Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 3)

Swancom Pty Ltd, the owner of several registered trademarks, filed an application seeking rectification of the Trade Marks Register to accurately reflect the services for which the trademarks were registered. The Jazz Corner Hotel Pty Ltd, the operator of a hotel, opposed the application. The dispute was heard by the Federal Court of Australia, which had to determine the appropriate form of order for rectifying the Register and the costs associated with the proceedings.

The legal issues before the Court were whether the rectification of the Register should be ordered in the form proposed by Swancom and what costs should be awarded to the parties. Swancom argued that the Register incorrectly listed the services for which its trademarks were registered, while The Jazz Corner Hotel contended that the rectification would cause it unnecessary expense and confusion.

The Court found that the rectification of the Register was appropriate to correct the services listed for the trademarks. The Court also determined that a consolidated costs order should be made, offsetting the costs entitlements of the parties. The Court directed the Registrar of Trade Marks to amend the class 41 services specified in respect of two trademarks and dismissed the cross-claim by the first respondent. The Court ordered that the applicant pay the respondents’ costs of the application and that the first respondent pay the applicant’s costs of the cross-claim. The costs were to be awarded in lump sums, with the quantum of the lump sums to be determined by a Registrar.

The Court made several orders to address the rectification of the Register and the costs associated with the proceedings. The Registrar of Trade Marks was directed to amend the class 41 services specified in respect of two trademarks. The first respondent's cross-claim was dismissed. The applicant was ordered to pay the respondents’ costs of the application, while the first respondent was ordered to pay the applicant’s costs of the cross-claim. The costs were to be awarded in lump sums, with the quantum of the lump sums to be determined by a Registrar.