Q1 is alone inherently adapted to distinguish Mantra IP's designated services
54 "Q1" is a sign or word that was coined, or made up, by the developer, Sunland, in 2001. It was made up of the letter "Q" and the number "1". As such, the sign "Q1" does not, in my view, convey any obvious meaning to ordinary Australians. It is not, therefore, surprising to find that it is an agreed fact in these proceedings that: "in 2001, the term 'Q1' had no common meaning and was not used by the public in 2001 as a common term in relation to real estate services, hotel services or restaurant services". Consistent with this agreed fact, whether it is considered as at 2001, or as at the present time, "Q1" was not, and is not, descriptive of the character or quality of Mantra IP's Designated Services. It follows that the registration of the sign "Q1" as a trade mark will not infringe upon the "common heritage" in the sense that: "[t]he vocabulary of the English language is common property: it belongs alike to all; and no-one ought to be permitted to prevent the other members of the community from using for purposes of description a word which has reference to the character or quality of goods": see Mark Foy's Limited v Davies Coop and Company Limited (1956) 95 CLR 190 at 199 per Williams J, referring to the speech of Lord Herschell in The Eastman Photographic Materials Company, Limited v The Comptroller-General of Patents, Designs and Trade Marks [1898] AC 571. Accordingly, the sign "Q1" does not, in my view, fall into the first of the two categories of unregistrable trade marks identified by Stone J in Kenman Kandy: signs that are descriptive of the character or quality of Mantra IP's Designated Services (see at [47] above).
55 However, the question raised in this case does not involve the public ownership of, and the rights to use, the common property in the English language. Rather, as the contentions of the parties show, the question here is whether the sign "Q1" infringes upon the "common heritage" because it falls into the second category of unregistrable trade marks identified by Stone J in Kenman Kandy: using a geographical name (see at [47] above). Stone J proposed a negative test to assess whether a sign fell into either of the two categories of unregistrable trade marks she identified. That test focused on the absence of any signification or association that prevented the sign being inherently adapted to distinguish the goods or services in question. Nonetheless, whether a sign uses a descriptive word or the name of a geographical place, the principle underlying both categories is the same: see Clark Equipment at 515 and Oxford University Press at 22 per Gummow J. That is, the sign is "not inherently, i.e. in its own nature, adapted to distinguish" (Clark Equipment at 515) the goods or services of a particular trader because it includes words or names over which there is a common or public right of use in that they form part of the "common heritage", either in the English language (see at [54] above), or in a geographical name such as that of a town, suburb, district, municipality, region or state. Put differently, one trader is to be prevented from obtaining, by registration, a private monopoly over the use of such a word or name because other traders have a "common right of the public to make honest use of" it: see Clark Equipment at 514 emphasised in 42 above and also Oxford University Press at 8 per Lockhart J. Thus, where the phrases "without any improper motive", "may legitimately desire to use", "only by proper motives" or "without impropriety" are used in Clark Equipment (at 514-5), I consider they all refer to a use which relies upon a public right to make honest use of the "common heritage" in either of the senses described above.
56 The use of a geographical name forming part of the "common heritage" was one of the matters the delegate relied on to reject the registration of the word mark "Q1". At [43] of the Reasons (see at [18] above), the delegate said that: "The Q1 sign 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'." As appears from her Reasons, the delegate was referring to the Full Court decision of MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 (MID Sydney), which in turn adopted the expression "common heritage" from the decision of Kitto J in Clark Equipment at 514. While the delegate was directing these observations to the ground of opposition under s 43 of the Act, I consider she has misconstrued what the Full Court said in MID Sydney about the expression "common heritage". In essence, I consider that occurred because the delegate became distracted by the fact that the sign "Q1" had been concurrently used as the name of the Q1 building. To demonstrate why this is so, it is necessary to examine what the Full Court said about that issue in MID Sydney.
57 MID Sydney involved a large city office building, the Chifley Tower, comprising 42 storeys. MID, the appellant, was the owner of the Chifley Tower building and it had a number of registered trade marks comprising the words "Chifley Tower" in respect of property maintenance services. Touraust, the third respondent, 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, including "Chifley on the Wharf" for a hotel situated on the Finger Wharf at Woolloomooloo in Sydney. Among other things, Touraust sought to attack MID's registration of its trade marks on the ground that they lacked the capacity to distinguish the services in respect of which they were registered (see at 247). Touraust argued that Chifley Tower was "simply a geographical name, incapable of distinguishing services which are or are likely to be produced at that place … Other persons trading in services of the relevant kind and being actuated only by proper motives, would think of the expression and want to use it in connection with similar services" (see at 249). It was in this context that the expression "common heritage" came to be considered in MID Sydney.
58 After quoting at length from the decision of Kitto J in Clark Equipment (at 514-5), the Full Court rejected the analogy between the name applied to a private building by its owner and the geographical names of towns, suburbs, districts, municipalities, regions or states. It said (at 250-1):
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. There is no public policy against MID restricting those who have come to occupy space within its building as to the way in which they use its name in connection with goods they produce or services they provide. That being so, it is not easy to see, in our view, why any separate public policy, of the kind identified by Kitto J, should apply so as to deprive the name selected by MID of a capacity to distinguish, in circumstances where there could be no legitimate reason for persons other than those carrying on business within The Chifley Tower to use its name in connection with their goods or services.
… 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)
59 Thus, it is apparent from what the Full Court said (above) in MID Sydney that a sign concurrently applied as the name of a privately owned building and to distinguish certain services to be provided from, or in relation to, that building, does not lose its inherent adaptability to distinguish the services concerned. The Full Court appears to have reached that conclusion because the name of a privately owned building cannot be regarded as being the equivalent of a geographical place name such that it is to be considered as part of the "common heritage" over which the public, including a competitor trading in, or near, the building can claim to have a public right to make honest use of that sign in relation to its goods or services. In other words, its use as a trade mark will not, in any way, infringe upon the "common heritage" because its concurrent use as a building name does not bring it within that domain. This does not, of course, prevent a trader operating within the building concerned from using the name of the building to indicate the location of its place of business.
60 Like the Chifley Tower, "Q1" was a sign devised by Sunland, a private entity, to, among other things, signify or name its private building development. When it chose the sign "Q1", it did not adopt or incorporate a geographical name such as that of an established town, suburb or district, like Surfers Paradise, or the Gold Coast. Nor, for that matter, was it a name chosen following some public process, for example, by the Minister under the Place Names Act 1994 (Qld). For the same reason I also do not consider the fact that Sunland chose to register the address of the Q1 building with a Queensland Government Department affects this conclusion (see the delegate's Reasons at [32] set out at [72] below).
61 At about the same time as it devised the sign "Q1" as the name of its building development, Sunland successfully applied for the registration of a number of logo marks for the sign "Q1" for a range of services essentially comprising the same services as Mantra IP's Designated Services. It later assigned those Q1 logo marks to Sunleisure. From late 2005, Sunleisure used the Q1 word mark as a trade mark (see [91]-[92] below). Soon after Sunleisure became a part of the Mantra Group of companies, Mantra IP (then Stella IP) applied to register the word mark "Q1" in relation to its goods or services. From this history, I do not consider there is any basis upon which any trader could claim to have any "common right of the public" to make honest use of the sign "Q1" as a trade mark. Put differently, there is nothing about the sign "Q1" that could be said to bring it within the "common heritage" as discussed in Clark Equipment, or MID Sydney, such that it should be available for use by all members of the community and, as a consequence, remove its inherent adaptability to distinguish Mantra IP's Designated Services.
62 In his submissions Mr Webb focused on the iconic status of the Q1 building in the Gold Coast area. He pointed to the size and height of the Q1 building and the number of owners and the diversity of ownership of the residential apartments within the building. He submitted there was a large body of evidence that demonstrated that, since 2001, the sign "Q1" had been used by Sunland, and subsequently by Sunleisure, as the name of the Q1 building. He instanced, by way of example, Ms Lalli's evidence that the building had been "branded" as "Q1". He also relied on the existence of the "public pathway" (see the observations at [3] above) on the ground floor of the Q1 complex and the existence of the area known as the Q1 Piazza. All of these matters were said to support the conclusion that the sign "Q1" had become so well-known as the name of a geographical location, that is the Q1 building, that it could not be inherently adapted to distinguish Mantra IP's Designated Services.
63 I agree that the evidence supports the conclusion that the "Q1" sign has become known as the name of the Q1 building. Indeed, while he submitted that this was not the only use to which the sign "Q1" had been put, Mr Crowe accepted that was so. However, in my view, these submissions suffer from the same distraction as did the delegate's reasoning on this issue (see at [56] above), viz that concurrent use of the sign "Q1" as the name of the Q1 building removed its inherent adaptability to distinguish Mantra IP's Designated Services. Instead of focusing on the building name the sole relevant consideration under s 41(3) of the Act was whether, in itself, the sign "Q1" was inherently adapted to distinguish Mantra IP's Designated Services. On this question, as I have endeavoured to explain above, the sign "Q1" was not, and is not, descriptive of Mantra IP's Designated Services. Thus, when it was first devised in 2001, it is agreed that it had no common meaning. Nor did it, at that time, use or incorporate an existing geographical name. Thus, from its inception, it had none of the relevant significations or associations that may have affected its inherent capacity to distinguish Mantra IP's Designated Services. If, as at 2001, the sign "Q1" was, by its essential characteristics, or intrinsic qualities, distinctive of Mantra IP's Designated Services, in my view it necessarily remains so. In this context, that is not something that can be changed or acquired by use (see Burger King quoted at 42 above). Thus its concurrent and subsequent use as the name of the Q1 building does not, in my view, alter this. That use is no more relevant in considering its inherent adaptability to distinguish under s 41(3), than would be evidence of its acquired distinctiveness by use since 2001.
64 Finally, it is necessary to deal with the "borderline exception" the delegate referred to in her Reasons. The expression "borderline exception" comes from my decision in Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450; [2010] FCA 291 (Tailly). In that decision, I considered, among many other things, the word "geographical" in s 122(1)(b) of the Act. As a part of that consideration, I quoted from the observations of the Full Court in MID Sydney (as set out at [58] above). I then observed (at [87]) that:
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.
(Bold emphasis added)
65 In her Reasons, the delegate referred to these observations (Reasons at [30]). Then, after herself quoting from MID Sydney, she observed that (Reasons at [32]):
The Courts declined in both cases to be persuaded that either the "large privately owned city office building" known as Chifley Tower or the "large privately owned residential apartment building" known as Circle on Cavill could be described as "geographical locations". However, far from shutting the door completely on the possibility, they suggested that a building containing well-known public spaces such as those of Chifley Plaza may indeed "answer that description" and "form part of the common heritage".
(Bold emphasis added)
66 As noted above (at [62]), in his submissions Mr Webb relied upon the existence of the "public pathway" on the ground floor of the building and also the Q1 Piazza, in support of his more general submission that Q1 had become the name of a geographical location. If there is any such "borderline exception", I do not consider it arises in this case. First, it will be noted that the Federal Court was highly equivocal as to whether there was such an exception - it used the words "perhaps might". Secondly, as in MID Sydney, in this case the word mark Mantra IP has applied to register does not incorporate the expression "Q1 Piazza". Thirdly, I do not consider the existence of an area of a private building that is open for public use alters the conclusion that, insofar as the sign "Q1" is used as the name of the Q1 building, it can be considered to incorporate the name of a geographical place such that it forms part of the "common heritage".
67 As I have noted above (at [52]), the assessment of inherent adaptability to distinguish under s 41(3) of the Act proceeds on the basis of a practical real world assessment and with a presumption in favour of registration. Taking into account these considerations and the various matters set out above, I do not consider that Mr Spagnuolo has established, on the balance of probabilities, that ordinary members of the public seeing the sign "Q1" for the first time would consider that it has any common meaning, or that it signifies a geographical place name, such that it is not inherently adapted to distinguish Mantra IP's Designated Services. In other words, I consider the question posed by issue 1(a) (see at [30] above) must be answered in the affirmative. This conclusion obviates the necessity to consider the questions posed in paras 1(c)-(g) (see also at [30] above). However, it is still necessary to consider the questions posed in paras 1(b) and 2-4, viz whether there are any other grounds for rejecting Mantra IP's applications. I will now turn to do so.