Abdisalam Serar v Airbnb, Inc

[2022] ATMO 175

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Airbnb, Inc to registration of trade mark application number 1797909 (class 9) - AIR GUEST (Figurative) - in the name of Abdisalam Serar

Delegate:

Timothy Brown

Representation:

Opponent: Caroline Ryan of Allens Patent and Trade Marks Attorneys

Applicant: Self-represented

Decision:

2022 ATMO 175

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 60 and 62A – s 60 established – trade mark refused registration.

Background

1. This decision concerns an opposition under section 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark application:

   Trade Mark Number:   1797909

   Trade Mark:    (‘Trade Mark’)

   Owner:Abdisalam Serar (‘Applicant’)

   Convention Priority Date:            25 March 2016

   Specification:  Class 9: Downloadable web-based application that allows commercial retailers and public venues to recognize and communicate with end users

   (‘Applicant’s Goods’)

2. The Trade Mark was examined, accepted and subsequently advertised for opposition on 19 April 2018.

3. On 19 June 2018, Airbnb, Inc. (‘Opponent’) filed a notice of intention to oppose, followed by a statement of grounds and particulars on 19 July 2018.

4. On 11 September 2018, the Applicant filed a notice of intention to defend.

5. The Opponent filed Evidence in Support of its opposition on 15 December 2018. On 13 March 2019 the parties made an application for a cooling-off period of six months. Following the cooling-off period the parties made a joint application on 12 December 2019 seeking a direction under regulation 5.19 of the Trade Mark Regulations (Cth) to suspend the opposition for the purposes of settlement negotiations. The suspension was granted on 12 December 2019. The parties then sought a further suspension on 8 September 2020, which was also granted. Opposition proceedings resumed on 16 March 2021. The Applicant then filed its Evidence in Answer on 16 June 2021. Evidence in Reply was filed by the Opponent on 17 August 2021.

6. Following the conclusion of the evidence stages of proceedings, both parties were provided with the opportunity to request a hearing. On 17 September 2021, the Opponent requested to be heard. The Opponent filed written submissions on 23 June 2022. The Applicant filed written submissions on 30 June 2022, which included new material and an additional exhibit filed on 1 July 2022.  As this new material was filed after the end of the evidence period with no explanation for the late filing or submissions regarding why the material should be taken into consideration, I informed the parties on 6 July 2022 that the new material would not be considered in this matter. The matter was heard before me, as a delegate of the Registrar of Trade Marks, on 7 July 2022. Representing the Opponent was Caroline Ryan of Allens Patents and Trade Marks Attorneys. The Applicant did not attend the hearing and relied on its written submissions.

Grounds, Onus and Relevant Date

1. The nominated grounds of opposition were sections 44, 58A, 58, 60, 42(b) and 62A of the Act. During the hearing, the Opponent pressed only sections 44, 60, 42(b) and 62A.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[1] The required standard of proof is on the balance of probabilities.[2] The date at which the rights of the parties will be determined is the priority date of the Trade Mark, being 25 March 2016 (‘Relevant Date’).

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).

   [2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The evidence in this matter consists of the following declarations:

   Evidence in Support

   ·Declaration of Alica Del Valle dated 11 December 2018 (‘Del Valle Declaration’) and Exhibits 1 to 27.

   Evidence in Answer

   ·Declaration of Abdisalam Serar dated 16 June 2021 (‘Serar Declaration’).

   Evidence in Reply

   ·Declaration of Alica Del Valle dated 13 August 2021 (‘Second Del Valle Declaration’) and Exhibits 28 to 42.

   ·Declaration of Jacqueline Chelebian dated 17 August 2021 (‘Chelebian Declaration’) and Annexures JJC-1 to JJC-2.

Opponent

1. Ms Del Valle, Lead Counsel, Intellectual Property and Marketing, of the Opponent, explains that the Opponent was founded in 2008, San Francisco, by Joe Gebbia, Brian Chesky and Nathan Blecharczyk.

2. The Opponent provides an online marketplace for consumers to list, view and book accommodations and other experiences around the world. These services are provided via the websites and (collectively, ‘Opponent’s Website’) and a mobile application offered through the Apple App Store and Google Play Store. The Opponent provides its goods and services under the trade mark ‘AIRBNB’ (‘Opponent’s Trade Mark’). The Opponent’s Trade Mark was derived from a combination of the terms ‘airbed’ and ‘breakfast’, and is a reference to the company’s founders who once rented airbeds in their apartment to travelers. The Opponent’s platform allows registered users to search for and book rental properties, access property reviews, and provide feedback for the various accommodations accessed via the platform.

3. In addition to accommodation, users can list travel experiences, collections of recommendations and tips from locals called ‘Guidebooks’, and various other travel related resources.

4. Ms Del Valle declares that ‘AIRBNB’ was first used as a trade mark in Australia in March 2009, and has since been continuously used in Australia. In 2011, the Opponent launched the website >

   The Opponent is the owner of the following Australian trade mark registrations:

Trade Mark No.	Trade Mark	Priority Date	Class
1384382	AIRBNB	26 April 2010	35, 36, 38, 39, 41 and 42
1446371	AIRBNB	27 April 2010	43
1592526	AIRBNB	8 April 2013	9, 42

1. Ms Del Valle declares that the Opponent’s company value was estimated in excess of 31 billion USD. Exhibited in the Del Valle Declaration is an article entitled ‘Hotel Investors May be Ignoring the Airbnb Threat’. Also exhibited is a factsheet showing the Opponent’s listings and an article, ‘STR Rankings: The Largest Hotel Companies as of 2016’, showing the listing of the most popular hotel chains in the world for comparison. These exhibits demonstrate that the Opponent had more listings than major hotel chains, such as Hilton Inc and Marriott International. At the time of the declaration, there were approximately 137,900 active listings on the Opponent’s platform with over 5,094,000 guest arrivals into Australia for individuals booking accommodation through the Opponent’s platform. The number of Australian guests booking international accommodation via the Opponent’s platform is more than 6,100,000 as of the time the declaration was made.

2. The Opponent promotes the Opponent’s Trade Mark using a variety of social media resources, including Facebook, Instagram, Twitter and Youtube. In addition, the Opponent’s Trade Mark is promoted and marketed via the Opponent’s websites, third party online and print media, celebrity endorsements, and various sponsorship activities, including with the Sydney Mardi Gras (from 2015 to 2018), Australian Boomers male basketball team, and the Adelaide Fringe Festival.

3. Also exhibited in the Del Valle Declaration are the various industry awards the Opponent has received or been nominated for, including Inc.’s Company of the Year Award (2014), Webby Award in the Travel Category (2014), and #CREATIVITY Award in the Twitter Awards (2016).

4. The Second Del Valle Declaration includes details of the Opponent’s sales revenue, and advertising expenditure from 2018 to 2020.

Applicant

1. The Applicant is the creator and director of Blutro Pty Ltd (‘Blutro’). Blutro was the original owner of the Trade Mark. The trade mark was assigned to the Applicant on 7 June 2021.

2. Mr Serar claims that the Trade Mark was created in 2015 ‘to supplement the technology then being created and developed by Blutro Pty Ltd’.

3. The Applicant owns trade mark registrations for ‘AIR GUEST’ in Hong Kong and the United States. 

4. The Applicant is also the owner of the domain name

Section 60

1. Section 60 provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)    another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. To succeed on this ground of opposition, the Opponent must establish:

• A reputation in another trade mark in Australia before the Relevant Date; and

• That use of the Trade Mark would be likely to deceive or cause confusion because of the reputation of the other trade mark.

Reputation

1. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[3] Reputation is not a factor that is assumed and must be established by the Opponent as a matter of fact.[4]

   [3] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [4] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

2. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating that a significant number of people have been exposed to the trade mark,[5] or providing evidence of high volume of sales,[6] advertising expenditure or other promotion of goods or services to which the trade mark applies.[7]

   [5] Ibid [118].

   [6] McCormick (n 3) [86].

   [7] Ibid.

3. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[8]

   [8] [2019] FCA 923, [83] (O’Bryan J).

4. The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[9] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[10]

   [9] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

   [10] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

5. The Opponent relies on its use of the Opponent’s Trade Mark worldwide since 2008 and in Australia since March 2009, claiming that as of the Relevant Date the Opponent had acquired a substantial reputation in the Opponent’s Trade Mark in Australia.

6. The Opponent’s evidence demonstrates that both before and after the Relevant Date the Opponent’s Trade Mark was extensively used, advertised and marketed in Australia. In assessing the extent of the reputation of the Opponent’s Trade Mark, I have had regard to the following material:

• Information on the number of bookings and listings made in Australia using the AIRBNB platform before the Relevant Date.

• The number of subscribers and followers to the Opponent’s various social media accounts, namely the 3.6 million followers on Instagram, 679,000 followers on Twitter and 166,000 subscribers on YouTube.

• The information exhibited from the website App Annie, a third party tracking service, showing downloads of the Opponent’s AIRBNB app via the Apple App Store from 2011 to 2017 and Google play Store from 2017 to 2021 for both Australia and the United States. The information demonstrates that the AIRBNB app is one of the most downloaded applications on both platforms.

• Screenshots of Google Analytics showing traffic to the Opponent’s Websites from various periods between 2007 and 2020, demonstrating significant traffic to both the Opponent’s Websites.

• Various third party industry indexes, rankings and awards recognising the Opponent’s service and the brand ‘AIRBNB’.

1. I note that in Airbnb, Inc v Aircamp Group Pty Ltd[11], a decision determined under section 62A of the Act, that the delegate of the Registrar of Trade Mark acknowledged that the Opponent’s Trade Mark had acquired a substantial reputation worldwide.[12]

   [11] [2022] ATMO 76 (Hearing Officer Brown).

   [12] Ibid [25].

2. In my view it is apparent from the Opponent’s evidence that, at the Relevant Date, the Opponent’s Trade Mark had acquired a significant reputation both internationally and in Australia amongst a substantial amount of consumers as a platform for facilitating the booking of accommodation and venues.

Likelihood of Deception or Confusion

1. The existence of a reputation does not necessarily mean use of the Trade Mark would be likely to deceive or cause confusion. The concept of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd[13]:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[14]

   [13] [1979] 19 RPC 410.

   [14] Ibid 423.

2. The test for deception or confusion turns on whether use of the Trade Mark would result in a reasonable number of people being caused to wonder whether the Applicant’s Goods derive from the same trade source as another trade mark.[15] Factors relevant to this determination include the strength of the reputation of the other trade mark, the similarity between the Applicant’s Goods and the goods or services associated with the reputation of the other trade mark, and the degree of similarity between the relevant trade marks.[16] As a delegate of the Registrar of Trade Marks explained in Rogers seller & Myhill Pty Ltd v Reece Pty Ltd:

   Confusion can not arise solely from the reputation of one trade mark.  There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be.  The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[17]

   [15] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).

   [16] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).

   [17] [2010] ATMO 5 (Hearing Officer Lyons).

3. With respect to the similarity of the trade marks, the Opponent points out that both trade marks commence with word ‘AIR’ and submits that there is a conceptual similarity that stems from the use of the word AIR with terms used in connection with accommodation services. The Opponent’s submissions also emphasise that the term ‘guest’ is used regularly in connection with the Opponent’s services. The Second Del Valle Declaration includes examples, such as ‘Airbnb’s most travelled guests’ and ‘Airbnb guests pump at least $1.27 billion into local restaurants and cafes’.

4. The Applicant submits that the term ‘Air’ was adopted as a reference to wireless communication, and in the context of its goods is generic in nature. However, the Applicant has provided no evidence in support of this contention, and I am not otherwise persuaded that the ‘Air’ element of the trade marks is generic in the context of software goods.

5. In my view, there are clear similarities between the Trade Mark and the Opponent’s Trade Mark. Both trade marks consist of the word ‘Air’ paired together with a term that has descriptive meaning in the context of accommodation services. ‘BNB’, as indicated in the Del Valle Declaration, is an abbreviation of ‘Bed and Breakfast’. ‘Guest’ describes, amongst other things, a person or customer who pays for accommodation or other forms of hospitability.[18] While I acknowledge the font and formatting of the Trade Mark, these features are not so conspicuous that they would create an impression different enough to avoid confusion. The differences may potentially be enough for the trade marks not to be considered deceptively similar. However, section 60 does not necessarily require that the degree of resemblance between the trade marks reach the degree of deceptive similarity.

   [18] See: Macquarie Dictionary (online at 5 October 2022) ‘guest’ (def 2-3).

6. Turning to the similarity between the Applicant’s Goods and the services for which the Opponent’s Trade Mark holds a reputation, I note that the Applicant’s Goods are not limited to any industry or market.  Mr Serar states that the Applicant’s software is intended to be used in ‘all general markets (including retail, hospitality, events, hotels, tourisms etc)’. This is expanded on in the Applicant’s submissions, in which Mr Serar explains that the Applicant’s software allows users to advertise for a variety of different services including booking of hotels, travel experiences, restaurants and entertainment events. In my view, there is a clear nexus between the Applicant’s Goods and the services associated with the Opponent’s Trade Mark. The Opponent’s Trade Mark is used in relation to services for facilitating travel and accommodation bookings between users of its platform. These services are provided online via the Opponent’s Websites, but also through a downloadable software application. Given the Applicant’s software is not limited to any specific category or market, it is within the scope of the Applicant’s Goods for the Trade Mark to be used on software for the same or a very similar purpose to that of the Opponent’s Trade Mark.

7. The Applicant argues that due to the reputation of the Opponent’s Trade Mark, it is unlikely that anyone would confuse the Opponent’s Trade Mark and the Applicant’s Trade Mark. There are some cases where the reputation of a trade mark has counted against the likelihood of deception or confusion. In Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited Bennett J observed:

   When comparing two words which are both well known, one as a word used in ordinary parlance and the other a word associated with a particular person, it is more difficult to establish a likelihood of mistaken impression.[19]

   [19] [2003] FCA 901, [89].

8. However, given the similarities between the trade marks and the goods and services to which they relate, I am satisfied that this is not a case where the reputation of a trade mark would work against any likelihood of confusion.

9. The Applicant also refers to its prior registrations in the United States and Hong Kong. The existence of these two registrations does not compel me to accept the Trade Mark for registration. The circumstances of the registration of the two trade marks has not been made available to me, nor has the Applicant addressed the differences between the scope of the goods specified in the trade mark two registrations and the Trade Mark, which was identified in the Second Del Valle Declaration.

10. Having regard to all the considerations above, I am satisfied that, given the strong reputation of the Opponent’s Trade Mark, there is a real and tangible risk that use of the Trade Mark would result in confusion with the Opponent’s Trade Mark.

1. The section 60 ground of opposition has been established. Having found in favour of the Opponent under section 60 of the Act, there is no need to discuss the other grounds set out in the SGP. However, all of the grounds of opposition may be relied on in the event of an appeal from this decision.

Decision

1. Section 55(1) provides:

   Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The Opponent has established the ground of opposition under section 60 of the Act. Accordingly, I refuse to register trade mark application number 1797909.

Costs

1. The Opponent sought costs. As the Opponent has been successful in the opposition, I award costs against the Applicant under section 221 of the Act in accordance with Schedule 8 of the Trade Marks Regulations1995 (Cth).

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

5 October 2022