Australia: Protecting your assets - building names and trade marks

Landlord and Tenant alert
Last Updated: 25 August 2012
Article by Stuart Green

Focus: Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769
Services: Intellectual Property & Technology, Property & Projects
Industry Focus: Property

Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769

Can a building name be protected by trade mark? Should a building owner seek that protection?

A recent decision of the Federal Court in relation to the iconic "Q1" high rise apartment building on the Gold Coast in Queensland is set to place trade mark protection back on the agenda for the Australian property industry.

The case involved an appeal from a decision of a delegate of the Registrar of Trade Marks. It centred on three trade mark applications for the word mark "Q1" filed by Mantra IP. The applications sought to protect a variety of services including leasing, property management, reservation and accommodation services.

Mantra IP's trade mark applications were originally accepted by the Registrar and advertised in the ordinary course in the Official Journal of Trade Marks. Mr Spagnuolo, the operator of a short term holiday accommodation business under the name "Q1 Holidays Gold Coast" and owner of two residential apartments in the Q1 Building, opposed registration under section 52 of the Trade Marks Act 1995 (Cth).

Upholding Mr Spagnuolo's opposition, the Registrar's delegate suggested that "Q1" had a geographical connotation rather than being a badge of origin for Mantra IP's services, and was utterly unfit for registration as a trade mark because Q1 ". . . is the only name of a building which, by virtue of its multi-faceted identity, has in the words of the Full Federal Court 'become part of the common heritage' " and ". . . any use of 'Q1' intended to denote a single trader cannot avoid creating deception and confusion in the marketplace, as it is a name patently required for use by all of the many traders with a connection to the building". 1

Mantra IP appealed. In support of registration Mantra IP argued that:

  • as an invented term with no dictionary meaning, "Q1" was inherently adapted to distinguish the accommodation services provided by Mantra IP and its licensees from the services of other traders; and
  • while Q1 has become known as the name of the building, contrary to the Registrar's delegate's conclusion, Q1 has not become a geographical place name such that it is part of the "common heritage" and a designation that all traders would be entitled to use.

In support of his case, Mr Spagnuolo argued that:

  • "Q1" is not registrable because other apartment owners and letting agents would, in the normal course of their business, wish to use the name "Q1" in connection with providing leasing services in relation to the Q1 Building; and
  • registration of "Q1" by Mantra IP would be likely to mislead or deceive members of the public into believing that Mantra IP and its licensees were the sole providers of accommodation services in relation to apartments in the Q1 Building.
  • Justice Reeves set aside the delegate's decision, concluding that:
  • the mark "Q1" was inherently adapted to distinguish the services for which Mantra IP sought trade mark protection;
  • the Registrar's delegate had incorrectly focused on the use made of the sign "Q1" as the name of the Q1 building, rather than focusing on the mark "Q1" itself;
  • the "Q1" sign has no geographical connotation; and
  • there was no evidence adduced to support the argument that use of the "Q1" word mark was misleading or deceptive in contravention of the Australian Consumer Law.

The Court dismissed Mr Spagnuolo's opposition and held that there was no other ground for the rejection of Mantra IP's Q1 applications. The applications should proceed to registration, subject to withdrawal or dismissal of any other pending opposition proceedings.

Take away

  • While registration of a sign as a trade mark may not be possible for a building itself, trade mark protection is available, achievable and advisable for services provided in constructing, managing, leasing, servicing, maintaining or otherwise dealing with a building.
  • As long as a proposed building name is not a geographical place name and has not become part of the common heritage, building owners should consider taking pre-emptive action to seek trade mark protection for the name of their property in relation to management, leasing, servicing, maintenance and associated services.
  • In filing a trade mark application in Australia, an applicant must intend in good faith to use, authorise the use or assign the trade mark to a body corporate for its use in Australia. This means that the owner of a trade mark could itself use the trade mark, licence the use or assign the trade mark to be used. Such action should be considered with a view to maintaining long term control over the use of the property name.

With the importance of trade mark protection of brands firmly back on the agenda for the Australian property industry, owners should also give due consideration to whether their leasing arrangements adequately protect their property name from inappropriate use or even misuse by third parties including tenants and leasing agents.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Stuart Green
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