The Full Federal Court has delivered a judgement that businesses using combinations of trade marks need to consider.

The Full Court of the Federal Court recently handed down its decision in the case Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56. This case dealt with a range of issues regarding trade mark use, ownership of a trade mark and trade mark infringement. This article considers one of the key issues in the case, namely, what constitutes use of a composite device mark featuring both words and logo elements. The findings of the Court are relevant to businesses using composite marks or lock-up logos.

Background facts

The Appellant, Accor Australia, was the licensee of Australian trade mark registrations for CAIRNS HARBOUR LIGHTS and HARBOUR LIGHTS in relation to various real estate and accommodation services. The trade marks were used in relation to residential apartment buildings in Cairns. The Appellant was the only company authorised to offer on-site letting services in relation to residential apartment buildings.

The Appellant alleged that the Respondent, Liv, had infringed its registered trade marks by using CAIRNS HARBOUR LIGHTS and HARBOUR LIGHTS and various logos and domain names containing these marks in relation to real estate services. The Respondent used the marks in relation to its off-site letting services in relation to the same residential apartment buildings as the Appellant.

The Respondent cross-claimed from cancellation of the registered CAIRNS HARBOUR LIGHTS and HARBOUR LIGHTS on the basis, among others, that the Appellant was not the owner of the trade marks and the trade marks were not distinctive.

The Court therefore needed to consider what constituted use of CAIRNS HARBOUR LIGHTS and HARBOUR LIGHTS as trade marks and who had first use of the CAIRNS HARBOUR LIGHTS and HARBOUR LIGHTS in Australia in relation to the various relevant services.

Primary judge - was there use of a composite trade mark?

The Court considered whether the below advertisement was use of the HARBOUR LIGHTS mark, or a composite trade mark, for the purposes of first use of the mark.

Please click here to view the image. 

The Appellants used the advertisement in October 2004.

The Appellants contended that the words HARBOUR LIGHTS in the above advertisement were used as a trade mark in its own right. The Respondents argued that the words HARBOUR LIGHTS, the device comprising the gold stars and the words A NEW STAR SHINES were used as a composite mark.

The Primary Judge held that the use above was a composite mark. Therefore, given the composite mark as a whole was not substantially identical to HARBOUR LIGHTS, the use of advertisement was not an example of use of HARBOUR LIGHTS on its own and was not relevant to prior use and ownership of HARBOUR LIGHTS.

Appeal decision - was there use of a composite trade mark?

On appeal the Full Court did not agree with the Primary Judge. In relation to the same advertisement, it was found not to be a composite mark, but use of three separate trade marks, namely, the 5 STAR device and the words HARBOUR LIGHTS and A NEW STAR SHINES. This was because:

  • HARBOUR LIGHTS was the dominant and distinctive part of the advertisement;
  • the addition of the 5 STAR device and the words A NEW STAR SHINES did not substantially affect the identity of the trade mark or separately distinguish the services; and
  • these elements were merely additions to the registered HARBOUR LIGHTS mark.

Therefore, use of HARBOUR LIGHTS in the above advertisement was an example of the use of HARBOUR LIGHTS word trade mark.

Take away points

The decision of the Court regarding use of a composite mark highlights that, where you are using a combination of trade marks in a lockup format and you wish to protect each separate component, it is prudent to have trade mark registrations for each separate component. For best protection, business owners could also register the combination of trade marks, that is, the lockup device as a whole.

Further, if a third party is using a combination of trade marks in lockup format like the one above, it may be an infringement for you to use a mark that is substantially identical or deceptively similar to an individual component of that third party mark, particularly where that component is dominant and distinctive.