended that hotel and observed that: the hotel is located on the corner of Grant Street and Goulburn Valley Highway in Alexandra; the hotel comprises a bar, restaurant and hotel; there were signs outside the hotel that state "The Corner Hotel" and "The Corner Hotel Alexandra”; there was a sign outside the hotel that states it offers live music, referred to on the sign as "Saturday Night Live"; and inside the hotel was a bar with a stage set up where live music can be performed. Ms Celik exhibited photographs of her observations. The photograph of the “stage” shows that it was a small raised platform suitable for a solo artist only. The Corner Hotel operated by Swancom is an example of the latter. Mr Homan and Mr Northeast agreed in cross-examination that there are other very well-known hotel venues around suburban Melbourne which provided similar music to the Corner Hotel, including the Hotel Espy in St Kilda, the Prince of Wales hotel in St Kilda and the Northcote Social Club in Northcote.

The evidence also showed that the word “corner” has been used in Melbourne in the name of bars and cafés that also provide entertainment. However, the evidence was very limited as to the nature of those businesses. The extent of the evidence was as follows:
(a)As at February 2020, a café and bar located in Kingston in the ACT named "Charlie's Corner Café and Bar" advertised, on a sign displayed at the premises, "Live music from 5pm" on "G& T Tuesdays".
(b)As at February 2020, a café located in Mentone in Victoria named "The Corner Store" offered a function room for events.
(c)As at February 2020, a café and bar located in Port Melbourne in Victoria named “The Corner Stone" advertised, on signs and flyers inside and outside the building, live music performances on Friday nights and every Saturday. A photograph inside the premises showed a small stage suitable for a solo artist.
C.3 Bird’s Basement, The Jazz Corner Hotel and The Jazz Corner Café
Bird’s Basement
As noted earlier, Mr Dadon is a businessman and musician. As Executive Chairman of Ubertas Group he has been involved in property management and development and he is also a jazz guitarist and composer.
Mr Dadon gave evidence that, as part of his experience in the entertainment industry, and as a jazz musician, he has a great deal of knowledge and experience of the jazz club in New York called Birdland, which is named after the famous jazz saxophonist Charlie Parker (who had the nickname “Bird”). Birdland in New York is well known in music circles around the world. Mr Dadon has performed at Birdland twice and has formed a business and personal relationship with Gianni Valenti, the owner of Birdland.
BBPL was incorporated in August 2015. At the date of incorporation, it had the name The Blue Basement Pty Ltd, but the name was changed to Bird’s Basement Pty Ltd on 19 January 2016. BBPL opened its jazz club called “Bird’s Basement” in the basement of the William Street building on 1 March 2016. It hosts local and international artists with an emphasis on jazz performance.
In an article published in the Financial Review on 23 October 2015, the reporter interviewed Albert Dadon and Gianni Valenti about the proposed jazz club then called “Blue Basement”. They explained that the Melbourne jazz club would have a “sister club” relationship with Birdland. Mr Dadon said that the club was a long-held dream of his and would fill a gap in Melbourne’s need for a good food and jazz venue. Screenshots of the Birdland website also show that Birdland has referred to Bird's Basement as “our Sister Club Down Under", displaying the logo of Bird's Basement. The venues have also exchanged jazz musicians to perform at both venues. Mr Dadon gave evidence that Bird's Basement seeks to be associated with the history and world-renowned reputation of Birdland.
BBPL is the owner of registered trade mark 1745565 (Bird’s Basement device mark) for the following mark:
(with a filing date of 11 January 2016) for services in class 41 (amongst other things, live music) and class 43 (amongst other things, provision of food and drink). The Bird’s Basement device mark is used prominently on signage and promotional material for Bird’s Basement jazz club, including brochures, website and social media accounts.
BBPL operates a website with the address (Bird’s Basement website) and also has Facebook, Twitter, Instagram and LinkedIn pages.
Mr Northeast reviewed Bird's Basement's Facebook events page, which provides a list of the bands and musicians that have performed, and are to perform, at Bird's Basement. Mr Northeast identified some 15 bands and musicians on the list that have also performed, or were to perform, at the Corner Hotel. Some of the performances at the Corner Hotel were many years ago (one dating back to 2001). Nevertheless, I accept Mr Northeast’s evidence that there is likely to be some competition between Swancom and BBPL in booking bands and musicians for their respective live music venues.
The Jazz Corner Hotel
JCHPL was incorporated on 5 October 2016. At the date of incorporation, it had the name The Charlie Parker Hotel Pty Ltd, but the name was changed to The Jazz Corner Hotel Pty Ltd on 30 January 2017. Mr Dadon gave evidence that the name “The Charlie Parker Hotel” was only a code name for the hotel he intended to establish in the William Street building and that he never intended to use that name as a trading name. That evidence is somewhat inconsistent with the fact that, on 6 October 2016, JCHPL (then called The Charlie Parker Hotel Pty Ltd) and UOPL filed an application to register the trade mark “The Charlie Parker Hotel” in class 43 (for accommodation services). An adverse report was generated on 16 January 2017 and, on 20 January 2017, UOPL filed an application to register “Jazz Corner Hotel” as a mark in class 43 (for accommodation services). As referred to below, that application was not accepted for registration (although the “Jazz Corner” word mark was subsequently filed and accepted). Also on 20 January 2017, the domain name was registered to be used for the proposed hotel website and the hotel logo was created (which is part of the Registered Jazz Corner Hotel device mark). As already noted, on 30 January 2017, JCHPL changed its name to The Jazz Corner Hotel. Mr Dadon did not recall the application for the trade mark “The Charlie Parker Hotel”. Despite Mr Dadon’s evidence, it seems probable that, for a short period, he or other persons within the Ubertas Group contemplated calling the hotel “The Charlie Parker Hotel”.
In or around February 2017, JCHPL created a Twitter page (twitter.com/jazzcornerhotel) and a Facebook page ( for marketing and promotional purposes. On 14 February 2017, UOPL filed an application to register The Jazz Corner Hotel device mark. In late February 2017, a “fact sheet” was disseminated to promote the opening of the hotel on 9 March 2017. The sheet stated, amongst other things:
Situated in Melbourne CBD opposite Flagstaff Gardens and in the corporate & legal precinct, The Jazz Corner Hotel is within walking distance of fabulous shopping, cosmopolitan food markets, sophisticated restaurants, specialist roaster cafes and of course, the world class live music space, Birds' Basement.
As can be seen, from its opening The Jazz Corner Hotel has cross-promoted Bird’s Basement jazz club. This is a central aspect of the applicant’s trade mark infringement case. BBPL has also cross-promoted the accommodation services provided at The Jazz Corner Hotel.
In his evidence, which I accept, Mr Dadon explained why he chose the name “Jazz Corner Hotel”. He choose the word “jazz” because he is passionate about jazz music, which is defined in Grove Music Online, a specialist dictionary published by Oxford University Press, as:
1) a musical tradition rooted in performing conventions that were introduced and developed early in the 20th century by African Americans; 2) a set of attitudes and assumptions brought to music-making, chief among them the notion of performance as a fluid creative process involving improvisation; and 3) a style characterized by syncopation, melodic and harmonic elements derived from the blues, cyclical formal structures and a supple rhythmic approach to phrasing known as swing.
Having opened Bird’s Basement, Mr Dadon wanted to combine his passion for jazz with a further business venture, namely a hotel with a jazz theme. He wanted to establish a particular identity for the hotel around the theme of jazz and the history of jazz and, in particular, in its associations with the jazz scene in New York. The word "jazz" was intended to convey to people what the focus of the hotel would be and Mr Dadon wanted the hotel to attract the same type of people that are attracted to listening to or watching live performances of jazz (at places such as Bird's Basement).
Mr Dadon chose the word "corner" for its two meanings. The first meaning was to identify a geographic attribute of the business, that it is located at, or near, a street corner. The second meaning was to provide a colloquial or localising feel to the operation of the business as one might associate with the idea of a "corner store", being a trading location which is friendly, accessible and familiar. Mr Dadon explained:
I believe the use of the term "corner" is a natural and obvious fit for JCHPL's businesses which trade from, or near, a street corner location, and in particular which are endeavouring to convey a sense of accessibility, and is well suited to the hospitality and entertainment businesses in question. The jazz form has an identity of informality and improvisation which readily connects with ideas of accessibility, which also accord with the friendly and engaging "corner'' image or description which JCHPL means to convey. It is simple and agreeable way to describe a business which trades from a corner, and which, in the case of the businesses of JCHPL, has a welcoming and engaging feel.
Mr Dadon also explained that the Birdland jazz club in New York has long referred to itself by the epithet “Jazz Corner of the World”. Birdland has a sign at the entrance to the club reading "Birdland, The Jazz Corner of the World” and the phrase also appears on the website for Birdland. The name “Jazz Corner Hotel” references that epithet. As discussed further below, the first to third respondents have also adopted the phrases "Jazz Corner of the World" and "Jazz Corner of Melbourne" to refer to the locality of their businesses as a means of referencing the connection and relationship with Birdland. Mr Dadon explained that the phrase is used to highlight that the William Street building from which the first to third respondents operate is a pre-eminent centre in Melbourne for jazz music (being Bird's Basement) and culture associated with jazz music (in particular, The Jazz Corner Hotel).
On 30 March 2017, IP Australia issued an examination report in respect of UOPL’s application to register the word mark “Jazz Corner Hotel” in class 43. The report cited two issues. The first, under s 41, concerned the descriptive nature of the words. The second, under s 44, concerned potential conflict with the applicant’s registered mark 1388154 for “CORNER HOTEL”. The report stated that UOPL’s proposed mark closely resembled the applicant’s registered mark and that the class 43 services for which UOPL sought registration were the same or similar to the class 43 services for which the applicant’s mark was registered. Shortly thereafter, on 19 April 2017, UOPL applied to register the word mark “Jazz Corner” in class 43 (for accommodation services), which mark became registered. The earlier application for “Jazz Corner Hotel” was allowed to lapse.
Mr Dadon deposed that he had no knowledge of the examiner’s report in respect of the application for “Jazz Corner Hotel” until this proceeding was commenced. Mr Dadon was challenged about that evidence in cross-examination. He agreed that, as at January 2017 when the application was filed, he had long experience as a director of companies applying for registration of trade marks and that it was common for his lawyers to undertake searches of the Trade Mark Register. Mr Dadon also accepted that there was no reason to doubt that his legal advisors brought the adverse examiner’s report to his attention when it was issued. I accept that it is likely that Mr Dadon was made aware of the adverse examiner’s report when it was issued, but that he had subsequently forgotten about it. It was put to Mr Dadon in cross-examination that he was so committed to using the name Jazz Corner Hotel to reference the Birdland jazz club that he did not care whether the name infringed the prior registration of “CORNER HOTEL”. Mr Dadon disagreed. He explained that he believed that the services being provided by The Jazz Corner Hotel, principally accommodation services, were in a different category to the services being provided by the Corner Hotel. Mr Dadon also deposed that he did not consider or intend that The Jazz Corner Hotel would have any connection or association with the Corner Hotel by reason of the use of the word "corner'' or by use of the word "hotel". I accept Mr Dadon’s evidence as to his beliefs and state of mind.
The Jazz Corner Café
STPL was incorporated on 18 May 2016. It operated a café called The Brother Thomas Café which was located on the street level of the William Street building with the street address 330 William Street. Since 26 September 2019, the café has been located on the mezzanine level of The Jazz Corner Hotel.
In December 2017 and January 2018, The Brother Thomas Café changed its name to The Jazz Corner Café. On 8 December 2017, the domain name “thejazzcornercafe.com” was registered to be used for the café website. On 15 January 2018, the Jazz Corner Café device mark was created. On 18 January 2018, the business name "The Jazz Corner Café" was registered. In or about March and April 2018, the STPL Facebook, Twitter and Instagram pages were rebranded from Brother Thomas Café to The Jazz Corner Café.
C.4 View of the business premises at the William Street building
As noted earlier, on 17 March 2020 a view was conducted of the business premises of each of the first to third respondents at the Williams Street building. Video recordings were taken of the view and adduced in evidence. The following signage and features of the businesses were observed during the view.
At the street front on William Street, the hotel displays numerous and prominent signage using the Registered Jazz Corner Hotel device mark. There is also signage using the Registered Jazz Corner Café device mark and the coffee cup device from that mark. Adjacent to the William Street building, as well as at the side and at the rear of the building, is prominent signage displaying the Bird’s Basement device mark with a statement “The Jazz Corner of the World now extends to Melbourne”. As stated earlier, the principal patron’s entrance to Bird’s Basement jazz club is at the rear of the building in Singer’s Lane. The jazz club has a band stage and tables for patrons to be seated as they watch a musical performance. There is a lift for access to the jazz club from the ground floor of the hotel. The evidence indicated that the lift was used for hotel guests attending the jazz club who had restricted mobility.
Various walls of The Jazz Corner Hotel are decorated with a mosaic of jazz album covers. The Registered Jazz Corner Hotel device mark is displayed prominently in the hotel reception area. A ground floor café adjacent to the hotel reception has video screens showing recorded musical performances from Bird’s Basement. The Jazz Corner Café is located on the first floor or mezzanine level of the hotel. Again, sections of the walls of the café are adorned with a mosaic of jazz album covers.
A hotel room that was viewed had artwork and furnishings that referenced jazz music, including a mosaic of jazz album covers on the wall and on the bed spread and a framed saxophone as artwork. The bed head depicted a stylised version of the Bird’s Basement device mark and a chair cushion depicted the bird device from the Bird’s Basement device mark.
C.5 Use of the Jazz Corner marks by JCHPL
From February 2017, JCHPL began marketing and promoting The Jazz Corner Hotel, The Jazz Corner Café and Bird’s Basement.
The Jazz Corner Hotel website prominently depicts the Registered Jazz Corner Hotel device mark. The home page contains pictures of a hotel room and the hotel reception and contains the following description of the hotel under the heading “Stay in the heart of Melbourne”:
"Calling all finger-snapping, horn-blowing hepcats looking for a comfortable crash pad where they can stretch, luxuriate, play and stay in the heart of Melbourne. There is a new boutique apartment hotel in town. Drum roll, please ... Welcome to The Jazz Corner Hotel.
If you like to be close to the action, with the birds flying high and the sun in the sky - yeah, we know how you feel (thank you Nina Simone) - The Jazz Corner Hotel is the scene for you.
Situated in the heart of Australia's hippest city and opposite Flagstaff Gardens, The Jazz Corner Hotel is within walking distance of fabulous shopping, cosmopolitan food markets, sophisticated restaurants, the iconic MCG and Etihad, specialist roaster cafes and, of course, the world-class live music space, Bird's Basement.
The website principally offers rooms at the hotel, as well as ancillary services such as breakfast. The website also offers accommodation packages that include a show at Bird’s Basement. The website also separately promotes activities in Melbourne (for example, a visit to the Queen Victoria market which is a short walk from the hotel) as well as performances at Bird’s Basement. In respect of the latter, the website states:
No stay at The Jazz Corner Hotel is complete without an evening listening to the best international and local jazz musicians at the acclaimed bird’s BASEMENT.
A partner venue to New York’s Birdland, the famous club inspired by Charlie ‘Bird’ Parker – he was also the original headliner – bird’s BASEMENT is the ultimate place to see live music down under.
bird’s BASEMENT is our acclaimed 200-seat live jazz venue. Find out who’s playing during your stay and ‘doo-bop’ on down for a drink or dinner and a show at bird’s BASEMENT. Just make sure you book – the tickets can be charged to your room account.
The website home page also has a link at the top of the page titled “Bird’s Basement” which takes the viewer to the Bird’s Basement website. A link at the top of the page titled “Shop & Dine” displays a page of the website with descriptions of The Jazz Corner Café and Bird’s Basement with the by-line “Relax in our modern jazz bar”.
Screenshots of The Jazz Corner Hotel’s Facebook pages were adduced in evidence. The pages depict one of the hotel rooms and, under the heading “Our Story”, contains the statement:
Striking a high note. The Jazz Corner Hotel is a brand new boutique hotel located in Melbourne, CBD…
The Facebook page has entries posted by JCHPL which promote Bird’s Basement such as:
With Bird's Basement in the building, we offer a true musical experience
and
Cindy Blackman Santana is playing tonight, tomorrow and Sunday at our jazz club Bird's Basement.
The Facebook page also provides information on forthcoming artists and performances at Bird’s Basement.
Screenshots of The Jazz Corner Hotel’s Twitter pages were also adduced in evidence. The pages also depict one of the hotel rooms and describe the business as follows:
There is a new boutique apartment hotel in town. Drum roll, please … welcome to the Jazz Corner Hotel.
Screenshots of The Jazz Corner Hotel’s Instagram pages depict photos of, amongst other things, the hotel reception, hotel rooms, guests in a room, the city skyline and musicians performing at Bird’s Basement.
Throughout March 2017, JCHPL erected a banner on the Tullamarine Freeway in Melbourne as depicted below:
On 30 March 2017, JCHPL hosted a launch party for The Jazz Corner Hotel held at the mezzanine of the Skybird Restaurant. The party was referred to in the “social” pages of the Herald Sun (a Melbourne daily newspaper) on 2 April 2017 with the columnist stating:
The Jazz Corner Hotel struck the right note for its official opening on Thursday night. The stylish boutique property is on William St opposite the Flagstaff Gardens and, conveniently for music aficionados, above Bird’s Basement Jazz venue.
jazzcornerhotel.com
An article reviewing The Jazz Corner Hotel entitled "Cool for cats" was published on 6-7 May 2017 in The Weekend Australian Magazine. The article stated:
The Jazz Corner Hotel sits directly above Bird’s Basement, a subterranean music club that opened last year on the north-western edge of Melbourne’s CBD and features live bands most nights. The club and hotel are the brainchild of Moroccan-born property developer Albert Dadon, who enjoys a side career as a smooth-jazz guitarist (two professions rarely combined, even in the same sentence). Every room in the hotel features a montage of classic post-war jazz album sleeves as a design motif, but that's pretty much the extent of the 1950s hep factor. The hotel actually occupies several floors of a modern high-rise that's also home to the Oaks Hotel, which has a separate entrance.

It must be accepted that the word “jazz” has a descriptive meaning. However, in comparison to the words “corner” and “hotel”, it is a word that leaves a more striking impression. That is for two reasons. First, it is less commonly used, particularly in the hotel and hospitality industry (there being no evidence of other use in the trade). Second, the word has an evocative resonance because jazz music itself (whether it is appreciated or disliked) is evocative. As a musical form, jazz uses melodic and harmonic elements derived from the blues (including the dissonant and expressive “blue” notes, classically the flattened third, fifth and seventh notes in the major scale), syncopated rhythms and is marked by improvisation in which the music is created or developed during performance. I consider that ordinary members of the public should be taken to be familiar with the overall style of jazz music, even if they are not familiar with the musical techniques that give jazz its distinctive style. The commonly used adjective “jazzy”, derived from the noun “jazz”, means bright, colourful or showy, reflecting the recognised characteristics of jazz music.
The addition of the word “jazz” to the word “corner” or the words “corner hotel” gives the composite phrase a distinct sound and meaning. In my view, attention is immediately drawn to the word “jazz” and the words “corner” or “corner hotel” assume a secondary role in the phrase. The name “Jazz Corner” suggests a corner (or location or place) devoted to jazz music in some manner. The name “Jazz Corner Hotel” suggests a hotel named “Jazz Corner”, creating the same impression. As is the case with other adjectives added to the name “Corner”, I consider that the addition of “Jazz” is likely to create an impression or idea in the mind of an ordinary member of the public that is distinct from the impression or idea created by the CORNER or CORNER HOTEL marks.
The respondents placed reliance on the reasoning and conclusions of the Court in Health World Ltd v Shin-Sun Australia Pty Ltd [2005] FCA 5; 64 IPR 495 (Health World 2005), Health World2008 and Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862; 293 ALR 369 (Australia Post), upheld on appeal at [2013] FCAFC 153; 308 ALR 1. The cases raised similar issues to the present case, in that two marks shared common words but one of the marks had an added prefix. In Health World 2005 and Health World 2008, the marks were “Healthplus” and “Inner Health Plus”. In two decisions concerning trade mark opposition and rectification of the Register, the Federal Court concluded that the marks were not deceptively similar. In Australia Post, the marks were “Australia Post” and “Digital Post Australia”. Again, the Federal Court concluded that the marks were not deceptively similar. Each case turned on its own facts. In my view, the cases provide no particular guidance to the resolution of the present case other than as illustrations of the applicable principles.
In assessing deceptive similarity, I have taken into account two other matters, although I give them less weight than the matters already referred to. First, I accept the respondents’ submission that consumers of live music services can be expected to be discerning with their choices. Not only will consumers want to see the music they like, they can be expected to be knowledgeable and discerning about the venues they wish to attend to see a live music performance. Second, I take into account, in a limited way, that there is no evidence of actual consumer confusion.
I have not, however, placed any reliance on the following two matters. First, I have not placed any reliance on the respondents’ submission that consumers will encounter the Jazz Corner marks when looking for a hotel room. In my view, that consideration is not relevant to the statutory task of assessing the deceptive similarity of the marks in question. While relevant surrounding circumstances include the nature of the goods or services in question (here, live music), the usual form of trade in the goods and services and the characteristics of the consumers of those goods or services, it does not include the specific (and idiosyncratic) manner in which the alleged infringer has used the infringing mark. Second, I have not placed any reliance on the reputation associated with the Swancom marks. The evidence does not establish that the reputation of the Swancom marks rises to the level of notoriety where it becomes relevant to the statutory task.
Having regard to the above matters, I conclude that the risk of an ordinary member of the public being confused about whether the live music services promoted by the use of the Jazz Corner marks have an association with the Corner Hotel (or the Swancom marks more generally) to be remote (a mere possibility). For that reason, I conclude that the relevant Jazz Corner marks are not likely to deceive or cause confusion and, therefore, are not deceptively similar to the Swancom marks.
For that reason, I dismiss Swancom’s application for infringement of its marks. I will, nevertheless, consider the other defences raised by the respondents.
E.4 Is the respondents’ use of the terms “Jazz Corner of the World” and “Jazz Corner of Melbourne” use in good faith to indicate a characteristic of the services each provides (namely that the vicinity of the building from which each of JCHPL, BBPL and STPL operates is a pre-eminent centre for jazz music and culture associated with jazz music) within s 122(1)(b)(i) of the TMA?
Although I have concluded that the respondents’ use of the Jazz Corner of the World marks is not trade mark use (and is therefore a non-infringing use), for completeness I will consider whether the use of that mark (as well as the Jazz Corner of Melbourne marks) benefits from the defence under s 122(1)(b)(i).
Section 122(1)(b)(i) of the TMA provides as follows:
(1) In spite of section 120, a person does not infringe a registered trade mark when:
…
(b) the person uses a sign in good faith to indicate:
(i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services;
Section 122(1)(b) has a substantial legislative history which can be traced back to the introduction in the Patents, Designs and Trade Marks Act 1883 (UK) of a category of registration for “a word or words having no reference to the character or quality of the goods, and not being a geographical name”. The direct predecessor of s 120(1)(b) was s 44 of the Trade Marks Act 1905 (UK) which provided that “no registration under this Act shall interfere with any bona fide use by a person of his own name or place of business… or the use by any person of any bona fide description of the character or quality of his goods”. This provision was subsequently replicated in s 53A of the Trade Marks Act 1905 (Cth) and ultimately became s 64(1)(b) of the Trade Marks Act 1955 (Cth) and s 122(1)(b) of the current TMA.
Throughout its history, the provision has been construed narrowly. Despite different manifestations of the provision over the years, the legislative purpose has remained consistent: to protect the freedom of traders to use a word or words that refer to the character or quality of their goods or services for the purposes of description: see for example Eastman Photographic Materials Company Ltd v Comptroller-General of Patents, Designs and Trade Marks (the Solio Case) [1898] AC 571 at 580 per Lord Herschell; B Stone & Co Ltd v Steelace Manufacturing Co Ltd (1929) 46 RPC 406 at 417 per Lawrence LJ (with whom Lord Hanworth MR and Slesser LJ agreed); Mark Foy’s at 202 per Williams J (with whom Dixon CJ agreed); F.H. Faulding at 543-4 per McTiernan J. Of course, for the defence to have any application (as a defence to infringement), the use of the word must also constitute a use of the word as a trade mark (for otherwise, there would be no infringement and no need for the defence). However, the defence will only apply where the word is used in good faith for one of the stated descriptive purposes.
The defence has continued to be construed narrowly following its enactment as s 120(1)(b)(i) of the TMA. In Britt Allcroft (Thomas) LLC v Miller (t/as The Thomas Shop) [2000] 2000 FCA 699; 49 IPR 7, Mansfield J noted (at [66]) that the section was expressed in terms “which are a little wider than its legislative ancestor in s 64(1)(b)” but concluded (at [67]):
I do not consider that the words "kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services" in s 122(1)(b)(i) of the Trade Marks Act were intended to encompass the identification of the source of goods or services from the registered owner of a mark. The words in s 122(1)(b)(i) appear to have as their underlying element or genus some objective description of the goods or services or of a feature of the goods or services, by reference to commonly used and understood qualities (the common usage may of course have a technical or specialist connation in certain circumstances). Indicating that particular goods originate from the registered owner of a mark, or that they are of a particular brand the goodwill in which is enjoyed by another person or entity, in my judgment, goes beyond the type of characteristic which s 122(1)(b)(i) contemplates.
Recently, Burley J surveyed the relevant authorities in Bohemia Crystal at [291]-[299]. In light of the narrow construction given to the defence, his Honour observed that a question arises as to whether the defence under s 122(1)(b)(i) adds anything to the “trade mark use” issue under s 120. If a word is used descriptively, generally its use will not amount to trade mark use (and the defence will not arise). His Honour noted, though, that trade mark use is assessed objectively, whereas the defence in s 120(1)(b)(i) is directed to use “in good faith” to indicate geographical origin or some other characteristic of the goods or services in question. His Honour observed that “good faith” had been construed as meaning honest use without any intention to make use of the goodwill acquired by another trader.
Swancom submitted that neither of the Jazz Corner of Melbourne marks nor the Jazz Corner of the World marks indicate any commonly used or understood quality of the respondents’ services relating to live music performances and, as a result, are not within the ambit of s 120(1)(b)(i).
The respondents submitted that those marks indicate a characteristic of the services each provides, namely that the vicinity of the geographical block from which each of JCHPL, BBPL and STPL operates is a pre-eminent centre for jazz music and culture associated with jazz music. The respondents further submitted that those marks are used by each of JCHPL, BBPL and STPL in good faith to draw a connection between the famous Birdland Jazz Club in New York, as the “Jazz Corner of the World”, and the three businesses.
I accept Swancom’s submission and reject the respondents’ submission. In my view, the phrases “Jazz Corner of Melbourne” and “Jazz Corner of the World” do not involve the use of common words for a descriptive purpose. While the word “jazz” is descriptive of jazz music, the phrases as a whole are stylised expressions which are drawn from the Birdland jazz club in New York and adapted for use in Melbourne. The respondents have adopted the “Jazz Corner” branding in the Jazz Corner Hotel and Jazz Corner Café marks. As discussed earlier, the phrase “Jazz Corner of Melbourne” is used by the respondents as an umbrella trade mark to unify the Jazz Corner Hotel and Jazz Corner Café marks. As the authorities referred to above establish, the defence in s 120(1)(b)(i) applies to good faith descriptions of the characteristics of products and does not extend to phrases that are metaphorical or allusive in meaning. I consider that the phrases “Jazz Corner of Melbourne” and “Jazz Corner of the World” fall into the latter category.
E.5 Are the respondents entitled to obtain registration of the terms “Jazz Corner of Melbourne” and “Jazz Corner of the World” such that the use of those terms satisfies s 122(1)(fa) of the TMA?
Section 122(1)(fa) of the TMA provides as follows:
(1) In spite of section 120, a person does not infringe a registered trade mark when:
…
(fa) both:
(i) the person uses a trade mark that is substantially identical with, or deceptively similar to, the first-mentioned trade mark; and
(ii) the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it;
The notional entitlement to registration for the purposes of s 122(1)(fa) is to be assessed as at the commencement of the respondents’ infringing conduct: Anchorage Capital Partners at [212]-[214]. In the present case, the respondents commenced use of the “Jazz Corner of Melbourne” and “Jazz Corner of the World” phrases in 2016.
On the assumption (contrary to my findings) that the Jazz Corner of Melbourne and Jazz Corner of the World marks are deceptively similar to the Swancom marks, the prior Swancom marks would have prevented registration of the respondents’ marks under s 44 of the TMA and there was no prior use that could have enabled the respondents to achieve registration under s 44(3) or s 44(4). For that reason, the defence under s 122(1)(fa) would not have been available to the respondents.
E.6 Is the respondents’ use of the Registered Jazz Corner marks the exercise of rights granted to them under the TMA within s 122(1)(e) of the TMA?
Section 122(1)(e) of the TMA provides as follows:
(1) In spite of section 120, a person does not infringe a registered trade mark when:
…
(e) the person exercises a right to use a trade mark given to the person under this Act;
The respondents contend that, in relation to the Jazz Corner Hotel and Jazz Corner Café marks, they are entitled to avail themselves of the defence under s 122(1)(e) of the TMA because their use of those marks involves the authorised use of trade marks registered under the TMA.
I reject that contention for the following reasons.
Under s 20 of the TMA, registration of a trade mark only confers the right to use the trade mark in relation to the goods or services in respect of which the trade mark is registered. Accordingly, the defence under s 122(1)(e) only extends to that use.
The registered marks relied on by the respondents, being the Registered Jazz Corner Hotel device mark, the Registered Jazz Corner accommodation word mark, the Registered Jazz Corner Café device mark and the Registered Jazz Corner café word mark are registered in class 43 in respect of accommodation and food and drink services. Accordingly, the rights given to the respondents by those registrations extend to those services in class 43. The rights do not extend to live music services in class 41.
The respondents submitted that, to the extent that they are found to have used the Jazz Corner marks in relation to live music services, the provision of such services was merely ancillary to the services being provided under and by reference to the Registered Jazz Corner marks in class 43. I reject that submission. They are services of a different kind and in a different class.
E.7 Is Mr Dadon a joint tortfeasor?
It is well established that the infringement of a trade mark is tortious and the common law principles as to the liability of joint tortfeasors are applicable. A director of a company may be liable as a joint tortfeasor for infringement by the company. However, a director will not be personally liable where the director merely acts qua director. Liability may arise where the director is making use of the company as an instrument whereby infringement is perpetrated.
Having concluded that the Jazz Corner marks do not infringe the Swancom marks because they are not deceptively similar, there is a degree of artificiality in considering whether Mr Dadon is a joint tortfeasor on the assumption, contrary to my conclusion, that the Jazz Corner marks are deceptively similar to the Swancom marks. Nevertheless, I will state my conclusions on this issue in case the matter goes further.
The principles to be applied in determining whether a director has become a joint tortfeasor in the context of an infringement of intellectual property rights have been stated in various ways and are not easy to distil. The principles were discussed in two relatively recent Full Court decisions: Keller v LED Technologies Pty Ltd (2010) 185 FCR 449 (Keller) (which concerned the infringement of a registered design) and JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20; 329 ALR 625 (JR Consulting) (which concerned copyright infringement).
In Keller, the Full Court delivered three judgments. Emmett J stated the applicable principles as follows:
[83] A company cannot act other than through a natural person. In considering whether a natural person is a joint tortfeasor with a company, it is necessary to show something more than that the company acted through that person. Where a person is acting in the capacity of a director, the person will not be liable for the act of the company unless it can be shown that, in so acting, the director was doing something more than acting as a director. The person must do something that makes him or her, in addition to the company, an invader of the victim’s rights (see O’Brien v Dawson (1942) 66 CLR 18 at 323). The mere fact that a company is small and that the director has control over its affairs is not, of itself, sufficient to make the director a joint tortfeasor with the company (see Evans Ltd v Spritebrand (1985) 1 WLR 317 at 329).
[84] Infringement by a principal actor, of course, is an objective matter. For a director of a company to be held to be invading the rights of a victim of the company, by reason of the actions committed in the capacity of a director, there must be some mental element involved. Thus, in circumstances where a director can be shown to be making use of a corporation or company as an instrument whereby infringement is perpetrated, such that the director can be seen to be hiding behind the corporate veil, it may be thought that that director is going beyond actions performed merely in the capacity as director. If a company is merely the alter ego of a director, such that there is no real difference between the mind of the officer and the mind of the company, there may well be circumstances where it will be appropriate to conclude that the officer is invading the rights of a victim of the company.
Besanko J discussed the two tests known as the Performing Right Society test (the test formulated by Atkin LJ in Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1) and the Mentmore test (the test formulated by Le Dain J in the Canadian Federal Court of Appeal in Mentmore Manufacturing Co Ltd v National Merchandising Manufacturing Co Inc (1978) 89 DLR (3d) 195. His Honour observed in respect of the Performing Right Society test (at [272]) that the test of liability:
is that a director is liable as a joint tortfeasor where he or she has directed or procured the infringing acts by the company. It is the company which performs the tortious acts and a director is liable if he or she directs or procures it to do so. Sometimes the word “authorise” is also used. One thing is clear and that is that a director is not liable as a joint tortfeasor merely because he or she sits on the board of directors which allows or even “directs” the company to carry on a business during which the infringing acts are performed. Something more by way of personal involvement in the tortious acts is required.
In respect of the Mentmore test, his Honour said (at [273]) that the test of liability:
is that a director is liable as a joint tortfeasor only where he or she has engaged in the deliberate, wilful and knowing pursuit of a course of conduct that is likely to constitute infringement or which reflected an indifference to the risk of it. It is clear that, despite the use of the words “deliberate” and “knowing” in this test, it is not necessary to prove that the director knew the relevant acts were infringing acts.

His Honour discussed a number of Australian authorities that have considered both tests, and the advantages and disadvantages of each test, but concluded that none of the authorities had determined which test ought to be applied (at [290]). His Honour concluded (at [291]):
In my opinion, in considering a director’s potential liability as a joint tortfeasor, it is necessary to consider carefully the director’s involvement in the unlawful or infringing acts. A close personal involvement in the infringing acts by the director must be shown before he or she will be held liable. The director’s knowledge will be relevant. In theory, that knowledge may range from knowledge that the relevant acts are infringing acts to knowledge of an applicant’s registered designs to knowledge of acts carried out by others.
In the same case, Jessup J undertook a comprehensive survey of the authorities. In confronting the somewhat uncertain state of the law (in terms of applicable legal principle), his Honour observed that part of the difficulty in applying principles of joint liability in tort to company directors lies in reconciling two inherent aspects of corporations: the first is that a corporation is an artificial person which can only act through the agency of individuals, which includes its directors; the second is that it is a feature of limited liability that a director is not ordinarily liable for the wrongs of the company (at [400]-[403]). His Honour stated the principles that should be applied in determining liability as a joint tortfeasor as follows:
[404] …For a director to be liable because he or she directs or procures his or her company to commit a wrong, the context must be such that the director is effectively standing apart from the company and directing or procuring it as a separate entity. There must be a sense in which the director is using the company as the instrument of his or her own wrong. This is, as I have explained earlier, the original sense in which Atkin LJ’s words in Performing Right are to be understood, at least to the extent that they drew upon what Lord Buckmaster had earlier said in Rainham Chemical. …
[405] It will be seen from the foregoing that I agree substantially with so much of the judgments of Le Dain J in Mentmore Manufacturing, of Nourse J in White Horse and of Beazley J in Milpurrurru as make it a requirement of liability that the director should make the tort his or her own. Other courts have at times expressed reservations about this formula but, in my view, its utility lies in the focus it gives to an understanding of the principle of dual or multiple participation as I have attempted to explain it above. It would be a mistake to attempt to resolve cases by reference to a search for the moment in time when a director made the company’s wrongdoing his or her ‘own’. We are not here dealing with a species of property, or with ownership in any sense. However, in a situation in which the company-role and the personal-role of the director may be blurred, the formula does highlight the crucial distinction between acts which are done for and in the service of the company and acts which, in addition, are done in the director’s own personal capacity - a ‘non-company capacity’ as it were.
…
[407] …The point should not be whether the individual sought to be made liable can, or did, determine how the company might act, but whether there was a dimension to his or her role which was separate from the good faith discharge of his or her duties in the service of the company. If so, there will be a basis, in accordance with general principles, for making the individual liable because he or she was involved in a joint, wrongful enterprise with the company.
The applicable principles were considered again in JR Consulting. The Court delivered a single judgment. After a detailed survey of the authorities, including Keller, the Court concluded (at [350]-[351]):
[350] We suspect that there is ultimately not a great deal of difference between these lines of authority as the director must be shown to have directed or procured the tort and the conduct must, clearly enough, go beyond causing the company to take a commercial or business course of action or directing the company’s decision-making where both steps are the good faith and reasonable expression of the discharge of the duties and obligations of the director, as a director. The additional component required is a “close personal involvement” in the infringing conduct of the company and inevitably the quality or degree of that closeness will require careful examination on a case by case basis. That examination might show engagement by the director of the kind or at the threshold described by Finkelstein J in Root Quality at [146] (as earlier discussed) which would undoubtedly establish personal liability in the director or a less stringent degree of closeness (perhaps described as “reckless indifference” to the company’s unlawful civil wrong causing harm), yet sufficiently close to demonstrate conduct of the director going beyond simply guiding or directing a commercial course and engaging in (perhaps vigorously) decision-making within the company as a director.
[351] Ultimately, the question, on the facts, is what was the conduct of the director said to go beyond the proper role of director so as to descend into the realm of “close personal involvement”?
In support of its claim against Mr Dadon as a joint tortfeasor, Swancom relied on the following matters (which I accept are established by the evidence):
(a)Mr Dadon was the sole director and shareholder of each of JCHPL and BBPL at all material times.
(b)Mr Dadon accepted in cross-examination that he created those companies and used them as the vehicles to give effect to his long-held dream to open his own jazz club and jazz themed hotel. As part of that long-held dream, he has enthusiastically pursued the roles of conducting video interviews with famous international musicians and performing as a jazz guitarist, which reflects his personal passion for jazz music.
(c)Mr Dadon was personally involved in choosing the names “Jazz Corner Hotel” and “Jazz Corner of Melbourne” to be used by JCHPL and BBPL.
(d)As at 20 January 2017, when UOPL filed an application to register “Jazz Corner Hotel” as a mark in class 43 (for accommodation services), Mr Dadon had long experience as a director of companies applying for registration of trade marks, and was commonly assisted by firms of trade mark practitioners in making those applications. Mr Dadon confirmed that he had the advantage of proper searches of the Trade Marks Office database before he went ahead with the application that his company filed on 20 January 2017. Mr Dadon accepted in cross-examination that there was no reason to doubt that the adverse examiner’s report in respect of that application was brought to his attention, citing potential conflict with the earlier registration of CORNER HOTEL.
Swancom submitted that the evidence supports a conclusion that Mr Dadon was so personally committed to using the name “Jazz Corner Hotel” and “Jazz Corner Of Melbourne” that he simply did not care whether that might infringe the prior registration of CORNER HOTEL. I reject that submission. As set out earlier, I accept Mr Dadon’s evidence that he believed that the services being provided by The Jazz Corner Hotel, principally accommodation services, were in a different category to the services being provided by the Corner Hotel, principally live music services. I also accept Mr Dadon’s evidence that he did not consider or intend that The Jazz Corner Hotel would have any connection or association with the Corner Hotel.
In my view, Mr Dadon’s conduct does not render him liable as a joint tortfeasor with the respondent companies. While Mr Dadon was the relevant decision-maker in respect of the establishment of Bird’s Basement jazz Club, The Jazz Corner Hotel and The Jazz Corner Café and the adoption of the Jazz Corner marks, and the business decisions reflected his personal passion for jazz music (including as a professional jazz guitarist), I consider that all such decisions and actions were done in his capacity as a director. I accept Mr Dadon’s evidence that he had no intention to trade off the goodwill of the Corner Hotel, no desire to associate the respondents’ businesses with the Corner Hotel and no belief that the businesses would be so associated. A critical fact in that regard is that Mr Dadon called the jazz club Bird’s Basement, and that name was used prominently as the brand name for the jazz club. The company conducting the jazz club was given that name; it operated its website and social media accounts under that name; and it displayed signage with that name. The problem of potential trade mark infringement arose indirectly, primarily through the cross-promotion of Bird’s Basement by JCHPL. The evidence does not establish that Mr Dadon had such involvement in or responsibility for the manner and extent of that cross-promotion that he ought be regarded as a joint tortfeasor.
Accordingly, even if I had found that the Jazz Corner marks infringed the Swancom marks, I would not have found that Mr Dadon was a joint tortfeasor.
F. CANCELLATION OF THE REGISTERED JAZZ CORNER MARKS
Against the possibility that the Court upheld the respondents’ defence based on s 122(1)(e) of the TMA (exercise of rights under a registered trade mark), Swancom sought the cancellation or amendment of the Registered Jazz Corner marks. It did so under s 88(2)(a) of the TMA on the basis that they could have been opposed under ss 57 and 44(2) for being substantially identical with or deceptively similar to one or more of the Swancom marks which have been registered from an earlier priority date in respect of the same or similar services.
I dismiss that aspect of Swancom’s application for the following reasons.
First, for the reasons already given, the Registered Jazz Corner marks are not deceptively similar to the Swancom marks.
Second, for the reasons already given, a defence based on s 122(1)(e) of the TMA is not available to the respondents because the Registered Jazz Corner marks are not registered in respect of live music services, being the services in respect of which the Swancom marks are registered and which are relied on by Swancom in this proceeding.
Third, and as a corollary of the second reason, Swancom’s application was effectively to exclude live music services from the scope of the registration of the Registered Jazz Corner marks, but I have concluded that such services are not within the scope of the registration.
G. CONCLUSION
In conclusion, Swancom’s claim that the respondents have infringed the Swancom marks is dismissed, principally on the basis that the Jazz Corner marks used by the respondents are not deceptively similar to the Swancom marks. Swancom’s claim for cancellation or amendment of the Registered Jazz Corner marks under s 88(2)(a) of the TMA is also dismissed.
In relation to the claim by JCHPL for cancellation of the Swancom marks, the claim in respect of the CORNER HOTEL and the CORNER PRESENTS marks is dismissed. However, in relation to the CORNER and THE CORNER marks, the parties will be afforded an opportunity to make further submissions on the question whether the registration of those marks in respect of services in class 41 should be amended, or a condition or limitation should be entered on the registration, to preserve the freedom of hotels, cafés, bars and restaurants that may provide ancillary entertainment services (for example, free live music or sporting events shown on large screens), to use the word “corner” in their trading name.
The parties will also be afforded an opportunity to make submissions as to the award of costs of the proceeding.

I certify that the preceding two hundred and ninety-five (295) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice O'Bryan.
Associate:
Dated: 9 April 2021

SCHEDULE OF PARTIES

VID 330 of 2019

Respondents

Second Respondent:

BIRD'S BASEMENT PTY LTD ACN 607 922 609

Third Respondent:

SAINT THOMAS PTY LTD ACN 612 480 109

Fourth Respondent:

ALBERT DADON

File number(s):	VID 330 of 2019
Judgment of:	O’BRYAN J
Date of judgment:	9 April 2021
Catchwords:	TRADE MARKS – validity – whether “Corner Hotel” and “Corner” marks capable of distinguishing applicant’s services of conducting a live music venue within s 41 of the Trade Marks Act 1995 (Cth) – whether use of those marks likely to deceive or cause confusion within s 88(2)(c) – infringement – whether respondents infringed applicant’s marks by using the “Jazz Corner Hotel” name and associated names and brands as trade marks in relation to live music services – whether marks have been used as trade marks in relation to live music services – whether marks are deceptively similar to “Corner Hotel” and “Corner” within s 120(1) – whether use in good faith to indicate a characteristic of the services within s 122(1)(b)(i) – whether entitled to obtain registration of marks for the purposes of s 122(1)(fa) – whether use of registered marks is the exercise of rights granted under the Trade Marks Act 1995 (Cth) and thereby satisfies s 122(1)(e) – whether the corporate respondents are joint tortfeasors – whether individual respondent, as director of the corporate respondents, is a joint tortfeasor
Legislation:	Trade Marks Act 1995 (Cth) ss 7(1), 10, 25, 41, 41(3), 41(4), 44(2), 44(3)(a), 44(3)(b), 44(4), 57, 88(1)(a), 88(2)(a), 88(2)(c), 120(1), 120(2), 122(1)(b)(i), 122(1)(e), 122(1)(fa), 126(1), 126(2) Trade Marks Amendment Act 2006 (Cth) s 41 Federal Court Rules 2011 (Cth) r 14.03 Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Cases cited:	Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299; 83 IPR 210; Aldi Foods Pty Ltd v Moroccanoil Israel Ltd (2018) 261 FCR 301 Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514 Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511 Australian Meat Group v JBS Australia Pty Ltd(2018) 268 FCR 623 Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862; 293 ALR 369 Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 B Stone & Co Ltd v Steelace Manufacturing Co Ltd (1929) 46 RPC 406 Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235; 129 IPR 482 British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 Britt Allcroft (Thomas) LLC v Miller (t/as The Thomas Shop) [2000] FCA 699; 49 IPR 7 Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 CA Henschke v Rosemount Estates Pty Ltd [2000] FCA 1539; 52 IPR 42 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107 Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; 209 ALR 1 E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 Eastman Photographic Materials Company Ltd v Comptroller-General of Patents, Designs and Trade Marks (the Solio Case) [1898] AC 571 F.H. Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605; 76 IPR 161 Health World Ltd v Shin-Sun Australia Pty Ltd [2005] FCA 5; 64 IPR 495 Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100; 75 IPR 478 In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193; 377 ALR 116 Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20; 329 ALR 625 Keller v LED Technologies Pty Ltd (2010) 185 FCR 449 Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450 Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 McCorqhadale v Masterson [2004] FCA 1247; 63 IPR 582 Mentmore Manufacturing Co Ltd v National Merchandising Manufacturing Co Inc (1978) 89 DLR (3d) 195 MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 Oxford University Press v Registrar of Trade Marks (1990) 24 FCR 1 Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104 57 IPR 28 Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1 Re Bali Brassiere Co. Inc’s Registered Trade Mark; Re Berlei Ltd’s Application (1968) 118 CLR 128 Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 Shell Co of Australia Ltd v EssoStandard Oil (Aust) Ltd (1963) 109 CLR 407 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 Starr Partners Pty Ltd v Dev Prem Pty Ltd [2007] FCAFC 42; 71 IPR 459 Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2020] FCA 396; 153 IPR 1 Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 Trident Seafoods Corp v Trident Foods Pty Ltd [2019] FCAFC 100; 369 ALR 367 Unilever Aust Ltd v Karounos (2001) 113 FCR 322 Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCA 82; 150 IPR 11 Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 Woolworths Ltd v BP Plc (No 2) (2006) 154 FCR 97
Date of hearing:	16 – 17 March 2020
Date of last submissions:	3 April 2020
Registry:	Victoria
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area	Trade Marks
Category:	Catchwords
Number of paragraphs:	295
Counsel for the Applicant:	Mr E Heerey QC with Mr S Rebikoff
Solicitor for the Applicant:	K&L Gates
Counsel for the Respondents:	Mr C Golvan QC with Ms M Marcus
Solicitor for the Respondents:	Brand Partners Commercial Lawyers

ORDER MADE BY:	O’BRYAN J
DATE OF ORDER:	9 APRIL 2021

Name	Location	Date
Overland Corner Hotel	SA	1860 - 2019
Corner Hotel	Ballarat, Vic	1869 - 1911
Corner Hotel (which also had different names over time)	Castlemaine, Vic	1869 - 1978
Corner Hotel (which also had different names over time)	Alexandra, Vic	1873 - 2020
Corner Hotel	St Kilda, Melbourne, Vic	1879 - 1967
Stone’s Corner Hotel	Stone’s Corner, Brisbane, Qld	1888 - 2019
Sunny Corner Hotel	Mudgee, NSW	1900
Corner Point Hotel	Cuthero, NSW	1903
Corner Hotel	Prahran, Melbourne, Vic	1925
Corner Hotel (which also had different names over time, and was renamed Brown’s Corner Hotel in 2017)	Coburg, Melbourne, Vic	1853
Chardons Corner Hotel	Annerly, Brisbane, Qld	2019
The Corner Pub	Liverpool, NSW	2020

VID 330 of 2019
Respondents
Second Respondent:	BIRD'S BASEMENT PTY LTD ACN 607 922 609
Third Respondent:	SAINT THOMAS PTY LTD ACN 612 480 109
Fourth Respondent:	ALBERT DADON