On appeal to the full court of the Federal Court, Accor Australia and New Zealand Hospitality Pty Limited has succeeded in protecting the name of a residential apartment complex as a trade mark. That mark has been protected in relation to services dealing with the sale, leasing and letting of those apartments and holiday accommodation services.
Cairns Harbour Lights (CHL) was responsible for the construction of a complex consisting of three towers of residential apartments and a retail section, located adjacent to Cairns harbour in northern Queensland. The development used the names ‘Harbour Lights’ and ‘Cairns Harbour Lights’.
The domain names ‘harbourlights.com.au’ and ‘cairnsharbourlights.com’ were licensed in January 2004 and resolved to CHL’s website, which went live in early 2004. However, the services offered on the website related only to sales of apartments, rather than leasing or letting services.
On December 21 2004 CHL entered into agreements with Mirvac (subsequently Accor) giving it exclusive rights in relation to onsite letting and caretaking services. The development was completed in 2007.
CHL obtained trademark registrations for HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS on the basis of applications filed on January 21 2009 and April 21 2009 respectively. Those registrations covered the following services in Class 36:
“Agency services for the leasing of real estate properties, commercial real estate agency services, apartment letting agency, apartment rental services, rental of apartments, rental of accommodation.”
They also covered the following services in Class 43:
“Accommodation letting agency services (holiday apartments), accommodation letting agency services (hotel), hotel accommodation services, accommodation reservation services, booking services for accommodation, hotel services.”
Elise Bradnam purchased an apartment in 2005. She subsequently registered the domain names ‘cairnsharbourlights.com.au’, ‘harbourlightscairns.com.au’ and ‘harbourlightscairns.com’, and operated a business called Harbour Lights Property Management and Sales, which let apartments at the Harbour Lights complex. Bradnam’s website went live on October 31 2006 and she later sold the business in September 2009 to Liv Pty Ltd. Liv provided short-term letting services in competition with Accor.
At first instance, the most relevant findings of the primary judge were as follows:
- The CAIRNS HARBOUR LIGHTS trademark registration should be cancelled on the basis of nondistinctiveness and descriptiveness; and
- HARBOUR LIGHTS was inherently registrable, but the registration should be part cancelled due to prior use of the trademark by Bradnam in relation to certain services covered by the registration.
Accor appealed the decision.
Under Australian law, ownership of a trademark arises from either first use in Australia in relation to relevant goods or services or authorship of the mark and intention to use it upon or in connection with goods or services specified in an application for registration by the person claiming ownership.
As HARBOUR LIGHTS was in use before the date that CHL applied to register HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS, the court needed to assess and determine whether use made by the respective parties established claims of ownership and, if so, in respect of what services.
To establish a valid claim of ownership, the trademark used by the party claiming ownership must be at least substantially identical to the claimed mark and must relate to the services claimed or very similar services that might be considered the true equivalent. What services are true equivalents is to be determined “in a practical, commonsense way”.
At first instance, the primary judge found that while Accor had published certain advertisements before any use claimed by Bradnam, the marks used were not substantially identical to HARBOUR LIGHTS or CAIRNS HARBOUR LIGHTS, and so the use did not support a claim of ownership in respect of those trademarks. The primary judge also found that Bradnam had used those trademarks in relation to leasing and letting services before CHL’s application and so was the owner for those services.
The relevant examples of use by Accor are illustrated below:
The primary judge considered these in their entirety and took the view that the additional elements rendered the marks not substantially identical to HARBOUR LIGHTS.
On appeal, the full court found that the five gold stars in the first example was an addition that did not substantially affect the identity of the trademark in the words alone. It also found that the use of the words “A new star shines” in small script below the words “Harbour Lights” were not distinguishing features and likewise did not substantially affect the identity of the trademark in the words alone.
As regards the second example, the full court disagreed with the decision of the primary judge, who characterised the words “The Sebel Harbour Lights” as a single trademark. The full court found that it was not a single mark, but rather two trademarks, with “The Sebel” being the trademark of the accommodation operator. The full court stated that use of “The Sebel”:
“…simply tells the viewer that there is a relationship between the services badged ‘Harbour Lights’ in the advertisement, the developer and, in some way or other, an accommodation operator described by reference to the operator’s trade mark ‘The Sebel’.”
As a result, Accor had a valid claim of ownership in respect of all relevant services so as to defeat Bradnam’s claim.
As regards the trademark CAIRNS HARBOUR LIGHTS, the full court disagreed with the primary judge, who had focused on the fact that the services provided were based at Cairns harbour. The full court found that the distinctive part of the trademark was “Harbour Lights”.
It also found that as ‘Cairns’ was “merely a geographical reference”, it did not substantially affect the identity of the trademark HARBOUR LIGHTS. As a consequence, it found that the marks HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS were substantially identical and that Accor’s entitlement to ownership of HARBOUR LIGHTS also entitled it to ownership of CAIRNS HARBOUR LIGHTS.
The full court then dismissed the respondent’s contention that use of subject names was not infringing because they were used in good faith to indicate the geographical origin of the services. It noted the options available to the respondent and accepted the primary judge’s findings concerning use for the purposes of infringement. It found infringement of Accor’s registrations arising from use of the words ‘Harbour Lights’ in domain names, on websites and in advertisements, email addresses and listings on third-party accommodation booking sites. It also found use of ‘Harbour Lights’ as a metatag to be infringing.
In relation to the use of domain names, the full court held that electing to use a deceptively similar trademark in a domain name for the purposes of capturing enquirers and taking them to a website that offers relevant services was use as a trademark in connection with services offered at sites to which the domain names linked the enquirer.
Certain uses were accepted as being descriptive, such as those where the names were used to describe the accommodation as “Cairns Harbour Light Apartments” rather than being used to identify the service provider.
The case provides guidance on determining trademark ownership and assessing trademark use.
This article first appeared on WTR Daily, part of World Trademark Review, in May 2017. For further information, please go to www.worldtrademarkreview.com.
Authored by Sean McManis