Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56

FEDERAL COURT OF AUSTRALIA

Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 Appeal from: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554

File number(s): QUD 683 of 2015

Judge(s): GREENWOOD, BESANKO AND KATZMANN JJ

Date of judgment: 7 April 2017

Catchwords: TRADE MARKS – consideration of the tests for determining whether the registered owner of the trade marks in suit was, at the date of application for registration, the proprietor by authorship and first use – consideration of whether first use in connection with one of the services for which each trade mark in suit is registered within the range of Class 36 and Class 43 services for which each trade mark is registered, gives rise to first use of each mark in relation to any of the other services as registered, as contended "true equivalents" of "commercial real estate agency services" TRADE MARKS – consideration of the tests for determining whether particular services can properly be regarded as "true equivalents" of particular services or whether particular services are services "of the same kind" as other services – consideration of the need for evidence on such questions apart from textual construction of each of the services so described as registered TRADE MARKS – consideration of whether prior use of "a mark" by the registered proprietor constitutes prior use of "the registered trade mark" – consideration of whether prior use relied upon by the registered owner is prior use of a mark properly understood as one "substantially identical with" the registered trade mark – consideration of the notion of a "device" – consideration of whether prior use of a mark "substantially identical with" the registered trade mark gives rise to proprietorship not only in the registered trade mark but also in the mark "substantially identical with" the registered trade mark TRADE MARKS – consideration of the tests to be applied in determining whether a trade mark is capable of distinguishing an applicant's services in respect of which the mark is registered from the services of others, for the purposes of s 41(1) to s 41(4) of the Trade Marks Act 1995 (Cth) – consideration of the application of s 41(5) and s 41(6) of the Act TRADE MARKS – consideration of the tests to be applied in determining whether a party has used a mark substantially identical with or deceptively similar to the registered trade mark – consideration of s 120(1) – consideration of whether s 120(2) had any application in the circumstances of the case TRADE MARKS – consideration of s 122(1)(b) of the Trade Marks Act 1995 (Cth) – consideration of s 124(1) of that Act