Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd

Swancom Pty Ltd brought an action against The Jazz Corner Hotel Pty Ltd and others, alleging infringement of their registered trade marks by the respondents’ use of certain marks in relation to their businesses. The primary judge dismissed Swancom's claims for infringement, and the subsequent appeals against both the decision on the merits and the costs were dismissed by the Full Court. The central issue in this appeal was whether the primary judge had erred in his determination of deceptive similarity, specifically by not considering the factual distinctiveness of Swancom's marks at the time they were filed. The Full Court found no error in the primary judge's approach to the deceptive similarity test, noting that the focus should be on the notional consumer's imperfect recollection of the registered mark, rather than actual use or reputation. The court also addressed the costs issue, concluding that there was no error in how the primary judge had allocated the costs between the parties. The Full Court's reasoning was grounded in established principles of trade mark law, particularly the importance of the notional consumer's imperfect recollection of the registered mark in determining deceptive similarity.

In dismissing the appeal, the Full Court emphasised that the test for deceptive similarity is based on judicial estimation of the visual and aural impression created by each mark, considering the likely effect on the minds of likely customers. The court reaffirmed that the comparison is between the marks themselves and not the totality of the defendant's conduct, aligning with the principles set out in prior cases. The Full Court also noted that the primary judge's handling of the costs allocation was appropriate and did not establish any error. The final orders of the Full Court were to dismiss the appeal and for Swancom to pay the respondents' costs of the appeal, to be assessed if the parties could not agree on the amount.