Metricon Homes Pty Ltd v Zac Homes Pty Ltd  FCCA 394 (10 March 2021)
Unsuccessful infringement action by Metricon.
Metricon alleged Zac Homes infringed its trademark registration for ‘Love where you live’ by using (1) ‘You love where you live’ as part of a sentence in a radio advertisement and (2) ‘Love where you live?’ on its webpage.
The judgement was confined to the question as to whether such use constituted use as a trade mark with Judge Baird finding in the negative.
The transcript of the radio advertisement is as follows:
SFX MUSIC UNDER
- You love where you live.
- The kids and the family are all settled.
- But you’re running out of space.
- Don’t move – knock down and rebuild with Zac Homes.
- This is the perfect way to improve the value of your existing block without the hassle and disruption of moving. Best of all – Zac Homes take care of everything.
- From the big picture, to the little details, when it comes to knock down rebuild, Zac Homes take the stress out of building.
- For details visit zachomes.com.au That’s zed aye sea homes.com.au
A screenshot from the relevant webpage is shown below:
Judge Baird noted that use as a trade mark is use of the sign (mark) as a ‘badge of origin’, a sign used to distinguish goods dealt with in the course of trade by a person from goods dealt with by someone else. Her Honour also referred to Nature’s Blend Pty Ltd v Nestlé Australia Ltd  FCAFC 117 for relevant principles.
Turning firstly to the webpage, her Honour concluded, at paragraph 29, “the impugned phrase poses a question. It is interrogatory. In tone it is conversational. It asks a simple question, using words with their ordinary English meanings, in a context where an answer – a solution – is then presented, and an explanation provided. That solution leads to the presentation of services provided by the supplier and the identification of the supplier – Zac Homes. That the impugned phrase is answered by directing the reader/viewer to the services of Zac Homes as the provider of a solution to the question posed does not transform the phrase from its ordinary meaning to one having, or taking on, a secondary meaning: as indicating the origin of particular services. The impugned phrase does not function as a badge of origin so as to distinguish Zac Homes’ services from similar services offered by other persons. The message conveyed by the phrase asks the reader whether they describe themselves as persons – who ‘love where you live’. In context, the phrase merely conveys its ordinary meaning, and invites the reader to interrogate themselves as to whether they fit the description.”
In the radio advertisement, her Honour considered that use of the impugned phrase is “merely introductory, and used to give narrative context to the announcement that followed. It does not strike the listener as a badge of origin”.
Hence, the infringement action could not proceed because Zac Homes was not using the relevant phrases in a trade mark sense. However, Metricon also alleged that Zac Homes engaged in misleading and deceptive conduct in contravention of the Australian Consumer Law, and committed the tort of passing off. Those causes of action remain to be considered.
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