Song plays on for ‘The Jazz Corner’ after ‘The Corner’ falls short in trade mark dispute
16/07/21
Stuart Green and Suzette Pullinger DCC
While jazz outliers might invoke Miles Davis’s album ‘On the Corner’ and rock aficionados would be quick to cite Creedance Clearwater Revival’s ‘Down on the Corner’, when it comes to the battle of Melbourne’s music venues, the Federal Court of Australia has deemed the city big enough for ‘The Corner’ and ‘The Jazz Corner’ to coexist without confusion.
The recent case of Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328 (9 April 2021) reinforces the importance of considering the impression left by uncommon element/s when comparing trade marks in trade mark infringement cases – especially in circumstances where a shared element is deemed descriptive or laudatory.
BACKGROUND
Swancom Pty Ltd (the Applicant) is the registered owner of Australian trade mark registrations 1388154 CORNER HOTEL, 1623364 CORNER PRESENTS, 1442211 CORNER and 1669900 THE CORNER for hospitality and entertainment services in classes 41 and 43. The Applicant had since 1995 owned hotel venues offering live music in the Melbourne suburb of Richmond that hosted performances of well-known Australian and international acts. These included (amongst others) Crowded House, Powderfinger and Men at Work. ‘The Corner’ was also the venue where U2 recorded a music video and Jack White of The White Stripes wrote the well-known riff to the song “Seven Nation Army” during a sound check.
The Jazz Corner Hotel Pty Ltd, Bird’s Basement Pty Ltd, Saint Thomas Pty Ltd, Ubertas Operations Pty Ltd and the sole director of these companies Albert Dadon (the Respondents) operated businesses in a Melbourne central business district hotel. Ubertas Operations Pty Ltd owned trade mark registrations used by The Jazz Corner Hotel Pty Ltd including registrations 1825739 
and 1839135 JAZZ CORNER and 1821433 JAZZ CORNER HOTEL for various hotel, night club, food and beverage services in class 43 and Saint Thomas Pty Ltd owned registrations 1893220 JAZZ CORNER and 1906026 
for café services. Bird’s Basement Pty Ltd ran a related jazz venue in the building’s basement.
The Applicant alleged the Respondents’ use of JAZZ CORNER OF MELBOURNE, JAZZ CORNER OF THE WORLD, JAZZ CORNER HOTEL and JAZZ CORNER CAFÉ in relation to music and ticketing booking services infringed its CORNER registrations and sought cancellation of the Respondents’ JAZZ CORNER registrations. The Respondents denied infringement and in a cross claim sought partial cancellation of the Applicant’s registrations, including on the basis that the respective CORNER marks were not distinctive in relation to the class 41 services claimed in those registrations.
DISTINCTIVENESS OF ‘CORNER’
The Respondents argued that the Applicant’s marks for CORNER and/or CORNER HOTEL were not distinctive for its class 41 music services, ticket booking or related services. The Respondents also suggested that “corner” described a hotel “being situated at a junction of two roads” and the colloquial meaning of “round the corner” would be recognised by Australian consumers as a description of a location. The Applicant contended however that based on substantial evidence and reputation – their ‘CORNER’ marks had the capacity to distinguish (at the date of filing).
Justice O’Bryan held that save for CORNER PRESENTS, the Applicant’s CORNER marks were not distinctive in respect of hotel services because CORNER described the geographic location of the hotels. However, they were capable of functioning as a trade mark in respect of services related to staging live music performances, particularly considering the Applicant’s reputation prior to filing.
The Court also considered whether the Applicant’s registrations for CORNER and THE CORNER should be limited to preserve freedom of other entertainment service providers to use the word “corner” in their trading names (such as providers of free live music or sporting screen venues). However, His Honour considered this was a question for the parties to provide submissions on at a later date.
USE AS A TRADE MARK AND DECEPTIVE SIMILARITY
Critical to the Court’s assessment of infringement was firstly, whether the Respondents had used the JAZZ CORNER marks as trade marks in respect of live music services, and secondly whether these marks were deceptively similar to the Applicant’s CORNER marks.
On the issue of ‘use as a trade mark’, Justice O’Bryan noted that Bird’s Basement was a separate jazz club within the same building that offered accommodation and café services under various JAZZ CORNER trade marks, and shared common ownership. While the jazz club itself was using the trade mark ‘Bird’s Basement’, His Honour held that consumers would recognise the JAZZ CORNER businesses within the building to be providers of live music performances. This was the case in respect of JAZZ CORNER HOTEL, JAZZ CORNER CAFÉ and JAZZ CORNER OF MELBOURNE marks. JAZZ CORNER OF THE WORLD on the other hand was held to be recognised as descriptive of a jazz venue, and use of this latter mark was not use as a trade mark.
Despite the finding on use, the Court held that the Respondent’s JAZZ CORNER marks were not deceptively similar to the Applicant’s CORNER trade marks. While noting that the word ‘jazz’ had a descriptive meaning, His Honour held that the incorporation of ‘jazz’ left “a more striking impression” in the mind of an ordinary member of the public when compared to ‘corner’ and ‘hotel’. Further, ‘corner hotel’ was descriptive because ‘from the earliest days of European settlement of Australia to the present day, hotels have been named the “Corner Hotel”’ (see [249]-[250]).
RELATED ISSUES
Although Justice O’Bryan concluded that the Respondents’ use of the JAZZ CORNER marks did not infringe the Applicant’s CORNER marks, for completeness, His Honour also considered whether the Respondents would have defences to infringement.
Justice O’Bryan noted that use of JAZZ CORNER OF THE WORLD and JAZZ CORNER OF MELBOURNE was not a good faith ‘description’, because the marks were allusive in meaning and not used to describe their services. Further, there was no ‘prior use’ to entitle the Respondents to obtain registration of those marks. For the remaining JAZZ CORNER marks, the rights of the registrations in class 43 did not extend to class 41 music services and therefore they were not merely exercising rights granted by existing trade mark registrations.
Justice O’Bryan also discussed whether in a finding of infringement the Applicant could have cancelled the Respondents’ registrations. His Honour noted however that live music services were not within the scope of the Respondents’ relevant registrations and therefore the registrations could not be cancelled.
CONCLUSION AND KEY TAKEAWAY
Although the Applicant’s infringement and cancellation claims were dismissed, a notice of appeal has been filed and accordingly this remains a ‘watch this space’ scenario. The decision however, serves as an important reminder for trade mark owners to consider whether additional elements in their trade marks create a different or ‘striking’ impression to the overall impression of their mark – especially where commonly shared elements may be considered descriptive or laudatory.
