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Print articleGeographical Connotations: When a Building Name can be Trade Marked
September, 2012 - Lucy McGovern and John Fairbairn
Can a building name become a geographical indicator with the consequence that businesses operating from that building cannot include the name in their trade marks? The recent decision of the Federal Court in Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 has held that the mark "Q1" is inherently adapted to distinguish the services of the accommodation provider, Mantra IP Pty Limited (Mantra), even though "Q1" was also the name of the iconic high rise apartment in which the services were delivered. The judgment analyses the test under section 43 of the Trade Marks Act 1995 (Cth) for rejecting a trade mark on the basis that it has a geographical connotation.
Background
Q1 is a skyscraper located on the Gold Coast; it is advertised as Australia's tallest residential Tower. Mantra holds and licenses certain intellectual property rights on behalf of the Mantra Group. Companies within the Mantra Group operate from Q1 including conducting leasing, conference and resort businesses. Mantra applied to register the trade mark 'Q1' in classes 36, 39 and 43.
The trade mark was opposed by someone who owned apartments in the building and operated a short term holiday accommodation business under the name 'Ql Holidays Gold Coast' and domain name qlholidaysgoldcoast.com.au.
Delegate's decision
The Registrar's delegate originally rejected the mark pursuant to section 43. Section 43 provides:
The delegate found that "Q1" was a geographical connotation for the location where the services were provided, rather than being a badge of origin. On this basis, she considered that other traders may wish to use the name "Q1" to promote their rental accommodation in the Q1 building. The delegate considered that the sign was the only name of a building and, as such, had become "part of the common heritage". Due to the geographical connotation in the mark, consumers would be likely deceived or confused by the use of the mark for Mantra's services.
Federal Court
On appeal, the Federal Court rejected the delegate's conclusion, and found that the mark was inherently adapted to distinguish Mantra's services. In essence, Reeves J thought that the delegate had incorrectly focused on the use of the sign "Q1" as the name of a building, rather than focusing on the mark, and the inherent adaptability of the coined word "Q1" to distinguish Mantra's services.
In reaching this conclusion, Reeves J referred to the test in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (Clark Equipment) and its application in MID Sydney Pty Ltd v Australian Tourism Co Ltd (998) 90 FCR 236 (MID Sydney). In Clark Equipment, the court commented that a sign is not inherently adapted to distinguish the goods or services of a particular trader where it "includes words or names over which there is a common or public right of use in that they form part of the "common heritage", either in the English language..., or in a geographical name such as that of a town, suburb, district, municipality, region or state."
In MID Sydney, the court determined that "Chifley Tower" could distinguish the services of a trader, as it was not part of the "common heritage" in the same sense as a town, suburb or municipality. However, the court suggested that there may be a borderline exception, where a plaza or other public space adjoining a building has become part of the common heritage.
Applying MID Sydney, Reeves J held that a sign does not lose its inherent adaptability to distinguish services merely by being applied as the name of a privately owned building at the same time as the mark is applied to distinguish certain services provided from, or in relation to, that building.
Like the Chifley Tower, his Honour found that the name "Q1" was developed to signify the building; when the sign was first coined it did not have any obvious meaning and did not adopt or incorporate a geographical name, like "Surfers Paradise" or the "Gold Coast" into it. As the mark was distinctive of Mantra's services at the time of inception, it necessarily remained so. The mark did not lose its inherent adaptability to distinguish the services by virtue of concurrent use as the name of a privately owned building. Reeves J cast doubt on whether a "borderline exception" in the sense expressed in MID Sydney exists, and made clear that such an exception would not arise in these circumstances.
His Honour held that there was no connotation or secondary meaning contained in the Q1 mark itself.
Conclusion
The Mantra case shows the ability of traders to register the name of a building for their services, where the building has a "coined" or inventive name.
The case also demonstrates the inherent danger for service providers who seek to promote their services using a building's name as a badge of origin, without first conducting trade mark searches or registering protection in the trade mark for the services provided. It may be that the building owner or other tenants have registered trade marks and can prevent other residents from using it.
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Background
Q1 is a skyscraper located on the Gold Coast; it is advertised as Australia's tallest residential Tower. Mantra holds and licenses certain intellectual property rights on behalf of the Mantra Group. Companies within the Mantra Group operate from Q1 including conducting leasing, conference and resort businesses. Mantra applied to register the trade mark 'Q1' in classes 36, 39 and 43.
The trade mark was opposed by someone who owned apartments in the building and operated a short term holiday accommodation business under the name 'Ql Holidays Gold Coast' and domain name qlholidaysgoldcoast.com.au.
Delegate's decision
The Registrar's delegate originally rejected the mark pursuant to section 43. Section 43 provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The delegate found that "Q1" was a geographical connotation for the location where the services were provided, rather than being a badge of origin. On this basis, she considered that other traders may wish to use the name "Q1" to promote their rental accommodation in the Q1 building. The delegate considered that the sign was the only name of a building and, as such, had become "part of the common heritage". Due to the geographical connotation in the mark, consumers would be likely deceived or confused by the use of the mark for Mantra's services.
Federal Court
On appeal, the Federal Court rejected the delegate's conclusion, and found that the mark was inherently adapted to distinguish Mantra's services. In essence, Reeves J thought that the delegate had incorrectly focused on the use of the sign "Q1" as the name of a building, rather than focusing on the mark, and the inherent adaptability of the coined word "Q1" to distinguish Mantra's services.
In reaching this conclusion, Reeves J referred to the test in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (Clark Equipment) and its application in MID Sydney Pty Ltd v Australian Tourism Co Ltd (998) 90 FCR 236 (MID Sydney). In Clark Equipment, the court commented that a sign is not inherently adapted to distinguish the goods or services of a particular trader where it "includes words or names over which there is a common or public right of use in that they form part of the "common heritage", either in the English language..., or in a geographical name such as that of a town, suburb, district, municipality, region or state."
In MID Sydney, the court determined that "Chifley Tower" could distinguish the services of a trader, as it was not part of the "common heritage" in the same sense as a town, suburb or municipality. However, the court suggested that there may be a borderline exception, where a plaza or other public space adjoining a building has become part of the common heritage.
Applying MID Sydney, Reeves J held that a sign does not lose its inherent adaptability to distinguish services merely by being applied as the name of a privately owned building at the same time as the mark is applied to distinguish certain services provided from, or in relation to, that building.
Like the Chifley Tower, his Honour found that the name "Q1" was developed to signify the building; when the sign was first coined it did not have any obvious meaning and did not adopt or incorporate a geographical name, like "Surfers Paradise" or the "Gold Coast" into it. As the mark was distinctive of Mantra's services at the time of inception, it necessarily remained so. The mark did not lose its inherent adaptability to distinguish the services by virtue of concurrent use as the name of a privately owned building. Reeves J cast doubt on whether a "borderline exception" in the sense expressed in MID Sydney exists, and made clear that such an exception would not arise in these circumstances.
His Honour held that there was no connotation or secondary meaning contained in the Q1 mark itself.
Conclusion
The Mantra case shows the ability of traders to register the name of a building for their services, where the building has a "coined" or inventive name.
The case also demonstrates the inherent danger for service providers who seek to promote their services using a building's name as a badge of origin, without first conducting trade mark searches or registering protection in the trade mark for the services provided. It may be that the building owner or other tenants have registered trade marks and can prevent other residents from using it.
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