“I’m just ducking
out to the Corner!”
‘The Corner’, whether a corner store or a corner hotel, is a typical Australian
idiom referring to a designated business’s locale, usually one that is close to
a person’s home or place of business. Hotels, in particular, are often situated
on corners, allowing easy construction of two separate entrances which
historically was required under state licensing laws.

The Corner Hotel
Inspire June 2021
A hotel in Richmond, Melbourne,
bordered on three sides by
Swan Street, Stewart Street and
Botherambo Street – and thus being
on two corners – has been known
for years as ‘Corner Hotel’ or
‘The Corner Hotel’. Corner Hotel
has a live music area accommodating
about 800 patrons, which has
showcased many famous Australian
and international artists.

These performances were not
free, but were ticketed events. The
owner of the hotel, Swancom Pty
Ltd, registered CORNER HOTEL,
CORNER and THE CORNER as
trade marks, covering class 41
entertainment services, and class
43 restaurant and bar services. They
also registered CORNER PRESENTS
only for entertainment services.

10 The Jazz Corner
Various companies within the
Ubertas Group were responsible for
the operation of a hotel (the Jazz
Corner Hotel), café (the Jazz Corner
Café) and live music venue (Bird’s
Basement) in Melbourne situated
near, but not on, the corner of
William and Latrobe Streets.

The Executive Chairman of the Ubertas
Group, Albert Dadon, is a businessman
and jazz musician, who has performed
at the New York jazz club – ‘Birdland’,
named after jazz great, Charlie ‘Bird’
Parker. Mr Dadon formed a business
relationship with Gianni Valenti, the
owner of Birdland, which refers to
the William Street jazz club ‘Bird’s
Basement’ as ‘our Sister Club Down
Under’ on the Birdland website.

Mr Dadon also wanted to establish
a hotel with a jazz theme to attract
the sort of patrons who would enjoy
performances at Bird’s Basement.

He selected JAZZ CORNER HOTEL
as a name for the hotel: ‘JAZZ’
because of the jazz-themed decor
of the hotel, and ‘CORNER’ to refer
to the situation of the business at
or near a corner, and because this
suggested a business that was
friendly, accessible and familiar,
like a corner store. The name also
associated the hotel with the
Birdland club which refers to itself
as the ‘Jazz Corner of the World’.

After an application for JAZZ
CORNER HOTEL was rejected,
partially on lack of distinctiveness
and partially on Swancom’s prior
CORNER HOTEL registration,
a further application by Ubertas
Operations was successful in
registering JAZZ CORNER for
accommodation services in
class 43.

Jazz Corner Hotel Pty Ltd (JCHPL),
Bird’s Basement Pty Ltd (BBPL),
and Saint Thomas Pty Ltd used
the registered trade marks THE
JAZZ CORNER HOTEL Logo, JAZZ
CORNER and THE JAZZ CORNER
CAFÉ Logo under license from
Ubertas Operations Pty Ltd, another
company within the Ubertas Group.

Each of the marks was registered in
relation to class 43 services. They
also used the unregistered marks
(THE) JAZZ CORNER OF
MELBOURNE and (THE) JAZZ
CORNER OF THE WORLD.

1 The Proceeding
Swancom commenced an
infringement action 1 against three
companies in the Ubertas Group.

Swancom also sought cancellation
of Ubertas Operations’ marks on
the basis that they could have been
opposed as being substantially
identical to the earlier Swancom
marks. JCHPL counterclaimed,
seeking cancellation of Swancom’s
registrations for class 41 services
on the bases that the marks were
not capable of distinguishing and
that use by Swancom was likely
to deceive or confuse.

The evidence showed that JCHPL
principally used the JAZZ CORNER
marks in relation to accommodation
services, but also promoted
accommodation and entertainment
packages featuring performances at
Bird’s Basement. Its website included
links to the Bird’s Basement website,
and its social media pages heavily
promoted upcoming performances
at Bird’s Basement as an adjunct to
staying at the hotel.

This, combined with the physical
location of the hotel in the same
building as the jazz club, and the
complementary nature of offering
café and jazz club services in addition
to hotel services, resulted in a
finding that JCHPL had used JAZZ
CORNER HOTEL and JAZZ CORNER
OF MELBOURNE as trade marks
in relation to live music services
provided at Bird’s Basement. BBPL
was also found to have used JAZZ
CORNER OF MELBOURNE as a trade
mark for live music services.

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



On the question of deceptive
similarity, Swancom argued that the
striking feature of all the marks is the
word ‘corner’, on the basis that this
word is distinctive in the context of
live music services. The respondents
contended that the words ‘corner’
and ‘ hotel’ are ordinary descriptive
words in common use in the hotel
and hospitality industries. Swancom
also alleged that ‘ jazz’ was merely
descriptive, whilst the respondents
argued that it was more memorable
than ‘corner’ or ‘ hotel’, even if it
described a style of music.

The court found that the words
‘corner hotel’ had a recognised
meaning to hotel patrons, and
accordingly they were to be given
less weight when assessing deceptive
similarity. Whilst the recognised
meaning was not in relation to live
music services, the public would know
that there are many businesses in the
hospitality industry that use the word
‘corner’. ‘Jazz’, on the other hand, was
not as commonly used, so that it had
prominence over ‘corner hotel’ in the
JAZZ CORNER HOTEL mark. The court
found that the impressions or ideas
of the respective marks were distinct
from each other, and that the likelihood
of confusion between the marks was
remote, so that the marks were not
deceptively similar.

The court’s finding that the public
would know that there are many
businesses in the hospitality industry
that use the word ‘corner’, whilst
finding that ‘ jazz’ is not commonly
used is perhaps surprising, given the
number of jazz clubs and cafés that
appear on the ASIC company and
business name register.

It is possible that there was no
evidence of these jazz venues before
the court, although the numerous
‘corner hotels’ throughout Australia
were in evidence. Nevertheless, this
appears to have been a critical factor
in deciding that the marks were not
deceptively similar.

On the cross claim, the evidence
showed that Swancom and its
predecessors had used the marks
CORNER HOTEL and CORNER
PRESENTS in relation to relevant class
41 services. The court found that the
Corner Hotel had a strong reputation
as a venue for professional live music
performances. However, the court
also found that there were a number
of other ‘corner’ hotels in Australia
and that ‘corner’ was commonly
used in connection with hotels as a
descriptive term. It was also noted
that many hotels provided live music,
but whilst some provided such
entertainment free of charge to attract
custom for food and beverages,
others provided live music venues
where patrons must purchase tickets
to attend the performance.

The court dismissed the cross claim
in relation to the marks CORNER
HOTEL and CORNER PRESENTS,
since strong evidence of use
established that these marks were
distinctive of live music services
despite potential descriptiveness
issues. However, in relation to
the CORNER and THE CORNER
marks, the court allowed further
submissions as to whether those
registrations should be amended
in relation to the claimed class 41
services, or a condition should
be entered on the registration to
preserve the freedom of hotels,
cafés, and other venues that may
provide free live music to use the
word ‘corner’ in their trading name.

This decision reinforces the
importance of choosing a mark that
is inherently capable of distinguishing
goods or services. Whilst marks
with some descriptiveness may be
registered, particularly with sufficient
evidence of use, the registration may
be less effective in preventing use
of a similar mark by a third party,
since descriptive elements may be
given less weight when assessing
the similarity of marks with the same
descriptive element.

As the crossclaim highlights, trade
mark owners also need be wary
of claiming goods or services too
broadly. Whilst CORNER HOTEL and
CORNER PRESENTS were limited
to services pertaining to live music
performances, the marks CORNER
and THE CORNER included live
music services, but were not limited
to those services, leaving an avenue
for the cross-claimants to seek
restriction of those registrations.

Inspire June 2021
This decision
reinforces the
importance of
choosing a mark that
is inherently capable
of distinguishing
goods or services.

11 Russell Waters | Principal
BSc LLB FIPTA
russell.waters@pof.com.au