"Geographical origin … of … services"
72 The first sub-issue requires me to determine the meaning of the words "geographical origin … of … services". Before the passage of the Trade Marks Act in 1995 ("the 1995 Act"), s 64(1)(b) of the Trade Marks Act 1955 (Cth) ("the 1955 Act") provided a similar defence to that offered by s 122(1)(b). It applied to: "The use in good faith by a person of a description of the character or quality of his goods or services". The words "kind … quantity, intended purpose, value, geographical origin …" were added by the 1995 Act. Apart from identifying that the general purpose of the 1995 Act was to allow Australia to comply with its World Trade Organisation obligations, the Second Reading Speech for the 1995 Act does not shed any light on why these specific words were included in the new section. However, it seems likely that they may have been adopted from the equivalent section of the Trade Marks Act 1994 (UK) ("the UK Act"), which had been passed by the UK Parliament a year earlier. Section 11(2)(b) of the UK Act provided as follows:
(2) A registered trade mark is not infringed by
(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, at time of production of goods or of rendering of services, or other characteristics of goods or services, or …
73 This section was inserted in the UK Act to implement the European Trade Marks Directive (First Directive 89/104/EEC of the Council of 21 December 1988) relating to trade marks. Article 6(1)(b) of that Directive was as follows:
(1) The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade,
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering the service, or other characteristics of goods or services …
74 Whilst this historical material may reveal the genesis of the words "geographical origin", it does not assist in determining their meaning. In that task, it is the language of the provision that is of fundamental importance. As well a consideration of the context, including the general purpose and policy of the provision may be called for: see Alcan (NT) Alumina Pty Ltd v Commissioner of Territory Revenue [2009] HCA 41 at [47] and Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355 at [69].
75 Ms O'Gorman submitted that the words "geographical origin … of … services" in s 122(1)(b) do not refer to the place from which the service provider originates, but rather they referred to the place from which the services originate. She submitted that Tailly offers the services of sub-letting apartments located in the Circle on Cavill complex and, for that reason, when it used the words "Circle on Cavill", it used them to indicate the geographical origin of those sub-letting services. She submitted a complex comprising two high rise buildings, or a "vertical village" as one of the witnesses described it, can be regarded as a geographical point or feature in the urban setting of Surfers Paradise.
76 Mr Crowe SC pointed to the immediately preceding provision, s 122(1)(a)(i), which he submitted dealt with the more specific situation of a trader using a trade mark in good faith as "the name of the person's place of business". He gave, as an example of this, the decision in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 ("MID Sydney") at 251, where the Full Court observed that traders conducting their business from the Chifley Tower building in Sydney would not have infringed the plaintiff's trade mark, ie Chifley Tower, if they used that name in good faith as the name of their place of business. However, he submitted, Tailly could not rely upon s 122(1)(a) because the Circle on Cavill complex was not its place of business. Thus, he submitted, it had to resort to the "geographical origin" provision in s 122(1)(b). Given that the specific situation of a place of business is dealt with in s 122(1)(a), he submitted that the word "geographical" in s 122(1)(b) must refer to the broader concepts of place such as country, state, region, city, town or suburb from which services originate. He gave, as an example, "Roma tomatoes".
77 It can be seen from these submissions that Mantra places a greater emphasis on the broader concept of place which, it submits, comes from the meaning of the word "geographical", whereas Tailly places a greater emphasis on the source of the service activity which, it submits, flows from the complete phrase "geographical origin … of … services". As pointed out above, to determine the correct meaning of these words, it is necessary to consider the language used and the purpose and context of the provision.
78 The word "geographical" is defined in the Macquarie Dictionary (4th ed, 2005) to mean:
1. of or relating to geography. 2. referring to or characteristic of a certain locality, especially in reference to its location in relation to other places.
79 And the word "origin" is relevantly defined to mean:
1. that from which anything arises or is derived; the source: to follow a stream to it origin. 2. rise or derivation from a particular source: these and other reports of like origin. 3. the first stage of existence; the beginning: the date of origin of a sect. 4. birth; parentage; extraction: Scottish origin.
80 The purpose of s 64(1)(b) of the 1955 Act was identified by Lindgren J in Kettle Chip Co Pty Ltd v Pepsi Co (Aust) Pty Ltd (1995) 132 ALR 286 ("Kettle Chip Co") (while this decision was overturned on appeal, that did not affect his Honour's treatment of s 64) as protecting a trader who "chances to use a word or words which trespass upon another's trade mark of the existence of which the trader was unaware": at 304. Dealing with the same section, Hill J observed at first instance in Sterling Pharmaceuticals Pty Ltd v Johnson & Johnson Australia Pty Ltd (1990) 18 IPR 309 (at 341):
It is consistent with the policy underlying the section that the mark said to be used bona fide is a description of the character or quality of the goods be a word that has passed into the English language. The Act was not intended to 'enclose and appropriate as private property certain little scripts of the great open common of the English language': see Mark Foy's Ltd at 201.
81 To similar effect, see Cantarella Bros Pty Ltd v Kona Coffee Roastery & Equipment Supplies Pty Ltd (1993) 28 IPR 176 ("Cantarella") at 178 per Einfeld J. Because both sections are substantially similar in their effect, I consider these observations apply with equal force to s 122(1) of the 1995 Act.
82 As to context, when s 122(1)(b) is read in the context of s 122 as a whole, I consider the specific concept of place, ie "place of business", described in s 122(1)(a) does provide support for Mr Crowe SC's submission that the word "geographical" in s 122(1)(b) is intended to describe a broader concept of place such as a country, region or town. The decision in Angove's Pty Ltd v Johnson (1982) 66 FLR 216 provides an example of this "place of business" provision. In that case, a Full Court of this Court held by majority that the respondent was entitled to use the words "St Agnes Liquor Store" in the name of its business in the Adelaide suburb of St Agnes, notwithstanding that the plaintiff held a registered trade mark for the words "St Agnes". The Court held that this usage of the words fell within the "name of place of business" in s 64(1)(a) of the 1955 Act, which is equivalent in effect to s 122(1)(a) of the 1995 Act. As Mr Crowe SC pointed out, Tailly cannot rely upon this "place of business" provision and is forced to resort to the "geographical origin" provision of s 122(1)(b) because the Circle on Cavill complex is not its place of business.
83 In my view, the difficulties for Tailly on this issue lie, not so much with the word "origin" as indicating the source of its services, but rather in having the word "geographical" construed to refer to a specific place, such as the Circle on Cavill apartment complex, when the ordinary meaning of the word "geographical" refers to a broad locality and the Trade Marks Act deals with specific places, ie places of business, in the immediately preceding subsection.
84 There is another aspect that I consider compounds Tailly's difficulties. In Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 ("Clark Equipment"), albeit in relation to a challenge to the registration of a trade mark, Kitto J identified the "common right of the public to make honest use of words forming part of the common heritage" (at 514). He instanced the name of a place or an area, "whether it be a district or a county, a state or a country" (at 515).
85 These observations were considered by the Full Court in MID Sydney. As noted above, that case dealt with a large city office building: the Chifley Tower comprising 42 storeys. One of the questions that arose in that case is similar to the argument put by Ms O'Gorman: that the Circle on Cavill building is so large and prominent that it can be referred to as a geographical location in Surfers Paradise. In MID Sydney, the appellant was the owner of the Chifley Tower and it had a registered trade mark comprising the words "Chifley Tower" in respect of property maintenance services. The respondents operated a number of hotels in five capital cities in Australia and wanted to use the name "Chifley" in the names of some of those hotels. One of the proposed names was "Chifley on the Wharf" for a hotel situated on the Finger Wharf at Woolloomooloo in Sydney. Whilst the case did not involve a defence under s 122(1) of the Trade Marks Act, it did consider some of the issues raised by Tailly in this case.
86 After quoting at length from the decision of Kitto J in Clark Equipment (set out in part at [84] above), the Full Court said (at 250 to 251):
We rather doubt that any indication is to be found in the judgment of Kitto J in Clark Equipment that he would have regarded a large privately owned office building as analogous to a large and important industrial town or district or to a smaller town or district which is a seat of manufacture of goods of a particular kind. To say that is not conclusively to answer Touraust's submission. But it does suggest that it may not be so simple a matter as to say that, as in a large town, so in a large office building, there will be found numerous traders who may wish to describe their goods or services by reference to their place of business.
MID acquired a building approaching completion and chose a name for it; at about the same time MID applied for the first of its registered marks in relation to property management services intending, no doubt, to provide those services, principally if not exclusively, in relation to the building. The Chifley Tower is not part of the common heritage in the sense that a town, suburb or municipality is. Chifley Plaza perhaps might answer that description, but the registered trade mark does not incorporate that expression. …
… Moreover, it cannot be said that it is likely that a trader operating from The Chifley Tower will, without impropriety, wish to use the name "Chifley Tower" in relation to property management services (other than as the trader's place of business). The position is different from that of a town, suburb or municipality, since it could reasonably be expected that traders might wish to use the names of those geographic locations in connection with their services. (emphasis added)
87 In my view, these observations suggest that the word "geographical" in s 122(1)(b) was intended to protect the common right of the public to use words forming part of the common heritage, specifically, the name of a country, region, city or town. On the other hand, they suggest that word was not intended to extend to a large privately owned residential apartment building like the Circle on Cavill complex that could not be said to be a part of the common heritage, any more than it did to the large privately owned city office building in the MID Sydney case. The borderline exception identified in MID Sydney was where a plaza or other public space adjoining such a building had become a part of the common heritage. There is nothing to suggest that arises in this case.
88 Taking into account all these matters, I consider the words "geographical origin … of … service" in s 122(1)(b) are to be construed to refer to the name of a country, region, city, town or similar geographical area from which a trader's goods or services have been derived, but not to refer to a privately owned building situated within such a city or town, such as the Circle on Cavill complex in this case.
89 This conclusion is sufficient to deprive Tailly of a defence, relying upon s 122(1)(b) of the Trade Marks Act. However, both counsel asked me to consider the other sub-issue that I have identified above, viz good faith, so I will proceed to do so.