Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd

• Jurisdiction: Australia Federal only
• Court: Full Federal Court (Australia)
• Judgment Date: 13 September 2022
• Neutral Citation: [2022] FCAFC 157
• Date: 13 September 2022

Federal Court of Australia

Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157

Appeal from:	Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328 and Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 3) [2021] FCA 729
File number(s):	VID 228 of 2021VID 408 of 2021
Judgment of:	YATES, ABRAHAM AND ROFE JJ
Date of judgment:	13 September 2022
Catchwords:	TRADE MARKS – appeal – infringement – deceptive similarity – whether, in determining deceptive similarity, the primary judge erred in not taking into account the factual distinctiveness of the appellant’s marks at their respective filing dates – whether primary judge erred in finding the respondents had not used JAZZ CORNER OF THE WORLD and JAZZ CORNER HOTEL as trade marks – notice of contention not required to be considered – no error in the primary judgment found ; COSTS – whether the primary judge erred in treating the costs of the cross-claim in a different manner to other defences raised by the respondent – whether primary judge erred in not taking into account the partial result obtained by the respondent in the cross-claim – whether the primary judge erred in finding the scope of costs dispute to be narrow – no error established
Legislation:	Federal Court of Australia Act 1976 (Cth) Trade Marks Act 1955 (Cth) Trade Marks Act 1995 (Cth) (repealed) Intellectual Property Laws Amendment (Raising the Bar) Act 2012
Cases cited:	Australian Meat Group v JBS Australia Pty Ltd (2018) 268 FCR 623 Australian Woollen Mills v F.S. Walton & Co Ltd (1937) 58 CLR 641 Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 Branir Pty Ltd v Owston Nominees (No 2) [2001] FCA 1833 CA Henschke v Rosemount Estates Pty Ltd [2000] FCA 1539 Christian v Société Des Produits Nestlé SA (No 2) (2015) 115 IPR 421 Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 Coca-Cola Co of Canada Ltd v Pepsi Cola Co of Canada (1942) 59 RPC 127 Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel (2021) 157 IPR 230 Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 546 Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 Foots v Southern Cross Mine Management Pty Ltd [2007] HCA 56; (2007) 234 CLR 52 Gray v Richards (No 2) [2014] HCA 47; (2014) 89 ALJR 113 Hansen Beverage Company v Bickfords (Australia) Pty Ltd (No 2) [2008] FCA 601 Hashtag Burgers Pty Ltd & Ors v In-N-Out Burgers, Inc [2020] FCAFC 235 Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd (2018) 264 FCR 422 House v The King (1936) 55 CLR 499 Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd [2011] FCAFC 164 Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450 Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38 MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 New South Wales Dairy Corporation v Murray-Goulburn Co-operative Company Ltd (No 1) (1989) 14 IPR 26 Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 Oshlack v Richmond River Council [1998] HCA 11; (1998) 193 CLR 72 Oxford University Press v Register of Trade Marks [1990] 24 FCR 1 Pacific Publications Pty Ltd v IPC Media Pty Ltd (2003) 57 IPR 28 PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 160 IPR 174 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 141 IPR 1 Ruddock v Vadarlis (No 2) [2001] FCA 1865; (2001) 115 FCR 229 S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 43 IPR 581 Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328 Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 3) [2021] FCA 729 Verrocchi v Direct Chemist Outlet Pty Ltd (2016) 247 FCR 570 Victoria v Sportsbet Pty Ltd (No 2) [2012] FCAFC 174
Division:	General Division
Registry:	Victoria
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	145
Date of hearing:	12 November 2021
Counsel for the Appellant in VID 228 of 2021 and the Respondent in VID 408 of 2021:	Mr E Heerey QC with Mr S Rebikoff
Solicitor for the Appellant in VID 228 of 2021 and the Respondent in VID 408 of 2021:	K&L Gates
Counsel for the Respondents in VID 228 of 2021 and the Appellants in VID 408 of 2021:	Mr C Golvan AM QC with Ms M Marcus
Solicitor for the Respondents in VID 228 of 2021 and the Appellants in VID 408 of 2021:	Brand Partners Commercial Lawyers

ORDERS

		VID 228 of 2021
BETWEEN:	SWANCOM PTY LTD (ACN 161 447 605) Appellant
AND:	THE JAZZ CORNER HOTEL PTY LTD (ACN 615 168 968) First Respondent ; BIRD’S BASEMENT PTY LTD (ACN 607 922 609) Second Respondent

order made by:	YATES, ABRAHAM AND ROFE JJ
DATE OF ORDER:	13 September 2022

THE COURT ORDERS THAT:

1. The appeal be dismissed.

2. The appellant pay the respondents’ costs of the appeal, to be assessed in the absence of agreement.

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

ORDERS

		VID 408 of 2021
BETWEEN:	THE JAZZ CORNER HOTEL PTY LTD (ACN 615 168 968) Appellant
AND:	SWANCOM PTY LTD (ACN 161 447 605) Respondent

order made by:	YATES, ABRAHAM AND ROFE JJ
DATE OF ORDER:	13 september 2022

THE COURT ORDERS THAT:

1. The appeal be dismissed.

2. The appellant pay the respondent’s costs of the appeal, to be assessed in the absence of agreement.

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

REASONS FOR JUDGMENT

THE COURT:

Introduction

1. This matter involves an appeal from the primary judge’s orders dismissing claims for trade mark infringement: Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328 (Primary Judgment or J) (the first appeal), and an appeal from the primary judge’s orders as to costs: Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 3) [2021] FCA 729 (the Costs Decision or CD) (the second appeal).

2. The proceeding below concerned 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”.

3. Since 1995, the appellant in the first appeal, Swancom Pty Ltd (Swancom), has been the owner and operator of a live music and hospitality venue located at 57 Swan Street, Richmond, Victoria. 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).

4. Swancom is the registered owner of four registered trade marks which were the marks in suit in the infringement action:

1. Trade Mark No 1388154 for CORNER HOTEL (with a filing date of 11...