Buildings and Precincts: Brand, Common Heritage or Geographical?
|Date:||30 July 2015|
Take Home Message
- Names of buildings and precincts are registrable as trade marks if they are sufficiently distinctive
- The name of a building and associated precinct should be registered as a trade mark for all services provided by the developer/owner and all the associated goods and services likely to be provided in association with the building
- The trade mark rights should be appropriately licensed to authorised users
- Trade mark registration does not prevent other traders, whether operating on- or off-site, from using the building/precinct name to indicate the location of their business or as a geographic identifier
- However unauthorised use of the building/precinct name as a trade mark could be infringement, passing off or breach the consumer protection legislation
In the matter of MID Sydney Pty Ltd v The Australian Tourism Co Ltd & Ors  FCA 185 (11 March 1998) the developer of the building called CHIFLEY TOWER and retail precinct called CHIFLEY PLAZA was the registered owner of CHIFLEY TOWER for leasing, building and property management services.
Australian Tourism wished to use CHIFLEY for renaming certain existing hotels and for a new hotel to be erected in Woolloomooloo. The question for the Court was whether use of CHIFLEY by Australian Tourism would amount to infringement, passing off and misleading or deceptive conduct in the face of trade mark rights in CHIFLEY TOWER.
The judge concluded that CHIFLEY TOWER referred to a building at the Chifley Square location in Sydney and the word “Chifley” had a geographical connotation referring to the square upon which the building was erected. It further concluded that the rights in the trade mark registrations of MID Sydney related to property management, while Australian Tourism provided hotel services, such that there was no infringement.
The fact that the building at Chifley Square was well known did not entitle MID Sydney to restrain Australian Tourism from using the name “Chifley” for operating a hotel.
In Mantra IP Pty Ltd v Spagnuolo  FCA 769 (19 July 2012), the Court considered whether a trade mark can be registered for services if it is also the name of the building from which the services are supplied.
The issue revolved around the high rise apartment building on the Gold Coast called Q1, which included a resort and café, spa, conference and business centre.
The Respondent owned apartments in the Q1 building and operated a holiday accommodation business called “Q1 Holidays Gold Coast”. He successfully opposed registration of Mantra’s marks for Q1 on basis that Q1 identified a location that had become part of the “common heritage”, and because many traders who had a connection with the building would want to use Q1 to promote their services.
Mantra appealed to the Federal Court, and the main issue on appeal was whether Q1 mark was inherently adapted to distinguish. The Judge concluded that:
- Q1 is a coined word and does not convey any obvious meaning and is not descriptive, and is therefore registrable as a trade mark
- registration of Q1 as a trade mark for services would not prevent a trader from using the name of the building to indicate the location of business in the building
The Respondent also argued that Q1 is part of the common heritage and registration and use as a trade mark by Mantra would deceive consumers into believing that Mantra was the sole provider of the services at the building.
The Judge held that the fact the Q1 was a building name did not result in an implied or secondary meaning that Q1 was common heritage, and that there was no likelihood of deception or confusion by use of Q1 for services such as such as building management, letting, accommodation and resort services. Mantra was entitled to register its Q1 marks for its services.
CARMEN Q1 3504 and CARMEN Q1 603
In a separate matter Mantra successfully opposed registration of trade mark applications for CARMEN Q1 3504 and CARMEN Q1 603 for real estate management and leasing and accommodation services; the digits represented two apartment numbers the Applicant owned.
The Hearing Officer accepted that it was the Applicant’s intention that Q1 was intended as a location identifier, but concluded that to her detriment, the Applicant had not constructed her marks in such a way that would “particularly stress the descriptive function”, for example, her trade marks were not in the form “CARMEN’S APARTMENT 603 AT THE Q1”.
Circle on Cavill
In Mantra Group Pty Ltd v Tailly Pty Ltd (No 2)  FCA 291(26 March 2010) objection for infringement of trade mark CAVILL ON CIRCLE was made against a letting agent using Circle on Cavill in domain names, meta-tags and on websites.
The Court found that the letting agent had not just used CAVILL ON CIRCLE in a descriptive way to identify location, but its use in a banner-style heading and in standalone format was trade mark use in respect of accommodation services which amounted to infringement of the registrations for management services, property management, realty administration and leasing services and provision of temporary accommodation.
The decision of Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd  FCA 554 (5 June 2015) dealt with the question of whether a building name could function as a trade mark for services associated with the building.
Accor had registrations for CAIRNS HARBOUR LIGHTS and HARBOUR LIGHTS for various real estate, accommodation and hotel services provided in association with its hotel services and apartment rental at the Harbour Lights building. Accor claimed the Respondent infringed its registrations because its use was trade mark use in relation to her letting business for apartments she owned in the building, rather than use as description of the location of the apartments.
The Judge concluded that HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS were not descriptive, were not geographical, and were not part of the common heritage, and therefore the registered trade marks were valid. He determined that the Respondent’s various uses of HAROUR LIGHTS as part of domain names, google advertisements, emails, business correspondence, and print advertisements were uses as a trade mark for the Respondent’s business and not as a description of the location of the apartments, and was infringing use.
Names of buildings and precincts are registrable trade marks if they are sufficiently distinctive. Generally significant cost and energy is given to development of the brands for the services provided by the developers/owners of resorts/hotels, shopping centres, apartments and other building complexes. Onsite and off-site businesses associated with buildings and precincts render the building name and associated brands vulnerable to misuse, as the line of cases above shows.
Registration of the trade marks for a broad range of goods and services provides strong protection against infringement. Mantra learnt lessons and its portfolio of registrations for buildings such as Q1 are commendable and these lessons are salutary for other developers/owners of buildings and precincts.
|Tags:||Trade Marks, Buildings, Precincts, Heritage, Geography|