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Beware: Use of a Building’s Name Could Infringe Trade Mark Rights

Whether you’re developing a new resort style residential building, or setting up a café in a new building, you need to know the risks associated with using the building’s name in advertising and marketing.
The Federal Court of Australia held last year that an off-site letting agency’s use of Circle on Cavill in the agency’s advertising and marketing (including domain names) with respect to holiday units in that building, infringed upon Mantra Group Pty Ltd’s (‘Mantra’) trade mark rights. The letting agency was court ordered to transfer all its infringing domain names to Mantra and refrain from using the words Circle on Cavill in its advertising material. Further, the letting agency was ordered to pay part of the profits received from its reservations, to Mantra, as these profits were derived from use of the infringing websites.
As a result, this decision has great significance for:

  • advertisers seeking to use a building or property development’s name to advertise their products or services; and
  • property developers and managers who have not registered their property names as trademarks, making them vulnerable to infringement and dilution of their business reputation.

What’s the big deal?
A trade mark is a badge of a business. They distinguish your particular product or service from those of another trader. A trade mark may be a sign consisting of letters and words, images, designs, logos, a signature, colours, shapes or any combination of these. Essentially, a trade mark is the public face of your business. You want the public to associate your trade mark with the products or services you provide. Registration of a trade mark grants the trade mark owner exclusive rights to use, or control the use of, the trade mark for the products or services for which the trade mark is registered. For example, once you register ‘ABC’ as a trade mark for realty services or retail services, you have the exclusive legal right to use ‘ABC’ for those services. In other words, as the owner of ‘ABC’, you can stop other traders from providing realty or retail services under the name ‘ABC’, or another similar name.
Further, business owners who operate in ‘ABC’ building need to exercise greater care when promoting or marketing their businesses, even if the services are provided in connection with ‘ABC’. Using ‘ABC’ on business advertising may constitute infringement of the trade mark owner’s rights. The primary issue for consideration in this circumstance is whether the business owner used ‘ABC’ as a trade mark. If the business’s website were to use ‘ABC’ on its website to promote realty services, it would likely constitute significant evidence of use of ‘ABC’ as a trade mark.
In the Circle on Cavill case, the off-site letting agency argued that it used the words ‘Circle on Cavill’ in its promotional material as a description of geographical origin, rather than as a trade mark, i.e., describing the property by using the name of the building. However, the court was unwilling to extend the concept of geographical origin to a private residential building.
What This Means For…
Advertisers seeking to use a building’s name
Before promoting your business using the building or property’s name, do your research. Investigate whether the building’s name is a registered trade mark and whether your products or services are similar to those that are registered. If so, avoid using the building’s name in your marketing strategy to avoid infringement. Further, a marketing strategy that distinguishes your business from the building will be a valuable asset. Register your own business’s trade marks to distinguish your business from the building’s.
If you are using the building’s name in your advertising and promotions, be sure to obtain proper consent from the owner of the trade mark. The solution to avoiding any unpleasant disputes may be as simple as asking permission from the trade mark owner.
Property developers and managers
You will be investing substantial financial resources in your business, and in building your brand and reputation. The property or building name is a trade mark, which can be a valuable business asset if they are registered. Registration prevents others from unauthorised use of your trade marks. Register your property name as a trade mark as soon as possible. Without registration, you may be vulnerable against other traders who may wish to benefit from your business reputation and dilute your brand.