Federal Court Dismisses Trademark Infringement Appeal Against Hotel Management Use

OUTCOME: Dismissed

FEDERAL COURT OF AUSTRALIA TRADE MARKS – "[NAME]" – infringement – whether use in relation to services in respect of which trade mark is [NAME] – whether [COMPANY] management falls within [NAME] meaning of "[COMPANY]" – whether use in relation to services of the same description as services in respect of which trade mark is [NAME] – relevance of overall character or description of services involved – whether signs proposed to be used are deceptively similar to [NAME] trade mark – whether [NAME] would be caused to wonder or entertain a reasonable doubt about whether services came from the same source – real tangible danger of confusion – cross‑appeal to cancel registrations – capacity to distinguish services in respect of which they are [NAME] – geographical name – whether other persons trading in services of the relevant kind, being actuated by proper motives, would wish to use that name in connection with their services – internal misrepresentation – whether mark suggested false connection [[[RESPONDENT]]] [NAME]'s services and building. Trade Marks Act 1995 (Cth), ss 6, 10, 41, 43, 44, 57, 88(2)(a), 120, 122(1)(a)(i), 234(2) Trade Marks Act 1955 (Cth), ss 24, 26, 33(2), 36(1A) Trade Marks Regulations 1958, Sch 4, Pt II Trade Marks Regulations 1995, Sch 1, Pt 2

[NAME] v [COMPANY] (1954) 91 CLR 592, applied [COMPANY] v [COMPANY] (1993) 42 FCR 227, cited [COMPANY] [1959] RPC 120, applied [COMPANY] v [NAME] (Australia) [COMPANY] (1963) 109 CLR 407, cited [NAME] v [NAME] N [COMPANY] [1981] 1 NSWLR 491, referred to [NAME] v [COMPANY] (1956) 95 CLR 190, referred to [COMPANY] v [NAME] [COMPANY] [1976] 2 NSWLR 124, referred to [COMPANY] v [COMPANY] (1989) 14 IPR 26, cited [NAME] of [COMPANY] v [NAME] (1988) 12 IPR 1, cited [NAME], Masters and Scholars of the University of [NAME] v [NAME] (1990) 24 FCR 1, cited [NAME] v [NAME] (1964) 111 CLR 511, applied [COMPANY] v [NAME[NAME] and [COMPANY] (1965) 112 CLR 537, cited [NAME] v [NAME] [COMPANY] [1913] AC 624, cited

[NAME] [APPELLANT] [COMPANY] v THE [[[[[RESPONDENT]]]]] [COMPANY] AND [COMPANY] [COMPANY] AND [[[RESPONDENT]]] [COMPANY] AND [[[RESPONDENT]]] [COMPANY]

NG 274 of 1998 THE [[[[[RESPONDENT]]]]] [COMPANY] [RESPONDENT] AND [COMPANY] [COMPANY] AND [[[RESPONDENT]]] [COMPANY] AND [[[RESPONDENT]]] [COMPANY] v [NAME] [APPELLANT] [COMPANY] NG 275 of 1998 [APPELLANT] 18 DECEMER 1998

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 274 of 1998

ON APPEAL FROM A SINGLE JUDGE OF

THE FEDERAL COURT OF AUSTRALIA

[[[RESPONDENT]]]: [NAME] [APPELLANT] [COMPANY] (ACN [[[[[[RESPONDENT]]]]]])

APPELLANT

[[[[[RESPONDENT]]]]]

[[[[[RESPONDENT]]]]])

[[[[[RESPONDENT]]]]]

[COMPANY] [COMPANY] (ACN [[[[[[RESPONDENT]]]]]])

[[[[[RESPONDENT]]]]]

[[[[[RESPONDENT]]]]])

AND [[[RESPONDENT]]] [COMPANY] (ACN [[[[[[RESPONDENT]]]]]])

[[[[[RESPONDENT]]]]]

[[[[[RESPONDENT]]]]]

DATE: 18 december 1998

place: [APPELLANT]

THE COURT ORDERS THAT: 1. The appeal be dismissed. 2. The appellant pay the [[[RESPONDENT]]]' costs of the appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 275 of 1998

ON APPEAL FROM A SINGLE JUDGE OF

THE FEDERAL COURT OF AUSTRALIA

[[[[[RESPONDENT]]]]]

[[[[[RESPONDENT]]]]])

First appellant

[COMPANY] [COMPANY] (ACN [[[[[[RESPONDENT]]]]]])

Second appellant

[[[[[RESPONDENT]]]]])

AND [[[RESPONDENT]]] [COMPANY] (ACN [[[[[[RESPONDENT]]]]]])

Third appellants

AND: [NAME] [APPELLANT] [COMPANY] (ACN [[[[[[RESPONDENT]]]]]])

[[[[RESPONDENT]]]]

[APPELLANT]: 18 december 1998

place: [APPELLANT]

THE COURT ORDERS THAT: 1. The cross-appeal be dismissed. 2. The cross-appellants pay the cross-[[[[RESPONDENT]]]]'s costs of the cross-appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 274 of 1998

NG 275 of 1998

ON APPEAL FROM A SINGLE JUDGE OF

THE FEDERAL COURT OF AUSTRALIA

NG 274 of 1998

APPELLANT

[[[[[RESPONDENT]]]]]

[[[[[RESPONDENT]]]]])

[[[[[RESPONDENT]]]]]

[COMPANY] [COMPANY] (ACN [[[[[[RESPONDENT]]]]]])

[[[[[RESPONDENT]]]]]

[[[[[RESPONDENT]]]]])

AND [[[RESPONDENT]]] [COMPANY] (ACN [[[[[[RESPONDENT]]]]]])

[[[[[RESPONDENT]]]]]

NG 275 of 1998

[[[[[RESPONDENT]]]]]

[[[[[RESPONDENT]]]]])

First appellant

[COMPANY] [COMPANY] (ACN [[[[[[RESPONDENT]]]]]])

Second appellant

[[[[[RESPONDENT]]]]])

AND [[[RESPONDENT]]] [COMPANY] (ACN [[[[[[RESPONDENT]]]]]])

Third appellants

[[[[RESPONDENT]]]]

JUDGES: [APPELLANT]: 18 december 1998

PLACE: [APPELLANT] FOR JUDGMENT

THE COURT:

Background: decision under appeal

The appellant ([NAME]) is the owner of a [NAME] known as The [NAME]. It is situated in [NAME], [APPELLANT] and has frontages to Elizabeth, Bent and Phillip Streets. The [NAME] is a large, modern and impressive office building consisting of 42 storeys, excluding the basement car park. Its tenants are substantial corporations and firms. It incorporates also, on Level 41, a well‑known restaurant. Three floors are given over to restaurants and shops of a standard appropriate to their association with The [NAME]. The three floors are known as the "[NAME]". [NAME] is the [NAME] of three [NAME] trademarks. The first of them, the registration date of which is 12 June 1990, comprises the words "[NAME]": it is [NAME] in respect of services in class 36, described as "[COMPANY], [COMPANY]". The registration date of the other marks is 7 January 1992. Each comprises a device, which may be a stylised representation of the upper portion of The [NAME]; beneath the device appears: THE [NAME] of those marks is [NAME] for services in class 36 described as "leasing of office and retail space; building and [NAME]". The other is [NAME] in respect of services in class 37, described as "construction repair and building maintenance services". Class 36 includes "Insurance; financial affairs; monetary affairs; real estate affairs"; Class 37 includes "Building construction; repair; installation services": Trade Marks Regulations 1958, Sch 4, Pt II; Trade Marks Regulations 1995, Sch 1, Pt 2. The [[[RESPONDENT]]] are connected (the precise connection is somewhat complex and fortunately does not matter for the purposes of this appeal) with a number of [NAME] both existing and proposed. The existing [NAME], which are located in five [[[[[RESPONDENT]]]]] capital cities, have hitherto operated under the name "[NAME]". It is intended that a number of the existing and proposed [NAME] will be given a name which includes the word "[NAME]". Those [NAME] will, it is intended, be operated or managed by one of the [[[RESPONDENT]]], or possibly a company associated with them, under management contracts with the owners or lessees of the [NAME]. I shall use the name "[[[RESPONDENT]]]" to refer indiscriminately to each manager so appointed. [[[RESPONDENT]]] will receive remuneration including an interest in the profits of the [COMPANY]. It will be licensed by one of the other [[[RESPONDENT]]] to use the name "[NAME]" in connection with the operation or management of each of the [NAME]. One of the proposed [NAME], intended to be called "[NAME] on the Wharf", is in the course of construction on the [ADDRESS] at Woolloomooloo, [APPELLANT]. [NAME] sought, in the proceeding under appeal, relief in respect of the use, or proposed use, of the name "[NAME]" by the [[[RESPONDENT]]] in connection with [COMPANY] related services. Relief was sought on the footing of infringement of the [NAME] marks, passing off and conduct infringing s 52 of the Trade Practices Act 1974 (Cth). The [[[RESPONDENT]]] by cross‑claim sought rectification of the [NAME] by cancelling the registration of [NAME]'s marks. [NAME], the primary judge, dismissed with costs both the application and the cross‑claim. [NAME] appeals from the decision, in so far as [NAME] dismissed the claims based on infringement of the [NAME] marks; there is no appeal from dismissal of the claims based on passing off and conduct infringing s 52. The [[[RESPONDENT]]] cross‑appeal from [NAME]'s decision to refuse rectification of the Register.

The Appeal: Infringement Section 120 of the Trade Marks Act 1995 (Cth) (the Act) provides the relevant test: "(1) [NAME] infringes a [NAME] trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to … services in respect of which the trade mark is [NAME]. (2) [NAME] infringes a [NAME] trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (a) …; or (b) …; or (c) services of the same description as that of services ("[NAME] services") in respect of which the trade mark is [NAME]; or (d) … . However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion." The word "[RESPONDENT]" is a "sign" as defined in s 6 of the Act. [[[RESPONDENT]]] accepts that its use (or intended use) of that sign (or signs incorporating that word) in connection with the [NAME] which it is to manage will constitute use of it as a trade mark, that is use in relation to services for the purpose of denoting trade origin. [NAME] asserts that signs incorporating the word "[RESPONDENT]", as proposed to be used by [[[RESPONDENT]]], are deceptively similar to [NAME]'s [NAME] marks and that [[[RESPONDENT]]]'s use of them is (or will be) use in relation to services in respect of which [NAME]'s marks are [NAME] or services of the same description as that of services for which the marks are [NAME]. (a) "Services in respect of which the trade mark is [NAME]" or "Services of the same description"? [NAME] commenced his reasoning on this aspect of the case by noting [NAME]'s submission, which was that [[[RESPONDENT]]], in performing agreements to manage [NAME] using the name "[NAME]", was using the mark in respect of [NAME] and [COMPANY]. [NAME] observed that the "[s]uperficial attractiveness of [[NAME]'s] submission" lay in the fact that [[[RESPONDENT]]] manages [NAME] for persons who own the real estate. [NAME] said that this meant [[[RESPONDENT]]] was in the business of "[NAME]", as those words were used in its registration. The substance of [NAME]'s reasoning appears in the following paragraphs: "Some assistance in understanding what the third [[[[RESPONDENT]]]] proposes to do and the sense in which the word "management" is used in connection with managing a [COMPANY] can be obtained from the management agreement proposed for the "[NAME] on the [COMPANY]". The draft is confidential and I refrain from doing more than referring to provisions which are uncontroversial. Under the agreement, the third [[[[RESPONDENT]]]] is to be the [NAME] and exclusive manager of the [COMPANY] for a term set out in the agreement. The manager's obligation is to operate the [COMPANY] subject to the terms of the agreement. Put in another way, the [COMPANY] is to be conducted by the so‑called manager who employs staff, operates in accordance with an agreed budget and becomes entitled to be paid a fee which is dependent upon results. The role of the third [[[[RESPONDENT]]]] is not one of [NAME] at all. It is in the business of running a [COMPANY] which is a particular form of business rather than managing a particular form of [NAME]. In my view, to the extent that the use of the word "[NAME]" in connection with a [COMPANY] by the third [[[[RESPONDENT]]]] is the use of a sign that is substantially identical with or deceptively similar to the applicant's [NAME] mark "[NAME]", the use by the third [[[[RESPONDENT]]]] is not a use in relation to the services in respect of which the applicant's mark is [NAME]. It follows, in my view, that there can be no infringement, either in respect of the proposed use of the word "[NAME]" in the context of the "[NAME] on the Wharf" or for that matter in respect of the re‑badging of the [NAME] in capital cities. Insofar as the applicant relies upon s 120(2)(c), the services offered by the [[[RESPONDENT]]] are not services of the same description either. In these circumstances it is not necessary to consider whether the third [[[[RESPONDENT]]]] might avail itself of the defence contained in the last part of s 120(2) (namely demonstrating that using the sign was not likely to deceive or cause confusion)." [NAME] submitted that the primary judge erred by considering first the nature of [[[RESPONDENT]]]'s business and, having ascertained it, by then asking whether that business was the providing of services in relation to which [NAME]'s marks are [NAME]. The correct approach, [NAME] submitted, was, first, by construing the registrations to identify the services for which the marks are [NAME] and, secondly, to ask whether [[[RESPONDENT]]] uses (or threatens to use) signs incorporating the word "[NAME]" in respect of those services: that is, we take it, any of the categories of services for which the marks are [NAME]. We do not think that the criticism of [NAME]'s approach is well-founded. That approach was dictated by the way in which [NAME] framed its submissions. The emphasis in the reasoning on the conduct of the [COMPANY] reflected the terms of [NAME]'s submissions. In any event, we are content to address the issues identified by [NAME]. It is common ground that the only [NAME] mark which need be considered is the first [NAME], that is the one comprising only the words "[NAME]" and not including the device. If [[[RESPONDENT]]]'s use does not infringe that mark, a fortiori it does not infringe the others. The question then is whether [[[RESPONDENT]]]'s use is in relation to services in respect of which that mark is [NAME]: that is, services falling within the description "[COMPANY], [COMPANY]". Senior counsel for [NAME] concentrated, in argument, on "[COMPANY]". His submission was that there was no evidence that the words had, for present purposes, any meaning other than their [NAME] meaning, that is management services in respect of [NAME] generally. In particular, there was no limitation as to particular kinds of [NAME] for which [COMPANY] might be provided.

Accordingly, so the submission in its broadest form went, if one found, in relation to any [NAME], that [NAME] provided services properly described as management services, that person should be taken as providing "[COMPANY]". Senior counsel relied also (as to the services in respect of which [NAME]'s mark is [NAME]) on evidence by Mr [RESPONDENT], a witness called by [[[RESPONDENT]]]. [NAME] was a senior [NAME] manager of a [NAME] whose responsibilities included the management of five office buildings. One of those buildings was at [ADDRESS], [APPELLANT] incorporating office space, an arcade called (coincidentally) [NAME] and a restaurant. Mr [NAME] described his services for the building owner as including supervising the collection of income relating to the building, payment of expenditure relating to the building, the engaging of cleaning contractors, making arrangements for repairs, refurbishments and maintenance and dealing with leasing matters, including renewals, assignments, rent reviews and, in relation to vacant space, locating lessees for small areas and contracting out the leasing of larger areas. It could hardly be said that there is anything surprising about Mr [NAME] evidence. The activities which he described are, we think, the principal activities which fall within the [NAME] understanding of "[COMPANY]". The next step in the argument took a broad form and a narrower form. In its broad form, it was to the effect that an [COMPANY] is [NAME]; one who manages an [COMPANY] for its owner or lessee is managing [NAME] and thus providing [COMPANY]. In its narrower form, on which senior counsel concentrated, it was to the effect that a number of the particular services which the manager of an [COMPANY] will perform, and which on the evidence would be provided by [[[RESPONDENT]]], are services of the same general character as those described by Mr [NAME] and that, whatever might be the case with [NAME] of other kinds, [COMPANY] management was predominantly [NAME]. Thus, the manager will receive and account for income and will pay outgoings; the manager will attend to maintenance, repairs and refurbishment; likewise, the manager will be responsible for arranging for the occupation of rooms by guests and if, for example, retail shops are included within the [COMPANY], for making arrangements with tenants. It follows, the argument ran, that the business or activities of the manager of an [COMPANY] include, as a necessary and substantial part of them, services among those in respect of which the trade mark was [NAME]. In our view, neither the broad nor the narrower submission should be accepted. The answer to the broad submission is, we think, simply that one who conducts or manages a business on [NAME] of another is not for that reason alone to be regarded, within the [NAME] meaning of the words, as providing [COMPANY]. It makes no difference that the [NAME] is designed or adapted specifically for the purpose of the particular business or that the conduct of the business includes, as incidental to it, the doing of a number of things of a kind which might be done by a [NAME] manager in relation to [NAME] under its management. The conduct of an [COMPANY] includes the accommodation of guests, the operation of restaurants and bars (including compliance with the liquor licensing law) and the provision of conference and business facilities and of other services normally offered by hoteliers. These activities cannot ordinarily be described as "[COMPANY]". To elaborate on what might be thought an obvious proposition about the [NAME] use of language is often not profitable. But the [NAME] meaning of [COMPANY] – and this is supported by Mr [NAME] evidence about his own business activities – would not encompass the occupation of a [NAME] under contract with, or licence or lease from, its owner or lessee in order to manage a business, for the benefit of both the manager and the owner or lessee, conducted on that [NAME]. That is so, we think, if the [NAME] is adapted for use as a service station and a manager is contracted to operate the [NAME] as a service station; similarly (as was suggested by [NAME] during the course of argument) where the [NAME] concerned is a sports stadium; similarly where the [NAME] is an [COMPANY]. Senior counsel for [NAME] suggested that there was a line to be drawn [[[RESPONDENT]]] businesses conducted for a fee by a manager on another's [NAME], which might be regarded as substantially, or as akin to, a business of providing [COMPANY] and businesses of other kinds. Senior counsel was prepared to accept that the operation of a service station by a manager would not ordinarily be described as the provision of [COMPANY]; the answer was not clear, as we understood his submissions, in relation to a sports stadium. On the other hand, an [COMPANY] was said to fall on the other side of the line, so as properly to be regarded as involving the provision by the manager of [COMPANY]. But we cannot accept that that is so: in each case the manager is, under contract with the owner or lessee, conducting on the [NAME] a business for which the [NAME] is adapted. In each case the manager is not managing the [NAME]; it is managing the business conducted from the [NAME]. In the [NAME] use of language the two concepts are, we think, quite distinct. It was suggested that, if a manager provided services falling within the description "[COMPANY]", those services did not lose that character because they formed part of an overall business having features other than the provision of [COMPANY]. Certainly it is true that a provider of [COMPANY] is no less such a provider because it provides, in the course of its business, other services as well. But where, in this case, services are performed which are incidental to the conduct of the [COMPANY], it is not correct, in our view, to conclude that [[[RESPONDENT]]] is using the word "[RESPONDENT]" (or a sign incorporating it) in relation to [COMPANY]. If [[[RESPONDENT]]] arranges tenancies for retail shops within an [COMPANY] and collects rent, it does not thereby provide [COMPANY]: those activities are not to be characterised as the provision of a separate service in relation to the [NAME] but simply as an integral, if relatively minor, part of operating the [COMPANY]. Nor, we think, does it help to identify a number of discrete aspects of the [COMPANY] which, if carried on in other circumstances, might be characterised as the provision of [COMPANY]. In this context, each will take its character from the overall nature of the business which [[[RESPONDENT]]] intends to conduct. Are, then, services to be provided by [[[RESPONDENT]]] services of the same description as that of services in respect of which [NAME]'s mark is [NAME] (s 120(2)(c))? That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see [NAME], "The Trade Marks Amendment Act 1978" (1979) 53 ALJ 118. It is also a consequence of the fact that s 120(2)(c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) ("[NAME]"), although the expression "services of the same description as [services in respect of which the trade mark is [NAME]]" was used in the earlier legislation: see [NAME], ss 33(2), 36(1A). The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in [NAME] v [COMPANY] (1954) 91 CLR 592 at 606 the High Court said this: "There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by [NAME] [NAME] in In Re [NAME]'s Application [(1946) 63 RPC 59]. [NAME[NAME] thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in [NAME] case the Assistant‑Comptroller elaborated on the observations of [NAME] in the following manner: 'In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade …'. " Similarly (in a passage cited by [NAME[NAME] in [COMPANY] v [COMPANY] (1993) 42 FCR 227 at 240) [NAME] said in [COMPANY] [1959] RPC 120 at 128: "In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases … one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged … 'in a business sense'; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a [NAME] of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods … . The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited … lend some support to the view that the phrase 'goods of the same description' ought not to be given too restrictive a construction – not, at all events, so as to be [COMPANY] to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other." We accept that these principles, subject to any necessary modification, apply in relation to services. But they do not advance [NAME]'s argument. For reasons that have already been given, the services involved in managing an [COMPANY] have different characteristics than [COMPANY]. If, as we have held, particular incidental services take their character from the whole, the position is not altered by the fact that managing an [COMPANY] may involve the performance of incidental services akin to those carried out by [NAME] managers. This conclusion is reinforced if, as [NAME] suggests, the proper approach is that attention should be directed to the "trade channels" through which the services are provided. It is not difficult to infer that [COMPANY] management is a specialised undertaking, ordinarily carried out by different entities than those involved in providing [COMPANY], such as real estate agents or shopping centre managers. Partly for this reason, it is difficult to regard [COMPANY] managers as being engaged in the same trade or industry as those providing [COMPANY]. It follows, in our view, that the appeal in relation to the [NAME] infringement must in any event fail. (b) Deceptive similarity We heard argument also, however, on the question whether the sign or signs, proposed to be used by [[[RESPONDENT]]] (for example, "The [NAME]" and "[NAME] on the Wharf") are deceptively similar to the [NAME] mark ("[NAME]") and it is appropriate to deal briefly with that aspect of the case. The expression "deceptively similar" is defined in s 10 of the Act: "For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion." That phrase is familiar as describing a ground of refusal of registration: the phrase itself appears (in the context of the question whether the use of a trade mark in relation to particular goods or services will be likely to deceive or cause confusion) in s 43 of the Act and the defined term "deceptively similar" is used, in relation to a mark registration of which is sought, in s 44. About some aspects of the question to be answered there can be no doubt. First, what is to be compared with [[[RESPONDENT]]]'s mark is the impression based on recollection of [NAME]'s mark that persons of [NAME] intelligence and memory would have: The [COMPANY] v [COMPANY] (1963) 109 CLR 407 at 415. Secondly, deceptive similarity is not to be considered having regard only to [NAME]'s actual use of its mark but rather to the extent of its statutory monopoly, that is, having regard to the full extent of the services in respect of which the mark is [NAME]. That proposition was applied, for example, by [NAME] in [NAME] v [NAME] N [COMPANY] [1981] 1 NSWLR 491 at 498: "The deceptiveness, I consider, flows not only from the degree of similarity itself, but also from its effect considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the plaintiffs' monopoly." Thirdly, it is irrelevant that [[[RESPONDENT]]] may, by means other than its use of the mark, make it clear that there is no connection [[[RESPONDENT]]] its business and that of [NAME]: [RESPONDENT] v [RESPONDENT] (1956) 95 CLR 190 (the "[NAME] case") at 205. In general terms, no doubt, it is true that the comparison is [[[RESPONDENT]]] marks, not [[[RESPONDENT]]] uses of marks and that [RESPONDENT[NAME] correctly stated the law in [COMPANY] v [NAME] [COMPANY] [1976] 2 NSWLR 124 at 127 when he said this: "Hence it is no answer … that the defendant's use of the mark is in all the circumstances not deceptive, if the mark itself is deceptively similar."

In our view, however, it does not follow that the actual use to be made by [[[RESPONDENT]]] of a mark such as "[RESPONDENT] on the Wharf" or "The [NAME]" is irrelevant. The test of deceptive similarity is well established. It was stated by [NAME[NAME] in [NAME] (an appeal from a decision in opposition proceedings), at 595, as follows: "It is not necessary … to prove that there is an actual probability of deception leading to a passing‑off. While the mere possibility of confusion is not enough – for there must be a real, tangible danger of its occurring … – it is sufficient if the result of the [NAME] of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the [NAME] person entertains a reasonable doubt." It is true, in infringement proceedings, that the question to be asked is in one respect at least somewhat artificial: the person who may be caused to wonder is not one who knows of the actual business of the [NAME] of the [NAME] mark, the goods it produces or the services it provides, but one who is to be credited with a recollection of the mark in relation to the full range of goods or services to which the registration extends. That degree of artificiality can be justified on the ground that it is necessary in order to provide protection to the [NAME]'s statutory monopoly to its full extent. There are, however, cases, of which this is one, in which it is appropriate to take into account the use, or proposed use, by the [NAME] and also the character of the [NAME] mark itself. It is significant that, immediately following the passage which we have cited, [NAME[NAME] in his judgment in [NAME] continued: "In considering the probability of deception, all the surrounding circumstances have to be taken into consideration". And in [COMPANY] v [COMPANY] (1989) 14 IPR 26 at 67 Gummow J, having considered a number of the principles to which we have referred, said (in a passage the authority of which is not affected by the decisions on appeal): "The same case [sc [NAME]] is also authority for the proposition that it will not be appropriate for a defendant to urge that the products of the plaintiff are in a more expensive range than those of the defendant, or that they are sold to a category of customer which differs from that attracted to the goods of the defendant if the ambit of the registration encompasses all these goods. I would not wish to say anything to throw doubt on the correctness of that proposition. Nevertheless, I am able to decide the present case on the footing that in determining the issue of deceptive similarity in the context of infringement it is permissible to have regard to the actual [NAME] by the [NAME], even though where the issue of deceptive similarity arises under s 28 (and thus goes not to infringement but to grant of registration or expungement of registration) one considers all goods coming within the specification, not only those on which there is use or proposed use: … " In this case, the character of the mark includes, we think, two significant elements. One is that "[NAME]" is familiar not only as the name of a [NAME] but, as the evidence shows, also from its use in a number of geographic and other contexts. There are suburbs, districts or places known as "[NAME]" in the [APPELLANT] area (such as [NAME] itself), in Canberra and in Bathurst; Bathurst, particularly, was [NAME] home town and there are a number of places there which are named after him. There is (as has been seen) a [NAME] in [APPELLANT]; there is a well-known restaurant called "The [NAME]" in Canberra. The [NAME] person whose reaction is in question need not be credited with an encyclopaedic knowledge of everything to which the name "[NAME]" has been applied, but should be credited with a general knowledge that there are several such applications. The other element is the word "Tower". Even to those who do not know the particular building in [APPELLANT], that word in current usage suggests a substantial building, probably an office block. It was said in argument, correctly, that the [NAME] of the mark "[NAME]" could provide services within the registration not only in or from the particular building, but anywhere in Australia. But that does not conclude the present question, which is, in substance, whether the [NAME], seeing [[[RESPONDENT]]]'s use of its intended signs, would be caused to wonder or entertain a reasonable doubt about whether services provided by the manager of [NAME] called "The [NAME]" might come from the same source as services provided by a company which offered, under the name "[NAME]", services within the full range of those for which that mark is [NAME]. The [NAME] observer should not be supposed to be likely to analyse with precision the nature of the individual services likely to be performed by the manager of an [COMPANY]. Given the aspects of the [NAME] mark to which we have referred and the specific character of [[[RESPONDENT]]]'s activities this, we think, is a case of mere possibility, rather than real, tangible danger of confusion. Thus, in our view, the primary judge was right in holding that the signs proposed to be used by [[[RESPONDENT]]] are not deceptively similar to [NAME]'s [NAME] mark. We reach that conclusion, of course, bearing in mind that the question arises only if [[[RESPONDENT]]] is to use its signs in relation to services in respect of which [NAME]'s mark is [NAME] or services of the same description: that is, on the assumption (contrary to our earlier conclusions) that [[[RESPONDENT]]]'s intended use of its signs is in respect of one of those categories of services. Cross Appeal: [NAME]'s registrations be cancelled? The registration of all three of [NAME]'s marks was attacked on three bases: lack of capacity to distinguish the services in respect of which they are [NAME], internal misrepresentation (that is, it is said that because of a connotation that the trade marks have, their use in relation to the services would be likely to deceive or cause confusion) and deceptive similarity arising from pre-existing uses by other businesses of names which included the word "[NAME]". The third of those grounds was maintained only defensively; that is, it was relied upon only should the Court find that [[[RESPONDENT]]]'s signs were deceptively similar to [NAME]'s marks. Having regard to indications given by the Court at the conclusion of [NAME]'s argument in support of the appeal, no argument was submitted in support of that ground and it is unnecessary to consider it. Argument concentrated on the first ground. That ground relied on s 41(2) of the Act, by way of s 88(2)(a) and s 57 (which provides that an application for cancellation of registration can be made on a ground of opposition to registration, including that stated in s 41(2)). Section 41, insofar as relevant, provides as follows: "41(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be [NAME] (designated goods or services) from the goods or services of other persons. (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons. (4) Then, if the Registrar is still unable to decide the question, the following provisions apply. (5) … (6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply: (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does not distinguish the designated goods or services as being those of the applicant – the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons; (b) in any other case – the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons." Section 41 differs in form somewhat from its immediate predecessor, s 26 of the [NAME]. It is also the case that the Act contains no equivalent to s 24(1)(d) of the [NAME], which provided: "24(1)A trade mark is registrable in Part A of the Register if it contains or consists of ‑ … (d) a word not having direct reference to the character or quality of the goods or services in respect of which registration is sought and not being, according to its [NAME] meaning, a geographical name or a surname …." Nonetheless, s 41 incorporates concepts well-recognised in the earlier law. In the case of the first [NAME] of the three marks, the "word only" mark no. 535916, there is a threshold test. That mark was [NAME], immediately before 1 January 1996, in Part A of the old register and seven years had elapsed from the date of registration at the time when [[[RESPONDENT]]]'s cross-claim was instituted. In those circumstances, s 234(2) of the Act has the consequence that the mark is to be taken as valid in all respects unless it is shown, relevantly, that: "(e) The trade mark did not, at the commencement of the proceedings, distinguish the goods or services of the [NAME] owner in relation to which the trade mark is used from the goods or services of other persons." It was submitted on behalf of [[[RESPONDENT]]], and [NAME] did not dispute, that if the s 41(2) ground were made out, the threshold test under s 234(2)(e) was necessarily satisfied. That seems to us to be correct. The trial judge rejected [[[RESPONDENT]]]'s cross-claim on the following grounds: "Some assistance is to be obtained from cases such as [NAME] v [NAME] (1964) 111 CLR 511 where the question arose whether a mark was adapted or capable of becoming adapted to distinguish particular goods. In that case, the mark was the word 'Michigan', a geographical name and it was held that such a name could hardly ever be adapted to distinguish the goods of one person from the goods of another, as [NAME[NAME] points out at 516. Some words can never acquire distinctiveness so as to justify registration among which are the names of large and important industrial towns or districts. Other marks are inherently incapable of distinguishing the goods of [NAME] from the goods of another – even after long use; cf [COMPANY] v [NAME[NAME] and [COMPANY] (1965) 112 CLR 537. In principle, there is no reason why the words '[NAME]' could not be used to distinguish the services of the applicant in the field of [NAME] from the services of others. The applicant did provide services to its tenants and did use the marks '[NAME]' with or without logo." On the appeal, [[[RESPONDENT]]] argued that the mark "[NAME]", with or without a logo, was incapable of distinguishing [COMPANY] supplied in connection with the [NAME] building. It submitted that a mark which has a direct reference to the character or quality of the services in respect of which it is sought to be [NAME] has no capacity to distinguish those services. Section 24(1) of the [NAME] dealt with the matter expressly, but this was merely an example of the general category of marks having no capacity to distinguish the [NAME]'s goods or services in respect of which the mark is sought to be [NAME]. In this respect it was like the "HAIRFUSION" case: [NAME] of [COMPANY] v [NAME] (1988) 12 IPR 1. [[[RESPONDENT]]] also argued that "[NAME]" is simply a geographical name, incapable of distinguishing services which are or are likely to be produced at that place. In this respect it was like the "[COMPANY]" case: [NAME], Masters and Scholars of the University of [NAME] v [NAME] (1990) 24 FCR 1. Other persons, trading in services of the relevant kind and being actuated only by proper motives, would think of the expression and want to use it in connection with similar services. There was no dispute [[[RESPONDENT]]] the parties that the principles to be applied to the question of capacity to distinguish were those formulated by Kitto J in [NAME] v [NAME] (1964) 111 CLR 511. These principles have been applied, in relation to descriptive marks, for instance in [COMPANY] v [NAME[NAME] and [COMPANY] (1965) 112 CLR 537 and [NAME]: see also the "Tub Happy case". They have been applied, in relation to geographical marks, in [NAME] itself and in [COMPANY]. In [NAME], [NAME[NAME] held that the word "Michigan" was incapable of becoming adapted to distinguish the applicant's earth-moving and like equipment. [NAME] quoted (at 514) from the speech of [NAME] in [NAME] v [NAME] [COMPANY] [1913] AC 624 at 635. "The applicant's chance of success in this respect [i.e. in distinguishing his goods by means of the mark, apart from the effects of registration] must, I think, largely depend upon whether other traders are likely, in the [NAME] course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the [NAME] and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire to use." [NAME[NAME] then continued (at 514-515): "The interests of strangers and of the public are thus bound up with the whole question …; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a [NAME] trade mark granted in respect of it. The fact that this is the test is the basic reason for the frequent refusal … to register as a trade mark a word of prima facie geographical signification. It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur… . This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as "North Pole" in connexion with bananas … or where by reason of [NAME] or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification. … But the probability that some competitor, without impropriety, may want to use the name of a place on his goods must ordinarily increase in proportion to the likelihood that goods of the relevant kind will in fact emanate from that place. A descriptive word is in like case: the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer. … The consequence is that the name of a place or of an area, whether it be a district or county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods; there is necessarily great difficulty in proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting registration will not be to deny the word to [NAME] who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make. [Authorities cited by [NAME]] show … that there is a category of words which are so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration, and that among such words are the names of large and important industrial towns or districts, and also of smaller towns or districts if they are a seat of manufacture of the goods for which registration is sought." (Emphasis added.) [[[RESPONDENT]]] placed particular reliance on the bolded words. In reality, [[[RESPONDENT]]]'s submissions about character or quality and about the geographical reference do not represent separate arguments: the point of putting the matter either way is that the words "[NAME]" denote a connection with The [NAME], so that others providing similar services and having a connection with The [NAME] (particularly, tenants of areas within The [NAME]) might properly wish to use the name in relation to their services. The evidence showed, it was said, that "The [NAME]" formed part of the stated or advertised address of tenants of offices within the building and that the building, as a very large office tower, was one in which a great number of firms carried on businesses of providing services of various kinds. We rather doubt that any indication is to be found in the judgment of [NAME] in [NAME] that he would have regarded a large privately owned office building as analogous to a large and important industrial town or district or to a smaller town or district which is a seat of manufacture of goods of a particular kind. To say that is not conclusively to answer [[[RESPONDENT]]]'s submission. But it does suggest that it may not be so simple a matter as to say that, as in a large town, so in a large office building, there will be found numerous traders who may wish to describe their goods or services by reference to their place of business. [NAME] acquired a building approaching completion and chose a name for it; at about the same time [NAME] applied for the first of its [NAME] marks in relation to [COMPANY] intending, no doubt, to provide those services, principally if not exclusively, in relation to the building. The [NAME] is not part of the common heritage in the sense that a town, suburb or municipality is. [NAME] perhaps might answer that description, but the [NAME] trade mark does not incorporate that expression. There is no public policy against [NAME] restricting those who have come to occupy space within its building as to the way in which they use its name in connection with goods they produce or services they provide. That being so, it is not easy to see, in our view, why any separate public policy, of the kind identified by [NAME[NAME], should apply so as to deprive the name selected by [NAME] of a capacity to distinguish, in circumstances where there could be no legitimate reason for persons other than those carrying on business within The [NAME] to use its name in connection with their goods or services. As to traders operating from The [NAME] itself, they would not infringe [NAME]'s [NAME] trade mark if they used the name "[NAME]" in good faith as the name of their place of business: see s 122(1)(a)(i) of the Act. Moreover, it cannot be said that it is likely that a [NAME] operating from The [NAME] will, without impropriety, wish to use the name "[NAME]" in relation to [COMPANY] (other than as the [NAME]'s place of business). The position is different from that of a town, suburb or municipality, since it could reasonably be expected that traders might wish to use the names of those geographic locations in connection with their services. It follows that this attack on [NAME]'s registration fails. The "internal misrepresentation" argument was based on the proposition that although there was no evidence that [NAME] had ever used its marks in respect of services offered from or in connection with a building other than The [NAME], the registration in connection with [COMPANY] permitted the use of the marks in connection with services provided at or from other locations. In the case of services thus provided, the mark connoted a falsehood, that is, a connection of a particular kind [[[RESPONDENT]]] The [NAME] and the services provided by the [NAME] of the marks. On behalf of [[[RESPONDENT]]], it was submitted that there was no evidence that the marks bore any such connotation and, in the absence of such evidence, there was no basis to attribute such a connotation to them. In our view, the marks at most suggest a connection of some kind [[[RESPONDENT]]] the [NAME] and the building, and there is such a connection: the [NAME] of the marks owns the building. In our view, senior counsel for [[[RESPONDENT]]] was correct in submitting that there is nothing about the mark which necessarily suggests that the services will be provided at or necessarily from (whatever precisely that means) the building. Accordingly that ground of attack fails also.

Conclusion For those reasons we would dismiss both the appeal and the cross-appeal, in each case with costs. I certify that this and the preceding nineteen (19) pages are a true copy of the Reasons for Judgment herein of the [NAME], [COUNSEL] and [COUNSEL].

Associate: Dated: 18 December 1998

Counsel for the Appellant: [redacted]

Solicitor for the Appellant: [redacted]

Counsel for the [[[RESPONDENT]]]: [NAME]. [COUNSEL] SC with [NAME]. [COUNSEL]

Solicitor for the [[[RESPONDENT]]]: [NAME] of Hearing: 20 November 1998

Date of Judgment: 18 December 1998