Building names - A location, a brand or both?

9 August 2012

This article considers how building developers and owners of building management rights can use trade mark protection to protect brands established for buildings such as hotels, residential complexes and shopping centres.

The brand will arise in respect of goods or services, not the building itself

In a recent Federal Court case [1], the Mantra Group of companies (Mantra) successfully established that the building name “Q1” could operate as a brand for Mantra’s accommodation services.

The Q1 building is an iconic high rise residential building containing 526 residential apartments and a separate retail area situated on the Gold Coast in Queensland. Mantra operates the “Q1 Resort & Spa” business inside the Q1 building which includes resort, spa, function and conference services.

Because Q1 is so well known as the name of the Q1 building and because other apartment owners and letting agents would, in the normal course of their business wish to use the word “Q1”, it had been argued that “Q1” should not be capable of becoming a registered trade mark for use only by Mantra for accommodation services.

The Federal Court rejected this contention. It found that “Q1” was a name made up by the developer (Sunland) and ownership had passed through to Mantra.  While it had become known as the name of the Q1 building it had not become a geographical place name. The mark “Q1” had to be assessed by considering how it would be understood by ordinary Australians seeing it for the first time. “Q1” was not the name of an established town, suburb or district forming part of the “common heritage” that all traders would be entitled to use.  It was and remains the name applied to a private building and not a place.

Nor did the court accept that “Q1” had any inherent or secondary meaning which would cause consumers to be misled or confused. While the sign “Q1” had been applied to the Q1 building since 2001 and had become well-known as the name of the building, the fact that “Q1” was a coined expression with no intrinsic meaning meant there was no geographical connotation present in the mark itself.

Finally, the court was not persuaded that if Mantra succeeded in registering “Q1” as a trade mark for its accommodation services that it was likely that the “holidaymaking public” would be misled.  This was so, even though Mantra providing letting services to less than 40% of the residential apartments in the Q1 building and the facilities in that building were available to all the occupiers and owners of the residential apartments.  The Court considered there was nothing in the mark “Q1” itself which would deceive the consumer into believing that only Mantra could provide accommodation services for the entire Q1 building.

So, if one trader can obtain a registered trade mark the same as the name of the building in which it provides accommodation services, what are other letting agents of property in that building to do?

Other traders can use the name descriptively to identify a location but not as a brand or “badge of origin”

Another case brought by Mantra [2] concerning the actions of an offsite letting agent using Mantra’s “Circle on Cavill” trade marks in domain names, meta-tags and on websites provides helpful instruction on the use traders can make of a property name.

In that case, the letting agent used the words “Circle on Cavill” in a descriptive sense on its website by stating “the precinct known as Circle on Cavill, Surfers Paradise consists of two magnificent towers... Our apartments at Circle on Cavill have been officially rated 4.5 star by AAA Tourism.  Circle on Cavill offers extensive leisure resort facilities...”  However, this descriptive use was in small font in the form of prose in the body of the website. 

The court found that the letting agent had not just used the mark in this descriptive sense but had misappropriated Mantra’s trade marks. Predominantly by using the words “Circle on Cavill” in domain names linked to various websites, in a banner-style heading in large font at the head of the webpages and then frequently and gratuitously in standalone format on some websites without any immediate connection with any descriptive content. Overall, a consumer would consider that the most significant use of the words was as a badge to indicate the letting agent had that brand in respect of its accommodation services at the Circle on Cavill complex. 

The letting agent was ordered to pay Mantra its profits for bookings obtained via websites accessible at the domain names which traded off use of “Circle on Cavill”.

Implications of the Mantra cases for developers, owners and operators

While place names are free to be used by the public (including competitor traders in relation to their goods or services), the recent Mantra case clarifies that the name of a privately owned building is not the same as a place name. The name, even though also the name of a building, is capable of operating as a trade mark for one trader offering goods or services.

However, where the same name as the building becomes registered as a trade mark:

  • this does not prevent other traders operating within that building from using the building name to indicate the location of their place of business
  • for any competitor trader (whether operating on- or off-site), the building name can only be used in a descriptive manner (eg. “Circle on Cavill offers extensive facilities”) as a geographic identifier of location and not by misappropriating the brand.

Property developers and service providers should consider the key practical implications of the Mantra cases:

  • although the name of a building cannot be registered as a trade mark for the building, it can be registered in respect of services which may relate to that building eg accommodation services
  • property developers (particularly those of iconic landmark buildings) should seek trade mark clearance and protection for their building names at an early stage
  • new building developments or re-branding of existing buildings should be given distinctive names (eg. made up names that do not have obvious or dictionary meaning) and not names that mainly depend on geographical reference
  • monitoring competitor traders’ use of trade marks (including in domain names or accommodation websites such as is essential to ensure the use is merely descriptive of location and is not eroding the brand by way of trade mark infringement.

[1]  Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 (19 July 2012)

[2]  Mantra Group Pty Ltd v Tailly Pty Ltd [2010] FCA 291 (26 March 2010)

The content of this publication is for reference purposes only. It is current at the date of publication. This content does not constitute legal advice and should not be relied upon as such. Legal advice about your specific circumstances should always be obtained before taking any action based on this publication.

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Daryl Clifford

Partner. Brisbane
+61 7 3228 9778