Mid Sydney Pty Ltd v The Australian Tourism Co Ltd & Ors [1998] FCA 1616

FEDERAL COURT OF AUSTRALIA TRADE MARKS – "Chifley Tower" – infringement – whether use in relation to services in respect of which trade mark is registered – whether hotel management falls within ordinary meaning of "property management services" – whether use in relation to services of the same description as services in respect of which trade mark is registered – relevance of overall character or description of services involved – whether signs proposed to be used are deceptively similar to registered trade mark – whether hypothetical ordinary person would be caused to wonder or entertain a reasonable doubt about whether services came from the same source – real tangible danger of confusion – cross‑appeal to cancel registrations – capacity to distinguish services in respect of which they are registered – geographical name – whether other persons trading in services of the relevant kind, being actuated by proper motives, would wish to use that name in connection with their services – internal misrepresentation – whether mark suggested false connection between proprietor's services and building. Trade Marks Act 1995 (Cth), ss 6, 10, 41, 43, 44, 57, 88(2)(a), 120, 122(1)(a)(i), 234(2) Trade Marks Act 1955 (Cth), ss 24, 26, 33(2), 36(1A) Trade Marks Regulations 1958, Sch 4, Pt II Trade Marks Regulations 1995, Sch 1, Pt 2

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, applied Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227, cited Re J Lyons & Co Ltd's Application [1959] RPC 120, applied The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, cited Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491, referred to Mark Foy's v Davies Co‑op & Co Ltd (1956) 95 CLR 190, referred to Marc A Hammond Pty Ltd v Papa Carmine Pty Ltd [1976] 2 NSWLR 124, referred to NSW Dairy Corporation v Murray Goulburn Co‑operative Co Ltd (1989) 14 IPR 26, cited Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1, cited Chancellor, Masters and Scholars of the University of Oxford v Registrar of Trade Marks (1990) 24 FCR 1, cited Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, applied FH Faulding & Co Pty Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537, cited Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624, cited