Can a business obtain the registration of a trade mark for services where the mark concerned is also the name of the building from which the services are supplied? This was the central question in a recent Federal Court decision involving the well-known Q1 building on the Gold Coast.
Justice Reeves decided that there was no reason to prevent Mantra from obtaining a trade mark registration for “Q1” for the hotel and real estate services provided by Mantra from the Q1 building.
This decision gives reassurance to hotel operators and the owners of management and letting rights for apartment complexes in Australia that they can protect their operating brand, even if it is the same or similar to the name of the building.
“Q1” is the name of an “iconic” high rise apartment building situated on the Gold Coast in Queensland. It has 78 levels which contain, among other things, 526 residential apartments (the residential component of the Q1 building) and an observation deck on levels 77 and 78. On the ground floor, there is a separate retail area incorporating a number of shops and restaurants, a “public” area known as the Q1 Piazza.
Mantra IP owns intellectual property for the Mantra Group of companies. One of the Mantra Group companies owns the Management and Letting Rights for the residential component of the Q1 building, and acted as the caretaker and letting agent. It used the branding “Q1” and “Q1 Resort and Spa” for its business.
The Respondent, Mr Spagnuolo owns two apartments in the Q1 building and has letting agreements with the owners of a number of other apartments in the Q1 building. He acts as an offsite letting agent (as opposed to an onsite letting agent) in which he offers accommodation for short term holiday rental under the business name “Q1 Holidays Gold Coast”.
In 2008, Mantra IP filed three trade mark applications for the word mark “Q1”. The Trade Marks Office allowed these applications. Mr Spagnuolo filed notices of opposition to these applications and in November 2010, the Registrar of Trade Marks’ delegate rejected Mantra IP’s trade mark applications on the ground that the name “Q1” had a geographical connotation and formed “part of the common heritage”. Given other traders may wish to use the name “Q1” to promote rental accommodation services in the Q1 building, the Registrar’s delegate found that use of the trade mark in relation to the goods and services applied for would likely deceive or confuse the “holidaymaking public”.
Mantra IP appealed the decision to the Federal Court claiming that the Registrar had erred in making these findings.
Justice Reeves stated at the outset that a person cannot obtain registration of a trade mark for a building name per se. However, the central issue for consideration in this case was whether a person can obtain the registration of a trade mark for services where the mark concerned is also the name of the building from which the services are supplied.
Justice Reeves answered this in the affirmative. He found that concurrent use of a sign as both (a) the name of a building and (b) to distinguish certain services provided from, or in relation to, that building, does not deprive the sign of its inherent adaptability to distinguish the services concerned.
Justice Reeves held that word mark “Q1” is alone inherently adapted to distinguish Mantra IP’s services given that the term was not descriptive of Mantra IP’s services and did not have a common meaning or incorporate an existing geographical name when first devised. As such, Justice Reeves found that from its inception, the sign “Q1” was inherently capable of distinguishing Mantra IP’s services and this was not something that could be changed or acquired. While the evidence supported the conclusion that the “Q1” sign has become known as the name of the Q1 building, it was not a necessary corollary that it lost its inherent adaptability to distinguish Mantra IP’s services.
In short, the name of a building is different to the name of a city, town or suburb, and is not part of the common heritage. There is no public policy ground to prevent the name of a building being part of the trade mark of a trader.
In light of this finding, Justice Reeves also found that no connotation or secondary meaning was contained in the mark “Q1” and that the use of the mark would not be contrary to law or likely to mislead or confuse consumers. Justice Reeves also found that Mantra IP is the owner of the mark as a successor in title to the first user of the mark.
As such, the decision of the Registrar was set aside and the trade mark applications were permitted to proceed to registration (subject to all other pending oppositions in relation to the applications being withdrawn or dismissed).
- Hotel owners, onsite letting agents, building managers and shopping centre operators can obtain property specific trade mark protection in relation to the services that they provide from a property.
- Third parties cannot free-ride off the branding and reputation of the onsite property operator, where appropriate trade mark protection has been obtained.
- The name of a building per se cannot be protected by trade mark.
- The owners of residential apartments in a building are unlikely to have trade mark rights in the name of the building.
- When establishing a new development, it is good practice to file for trade mark registrations prior to launch to protect the goodwill of the onsite operator.
- When naming a hotel, it is a good idea not to use a geographical term as the primary part of the brand.