Accor v Fry's Fast Park Pty Ltd

This matter concerned an opposition by Accor ('the Opponent') to the registration of the trade mark application number 1757404, 'NOTEL', in Class 43, filed by Fry’s Fast Park Pty Ltd ('the Applicant'). The Applicant's proposed services included various forms of outdoor and temporary accommodation, as well as hospitality and event facilities. The opposition was heard by a delegate of the Registrar of Trade Marks.

The Opponent nominated grounds of opposition under sections 42, 44, and 60 of the *Trade Marks Act 1995* (Cth). The primary legal issue was whether the Opponent could establish any of these grounds on the balance of probabilities, with the relevant date for assessment being the priority date of the application, 8 March 2016. The Opponent specifically relied on the reputation of its 'NOVOTEL' trade marks in Australia to support its opposition.

The delegate found that the Opponent had successfully established the ground of opposition under section 60 of the Act. This section allows for opposition if another trade mark had acquired a reputation in Australia before the priority date, and the use of the applicant's mark would be likely to deceive or cause confusion due to that reputation. The delegate was satisfied that the Opponent's 'NOVOTEL' trade marks had acquired a significant reputation in Australia within the accommodation industry. Furthermore, the delegate found that the 'NOTEL' mark bore visual, linguistic, and auditory similarities to the 'NOVOTEL' marks, and that both were conceptualised as invented words. Given the strength of the 'NOVOTEL' reputation, the similarity between the marks, and the overlap in the services offered, the delegate concluded that consumers would likely wonder if there was a connection between the services offered under 'NOTEL' and those provided under the 'NOVOTEL' trade marks.

As the Opponent had successfully established a ground of opposition under section 60, the delegate refused to register the 'NOTEL' trade mark application. The Opponent was also awarded costs against the Applicant on the official scale.