Deceptive similarity cornered

It is well established that the reputation of a registered trade mark is not relevant to the question of whether two marks are deceptively similar.  The test of deceptive similarity is a notional one, which involves assessing the impression created by each mark and the likely effect of mark on the minds of potential customers.  The manner in which the registered mark is actually used is not relevant to this assessment.

But how should deceptive similarity be assessed when a mark has achieved registration through use, in circumstances where the mark is otherwise too descriptive or non-distinctive to be registrable?  That was the key issue in the appeal in Swancom v Jazz Corner Hotel.

Swancom was the registered owner of the mark CORNER HOTEL for live music services.  The mark CORNER HOTEL is not particularly distinctive, because it describes a hotel located on a corner.  But the mark was registered based on its acquired distinctiveness (i.e. reputation).  Swancom argued that the notional consumer should be assumed to have knowledge of this acquired distinctiveness for the purpose of assessing deceptive similarity.  A notional consumer who knows that CORNER HOTEL is a live music venue is arguably more likely to be confused into assuming that JAZZ CORNER HOTEL is associated with that venue, when compared to a notional consumer who understands CORNER HOTEL to be ordinary descriptive language.

The Full Court rejected Swancom’s argument, and held that the notional consumer should be treated as understanding CORNER HOTEL to have its ordinary descriptive meaning.  The Full Court agreed with the trial judge that use of JAZZ CORNER HOTEL does not infringe Swancom’s registration.   The decision provides yet another illustration of how difficult it can be to protect a descriptive brand.  Read the decision here.