Airbnb Inc v Aircamp Group Pty Ltd

[2022] ATMO 76

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 1956400 (classes 35, 39 & 43) - AIRCAMP - in the name of Aircamp Group Pty Ltd

Delegate:	Katrina Brown
Representation:	Opponent: Luke Merrick of Counsel, instructed by Caroline Ryan & Christina Linforth-Barker of Allens Patent & Trade Mark Attorneys Applicant: Kate Andean of Banki Haddock Fiora
Decision:	2022 ATMO 76 Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds pursued under ss 42(b), 44, 58, 58A, 60, 62 & 62A – s 62A established – registration refused.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Airbnb, Inc (‘Opponent’) to registration of the following trade mark.

   Trade mark no:           1956400

   Trade mark:                AIRCAMP (‘Trade Mark’)

   Applicant:                  Aircamp Group Pty Ltd (‘Applicant’)

   Filing date:                 19 September 2018

   Specification:             Class 35 - Providing online business directories featuring campgrounds; providing information, rankings, ratings, reviews, referrals and recommendations relating to businesses using a global computer network; advertising and promotion services and related consulting; customer loyalty services and customer club services for commercial, promotional and advertising purposes; providing classified advertising space via the global computer network

   Class 39 - Provision of travel information; providing travel information including information about related topics namely road transportation, transport, travel, tours, sightseeing tours, vehicle rental, boat rental, rental of bicycles, boat transport, car parking, car sharing services over global computer networks; trip and travel recommendations and reservation services

   Class 43 - Booking of campground facilities; accommodation finding services for travellers; travel agency services for booking campground sites; rental of campground sites; reservation of campgrounds for travellers; providing information, rankings, ratings, reviews, referrals and recommendations relating to campgrounds; providing search services for campgrounds, campground information and for making reservations and bookings for lodging; providing reviews and recommendations of campgrounds via a global computer network; booking services being booking of campgrounds

   (‘Applicant’s Services’)

2. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 24 June 2019.

3. The Opponent filed a Notice on Intention to Oppose on 22 August 2019, followed by a Statement of Grounds and Particulars (‘SGP’) on 23 September 2019.

4. The Applicant filed a Notice of Intention to Defend on 22 November 2019.

5. The Opponent filed the following declarations as evidence in this opposition:

   ·Declaration of Alica Del Valle (Lead Counsel, Intellectual Property and Marketing, of Opponent) made on 24 February 2020 with Exhibits 1 to 28;

   ·Declaration of Alica Del Valle made on 1 June 2021 with Exhibits 29 to 39 (‘Del Valle Declaration’); and

   ·Declaration of Daniel Wilson (Spruson & Ferguson) made on 3 June 2021 with Exhibits 1 to 9 (‘Wilson Declaration’).

6. The Applicant filed the following declaration as evidence in this opposition:

   ·Declaration of Michael Richard Nicholas Hill (Co-Founder and Director of Applicant) made on 25 August 2020 with Exhibits MH-1 to MH-11 (‘Hill Declaration’).

7. The Hill Declaration contains a clause to the effect that information within that declaration is confidential. However, the confidential information is not identified. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd.[1] Arguably, there are sensitive commercial matters in the Hill Declaration which I will not discuss in any detail in my reasoning. However, I will discuss the evidence to the degree necessary to provide sensible reasons for my decision.

   [1] [2008] ATMO 17 [5]–[6].

8. Once the time allowed for filing evidence ended, an oral hearing was requested. The matter was heard by me, a delegate of the Registrar of Trade Marks, on 22 April 2022. The Opponent was represented by Luke Merrick of Counsel, instructed by Caroline Ryan and Christina Linforth-Barker of Allens Patent & Trade Mark Attorneys. Kate Andean of Banki Haddock Fiora represented the Applicant.

   Grounds of opposition, onus, and relevant date

9. In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 44, 58, 58A, 60, 62 and 62A of the Act.

10. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] In the event that the Opponent establishes one of the grounds in relation to all the Applicant’s Services, there is no requirement for me to consider the other grounds of opposition.

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

11. The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

    [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

12. The date at which the rights of the parties are to be determined is 19 September 2018 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

    The Opponent

13. The Opponent provides an online marketplace to list, view, and book accommodation and more recently experiences. The Opponent provides these services under the trade mark ‘Airbnb’ (‘Opponent’s Trade Mark’) and is the owner of numerous Australian trade mark registrations including:

Registration no.	Trade mark	Priority Date	Classes
1384382	AIRBNB	26 April 2010	35, 36, 38, 39, 41, 42
1446371	AIRBNB	27 April 2010	43
1592526	AIRBNB	8 April 2013	9, 42

1. Exhibit 38 to the Del Valle Declaration consists of an analysis undertaken by Deloitte Access Economics in 2017 which provides the following snapshot of the extent of the Opponent’s business in Australia before the Relevant Date:

   Airbnb plays an important role in supporting tourism in Australia, by facilitating accommodation bookings and advertising Australian destinations to consumers around the world. In 2015-16, over 800,000 stays were booked with Airbnb in Australia. Hosts across the nation accommodated around 2.1 million guests for 3.7 million nights in places as diverse as Collingwood to Coober Pedy…

   …

   Airbnb guests are now a significant driver of the tourism economy, with a total contribution to Australia’s GDP of $1.6 billion in 2015-16, supporting over 14,000 jobs in addition to the activities of hosts.

2. The Opponent provides its online marketplace via the websites ‘airbnb.com’ and ‘airbnb.com.au’ (collectively ‘Opponent’s Websites’) and through mobile applications. Exhibits 34 and 35 to the Del Valle Declaration consist of Google Analytics for the Opponent’s Websites from 2012 to 2015. In 2015 there was more than two million page views by Australian users on the airbnb.com website, and more than 66 million page views on the airbnb.com.au website.

3. In addition to the Opponent’s Websites, the Opponent’s Trade Mark is promoted and marketed via online and mainstream print media, the production and distribution of neighbourhood guides for travelers, social media platforms, celebrity endorsements, promotional and sponsorship activities with high profile partners such as the Sydney Mardi Gras, the Sydney Opera House, the Melbourne Comedy Festival, the Adelaide Fringe Festival and the Olympic Games.  

4. The evidence demonstrates that both before and after the Relevant Date the Opponent’s Trade Mark was (and continues to be) consistently used on social media platforms and in association with mobile applications in the following manner:

   The Applicant

5. The Applicant provides an online booking and reservation system for campsites and caravan parks in Australia. In the Hill Declaration, it is declared that the Trade Mark was first used in September 2016 and has been used continuously since then in relation to the online booking and reservation system.

6. It is declared that the Trade Mark is promoted via social media, the website ‘aircamp.com.au’ (‘Aircamp Website’), and on the Aircamp app which went live in October 2018. Exhibit MH-3 to the Hill Declaration contains examples of use of the Trade Mark on Facebook and the Aircamp Website. The examples dated prior to the Relevant Date include the following:

7. Exhibits MH-1 and MH-7 to the Hill Declaration contain examples of use of the Trade Mark on the Aircamp Website and in relation to the Aircamp App after the Relevant Date. For example:

   Section 62A

8. Section 62A provides:

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

9. The phrase ‘bad faith’ is not defined in the Act. In the context of s 62A bad faith does not require dishonesty or fraud, ‘it is a wider notion, potentially applicable to diverse species of conduct’[4] not confined to the examples of bad faith given in the Explanatory Memorandum.[5]

   [4] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [63] (Bennett J).

   [5] Ibid [61].

10. In DC Comics v Cheqout Pty Ltd (‘DC Comics’), Bennett J explained:

    Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

    The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[6]

    Furthermore, Bennett J also acknowledged that conduct that is ‘exploitative and designed to acquire a springboard or advantage’ can amount to conduct that falls short of acceptable commercial standards.[7]

    [6] Ibid [62].

    [7] Ibid [66].

11. The Opponent asserts that the application to register the Trade Mark was made in bad faith as it was designed to acquire a springboard or advantage by exploiting the reputation of the Opponent and the Opponent’s Trade Mark.

12. It is clear from the evidence that, at the Relevant Date, the Opponent and the Opponent’s Trade Mark had acquired a substantial reputation worldwide, including in Australia. Mr. Hill does not at any point in his evidence deny being aware of the Opponent or the Opponent’s Trade Mark. The Applicant’s written submissions go one step further, stating that it is not disputed that Mr. Hill would have known of the Opponent’s Trade Mark in September 2016 (when the Trade Mark was first used) and at the Relevant Date. At this point it is convenient to acknowledge that mere awareness is not of itself sufficient to establish bad faith. However, awareness combined with other circumstances can collectively amount to bad faith. The question to be answered is ‘whether, in all the particular circumstances, the applicant’s knowledge was such that [the] decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards’.[8]  

    [8] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [167] (Dodds-Streeton J).

13. The Opponent asserts that, in addition to awareness, the circumstances in this matter which support bad faith include adopting a trade mark with similarities to the Opponent’s Trade Mark, using similar trade dress and indicia to the Opponent, and use of the tagline ‘AirCamp is AirBnB for camping’.

14. In my opinion, there are obvious similarities between the Trade Mark and the Opponent’s Trade Mark. Each consists of the word ‘Air’ conjoined with a known word that directly describes a form of accommodation. Additionally, both trade marks are in respect of identical services, namely an online platform for listing and booking accommodation.

15. In the face of such similarities, the Hill Declaration is silent as to reasons for adopting the Trade Mark. I accept that it is obvious why the word ‘camp’ was included in the Trade Mark as the Applicant’s core business involves campsites. However, it is less clear why the word ‘air’ was chosen, and why it was chosen to be used in combination with ‘camp’.  In its written and oral submissions, the Applicant opined that the meaning of the word ‘air’ has evolved and is now understood to ‘refer to a platform or service that allows a user to review various goods or services and then select or reserve a good or service from a particular provider’.  However, no evidence was provided to support this meaning (and I note that a s 41 ground for rejection was not taken during examination of the Trade Mark). Nor did the Applicant confirm that this new meaning had already emerged at the time the Trade Mark was chosen or that it influenced the coining of the Trade Mark.  

16. The way in which the Trade Mark was used before the Relevant Date reinforces the inference that the Trade Mark was designed to acquire a springboard or advantage by exploiting the reputation of the Opponent and the Opponent’s Trade Mark. It is an agreed fact that the tagline ‘AirCamp is AirBnB for camping’ was used on the Aircamp Website prior to the Relevant Date (see [19] of this decision). The Hill Declaration is silent as to the intention behind this tagline, only stating that it was used ‘back in 2017 as an advertising slogan because at that time the business idea was different’. This statement is vague, and no further explanation is provided. Although I do note that Exhibit 8 to the Wilson Declaration demonstrates that the tagline was still in use on a website on 23 April 2021. Contrary to the Applicant’s submissions, the tagline does not clearly, or specifically, indicate that the Opponent does not provide the Applicant’s Services. In my opinion, the tagline expressly calls upon the fame and reputation of the Opponent and the Opponent’s Trade Mark.

17. Furthermore, the evidence demonstrates that the Trade Mark is used in conjunction with trade dress and indicia similar to the trade dress and indicia of the Opponent. The Opponent’s Trade Mark, both prior and after the Relevant Date, is consistently used in the following manner.

    The evidence demonstrates that prior to the Relevant Date the Trade Mark was used on social media in the following manner.

    This is also very similar to the way in which the Trade Mark is used in connection with the AirCamp App (see [20] of this decision), which was released one month after the Relevant Date. In this respect, I note that whilst bad faith must exist at the time of filing the trade mark application, events occurring after that date may be relevant in drawing an inference as to the Applicant’s knowledge and intention at the filing date.

18. Whilst the trade dress and indicia of the Applicant and Opponent are not identical, the similarities are such that it seems unlikely that they are merely coincidental. Both the Applicant and Opponent use white peak-like devices within a circle. The circles are coloured with a similar pink tone which graduates in saturation; that is the top segment of the circle is lighter in colour than the bottom segment of the circle. The Hill Declaration is silent as to reasons for the adoption of the indicia or trade dress used in connection with the Trade Mark, which I note would have seemingly been easy and within the declarant’s power to make given Mr Hill’s role in developing the Trade Mark and his position as Co-Founder and Director of the Applicant.                 

19. In my opinion, the Applicant’s actions cast significant doubt on the bona fides of its intentions in filing the trade mark application. In all the circumstances, I am satisfied that the Applicant’s conduct was designed to acquire a springboard or advantage by leveraging off the reputation of the Opponent and would be regarded as in bad faith by persons adopting proper standards.

20. Accordingly, the ground of opposition under s 62A has been established on the balance of probabilities.

    Decision

21. Section 55 of the Act relevantly provides:

    (1)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.

22. The Opponent has established the ground of opposition under s 62A of the Act. Accordingly, I refuse to register trade mark number 1956400.

    Costs

23. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

    Katrina Brown
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    16 May 2022