Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd  FCA 396 (26 March 2020)
This involved rulings on the admissibility of certain evidence in a dispute where Swancom is alleging the respondents infringed its registrations for various trademarks containing or consisting of the word CORNER covering live music performances in class 41. The allegedly infringing conduct concerned the respondents’ use of The Jazz Corner Hotel and various other names containing or consisting of JAZZ CORNER at businesses providing jazz music.
The respondents objected to certain evidence in an affidavit filed on behalf of Swancom which contained screenshots from the Tripadvisor website with reviews of the respondents’ The Jazz Corner Hotel and responses from an employee. His Honour allowed the evidence with the responses by the respondents’ employee. That evidence is relevant and is not hearsay because it is not adduced to prove the facts asserted, but to prove that the respondents use the relevant “Jazz” names in a particular manner or context in the course of their business. However, O’Bryan J did not allow the evidence with the customer reviews. Despite Swancom’s contention that the reviews are evidence of how consumers perceive the services offered under the marks in issue and the relationship between the respondents, his Honour considered the relevance of this evidence depends upon acceptance of an implied assertion that the review appearing on the website is an authentic review by a customer of the respondents’ The Jazz Corner Hotel. To that extent, the document is relied on to prove that asserted fact, which renders it hearsay.
The respondents also objected to evidence being online articles concerning the opening of their The Jazz Corner Hotel which included statements from a representative of the respondents. Swancom contended this is not relied on for the truth of its contents, rather it is evidence of the way in which the respondents present themselves in the market as a single, integrated business by reference to the marks in issue. However, O’Bryan J considered this inadmissible hearsay. The applicant was seeking to prove that the representative, and the respondents more generally, use the marks in issue in a particular way. Like the Tripadvisor customer reviews, that requires acceptance of an implied assertion that the article is an accurate record of the representative’s statements. Swancom did not call the writer of the articles to give evidence and did not put the contents of the articles to the respondents’ representative in cross-examination, despite the fact that he was called to give evidence.
An affidavit filed on behalf of the respondents containing screenshots of webpages from various hotel businesses trading under names containing the word “corner”, and results from online searches of the St Kilda Historical Society and the Victorian Heritage Database showing historical records of hotels positioned on the corner of intersections called “Corner Hotel”. The respondents were seeking to show (1) that there have been a number of hotels or pubs in Australia that have traded under a name that included the word “corner”, and (2) that a number of those hotels or pubs have offered live music performances at the premises. Since these search results were adduced to prove the facts asserted in them and were not business records, they were inadmissible hearsay under s59 of the Evidence Act 1995 (Cth). However, O’Bryan J waived the hearsay rule by applying discretion under s190 of the Evidence Act because the evidence was relatively uncontroversial and the facts sought to be proved were relatively confined, not genuinely in dispute and were not determinative of the issues in dispute. A strict application of the hearsay rule would involve unnecessary expense or delay.
His Honour also relied on s190 to allow evidence from the respondents as to (1) online searches from the Trove database of the National Library of Australia, (2) online searches with web pages of various business with the word “corner” in their name and ASIC database searches with details of the companies conducting those businesses. The respondents relied on that evidence to prove the range of such businesses that use the word “Corner” in their names, and in some instances that live music is performed at the business premises.
Evidence from the respondents’ solicitor as to online search of the website and Facebook page of Charlie’s Corner Cafe and Bar purporting to show that business offers live music and provides information about that live music was also admitted under s190.
O’Bryan J provisionally allowed the respondents’ evidence of online searches as to newspaper articles relating to “corner hotels”. His Honour accepted this evidence is not sought to be adduced for a hearsay purpose and was relevant to usage of the word “corner” to establish the ordinary signification of that word in connection with hotels. However, his Honour was not entirely satisfied this evidence was relevant to infringement.
The respondents’ evidence of an online search of the Yellow Pages telephone directory for the word “corner” in the hotel category was not allowed. His Honour considered the listing of a business name in the Yellow Pages does not establish the ordinary meaning of the word “corner” or that many businesses trade under a name using the word “corner”. That requires proof that the business listed in the Yellow Pages is in fact trading under the listed name and proof of the nature of the business being conducted. Neither fact is able to be proved by the Yellow Pages search results.
Evidence from the respondents’ solicitor as to it not being uncommon for businesses to cross-promote events or services was rejected, as his Honour considered the relevant statements do not rise above submission.
Further evidence from the respondents’ solicitor as to third party business practices of cross-promoting other businesses, even within their own premises was provisionally allowed subject to further assessing its relevance.
Evidence filed on behalf of the respondents as to visits to other hotel businesses trading under names containing the word “corner” and the deponents’ recollection of statements from persons working there as to live music performances was inadmissible hearsay. However, screenshots of websites and Facebook pages of those businesses were admitted under s190.
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