Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd [2017] FCA 1249

FEDERAL COURT OF AUSTRALIA

Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd [2017] FCA 1249 File number: NSD 1489 of 2016

Judge: RARES J

Date of judgment: 16 June 2017

Catchwords: TRADE MARKS – Trade Marks Act 1995 (Cth) – where trade mark "centrefold" registered in respect of provision of adult entertainment and promotional model services ('designated services') – where registered owner used trade mark as part of word mark "Centrefold Entertainment" – where owner's mark substantially identical and deceptively similar to applicants' word marks "Centrefold Strippers" and "Centrefold Strippers Australia" – application under s 41 to remove trade mark from Register– whether owner's trade mark inherently adapted to distinguish its services from services of other persons – ordinary and natural meaning of word "centrefold" in markets in which parties operated – whether owner used word mark "centrefold" in its ordinary and natural meaning or as a mere description of its services – whether mark "centrefold" covert and skilful allusion to owner's designated services – whether owner's use of word "centrefold" was use of trade mark in relation to services under s 7(5) – whether owner used trade mark in connection with its services in a way that enabled conclusion to be drawn that usage had developed a secondary meaning related only to owner's designated services TRADE PRACTICES – Misleading and deceptive conduct – competing applications alleging other party contravened s 18 of Australian Consumer Law in using word "centrefold" in branding its business – whether use of word "centrefold" in the trading styles of each party amounted to that party engaging in conduct, in trade or commerce, that was misleading or deceptive – whether owner of trade mark passed off its business as that of the applicants – whether business names sufficiently distinguished one party's services from those of the other