Accor v Fry's Fast Park Pty Ltd

[2020] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Accor to registration of trade mark application number 1757404 (class 43) - NOTEL - in the name of Fry’s Fast Park Pty Ltd

Delegate:

Jock McDonagh

Representation:

Opponent: Francesca Colubriale of Spruson & Ferguson

Applicant: James A Fry Managing Director of Applicant

Decision:

2020 ATMO 60

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42, 44 and 60 pressed – s 60 established - application refused.

Background

1. This matter is an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Fry’s Fast Park Pty Ltd (‘the Applicant’). Relevant details of the application are set out below.

Trade mark:	(‘the Trade Mark’)
Trade mark application:	1757404
Filing Date:	8 March 2016 (‘Priority Date’)
Specification:	Class 43: Rooftop outdoor accommodation; outdoor accommodation; outdoor village accommodation; trailer accommodation; provision of trailer accommodation facilities; provision of alternative styled accommodation; temporary and holiday lodgings and accommodation; rental of outdoor accommodation sites; hospitality services (accommodation); provision of self-catering accommodation; provision and hire of facilities for exhibitions, retreats, parties, events, functions, social functions, conferences, meetings; all of the above services includes the provision of those services for holiday makers, tourists and travellers; providing information, including online, about services for providing food and drink, and temporary accommodation; provision of information in relation to the above services including online, via an online forum, emails, weblogs and social media posts and applications

1. The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 28 July 2016. Accor (‘the Opponent’) filed a Notice of Intention to Oppose followed by a Statement of Grounds and Particulars (‘SGP’) on 28 September 2016. Thereafter the Opponent and Applicant filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Canberra on 15 July 2019 as a delegate of the Registrar of Trade Marks. Francesca Colubriale of Spruson & Ferguson represented the Opponent. The Applicant’s Managing Director, James A. Fry appeared in person.

Grounds of Opposition

1. The SGP nominated grounds of opposition under ss 42, 44 and 60 the Act. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663, and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

2. The time at which the grounds of opposition must be established is 8 March 2016, which is both the filing and priority date of the application for registration[2].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

Evidence

1. The evidence consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Francesca Colubriale (‘Colubriale’)	Solicitor for the Opponent	26.06.18	Annexures A to J
Evidence in Answer
James A Fry (‘Fry’)	Managing Director of Applicant	4.10.18	A to C

1. Paragraphs 2 and 4 of Fry provide information about the background of the Applicant’s business, its nature, and the adoption of the Trade Mark.

2. This evidence shows that the Applicant has developed the rooftop of a city carpark to provide both accommodation and an event space. The accommodation is provided in six 1970s era Airstream caravans.

3. That evidence also states that the Trade Mark was chosen to convey that the business premises are not a hotel, and have no indicia of hotels, for example there is no lobby, no reception, no hotel room, and so on. The first 'O' of the Trade Mark is broken, apparently to represent a diagonal line to emphasise 'NO' in the Trade Mark.

4. In Colubriale the evidence advises that the Opponent is a leading hotelier and provider of accommodation services, managing and operating a network of hotel franchises throughout the world. There are nearly 400 NOVOTEL hotels operating in over 59 countries, including Australia.

5. Further details contained in Colubriale will be provided in discussion regarding the relevant grounds of opposition.

Discussion

1. The Opponent nominated the following trade mark registrations (‘the NOVOTEL trade marks’) in its Statement of Grounds and Particulars in support of its ground of opposition under s 44 and their reputation as underpinning the s 60 ground:

Trade Mark:

 573960            NOVOTEL

Filing Date:

6 March 1992

Specifications:

Class 42: Hotel restaurants, cafeterias, public houses, fast food, motels, inns, tea room, wine bars, catering, ice cream parlours, coffee houses, holiday camps, beauty salons, beauty and health farm, retired persons homes, holiday homes, reservation of rooms, for travellers, health clinics, convalescent homes.

Trade Mark:

1694868         

(IR 1246980)

Filing Date:

3 February 2015

Specifications:

Class 43: Tourist hotels; hotel services; services for providing food and drink; restaurants; cafeteria, tea room and bar services (with the exception of clubs); temporary accommodation; tourist homes; hotel room reservation services for travelers; booking services for temporary accommodation; consultancy and advice (not business related) in connection with hotel and restaurant services; rental of rooms for conferences and meetings; provision of facilities for exhibitions, conferences and meetings; hotel and restaurant reservation services; provision of information on-line relating to hotel and restaurant reservations

Endorsements: Colour Claimed: DARK BLUE (Pantone 2766 C).; Parts Colour Claimed: All the elements of the trademark are in DARK BLUE (Pantone 2766C).

Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

1. Section 60 of the Act 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.

   Note:For priority date see section 12.

2. It is not necessary to show under s 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

3. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[3], by Kenny J at [81] – [82]:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

   [3] (2000) 51 IPR 102.

4. Further, at [86] , Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

5. The Opponent’s evidence establishes that it has for over 50 years before the priority date promoted and offered services internationally and domestically under the NOVOTEL trade marks[4]. It opened the first NOVOTEL hotel in Australia in 1991 and services have been continuously and extensively promoted and sold in Australia (in addition to overseas) by the Opponent since that time. Colubriale[5] provides the following details:

   [4] Colubriale at [6].

   [5] At [11] to [17].

• The Opponent has enjoyed consistent revenue from its hotel and restaurant services throughout Australia and the world.

• For the financial year ending June 2017, the Opponent's revenue was EUR 1,937 million.

• Since 1991, the Opponent has extensively promoted and advertised the Novotel trade marks in Australia. (a representative bundle of materials was exhibited at Annexure E demonstrating the Opponent's promotional activities under the Novotel trade marks in Australia including print advertisements, brochures and emails sent to members of the Opponent's membership program.)

• For many years, Novotel hotels have been promoted and advertised on the Novotel website

• The Opponent's Novotel hotels have been promoted or featured in a number of third-party publications including, but not limited to, The Sydney Morning Herald, The Daily Telegraph, The Australian, lllawarra Mercury, Australian Business Traveller. the earliest of which is dated 20 December 2008.

• The Opponent has also used social media, including Facebook and Twitter, as a means of promoting and advertising its Novotel hotels.

1. The evidence provides details of the extensive brand awareness of the NOVOTEL trade marks in Australia[6]. I am satisfied that the Opponent’s evidence has established the Opponent’s NOVOTEL trade marks have the requisite reputation in the Australian accommodation industry among relevant Australian consumers.

   [6] Colubriale at [11] and Confidential Annexure I.

2. It is also necessary for the Opponent to establish that, because of its reputation in its marks, notional use of the Trade Mark on the specified services would be likely to deceive or cause confusion.

3. The meaning of the words ‘likely to deceive or cause confusion’ were discussed by the Full Federal Court in The Coca-Cola Company v All-Fect Distributors Ltd, referring to Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[7] where Richardson J, in the New Zealand Court of Appeal, said:

   “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.[8]

   [7] [1979] RPC 410 at 423.

   [8] [1999] FCA 1721; (1999) 96 FCR 107; 47 IPR 481, 39.

4. It is not necessary to show actual confusion under section 60, but rather a likelihood of confusion. Evidence of confusion is notoriously difficult to procure as those deceived or confused may not realise or report such confusion. Further, as the Full Federal Court stated in Australia Postal Corporation v Digital Post[9]‘the threshold for confusion is not high’. For a likelihood of confusion to exist, ‘the triggering event need go no further than mere confusion, in the sense of holding a reasonable doubt, while stopping short of actual deception or mistake’.[10]

   [9] (2013) FCAFC 153 at [70].

   [10] McDonald's Inc v Future Enterprises Pte Ltd [2007] ATMO 22 at [26].

5. The assessment of the likelihood of deception or confusion is informed by ‘the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties’.[11]

   [11] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, 40 and Qantas Airways Limited v Edwards [2016] FCA 729, 142.

6. The Trade Mark and the Novotel trade marks are have visual similarities. The words NOTEL and NOVOTEL both begin with the identical letters ‘NO’ and end with the letters ‘TEL’. Further, there are linguistic and auditory similarities between the marks. Conceptually, the Opposed Mark and the Opponent’s Novotel Marks are similar. Both are invented words without any ascertainable or immediate meaning, they will not be distinguished from each other based on meaning.[12]

   [12] United Parcel Services of America, Inc v UTS Europe BV [2003] ATMO 33 (16 May 2003) at [35].

7. Having regard to the Opponent’s substantial reputation in its trade marks, the similarity of the competing trade marks and the similarity of  the services they are used in relation to, I am satisfied that relevant consumers will be caused to wonder if there is some connection between the services offered under the Trade Mark and  those for which the Opponent has acquired a reputation under the NOVOTEL trade marks.

8. Therefore, the Opponent has established a ground of opposition under the provisions of s 60. Having found in favour of the Opponent in terms of s 60 there is no need for me to discuss the other grounds set out in the SGP although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

1. Section 55(1) of the Act applicable to this matter provides:

   Unless the proceedings are discontinued or dismissed, 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.

   Note: For limitations see section 6.

2. I have found the opposition to be successful on the ground raised pursuant to section 60 of the Act. I accordingly refuse to register trade mark application number 1757404.

Costs

1. The Opponent has sought an award for costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent is the successful party, I award costs against the Applicant at the official scale set out in Schedule 8 to the Regulations.

Jock McDonagh

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

21 April 2020