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