Airbnb, Inc v LLWR Investments Pty Ltd

b
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 2353655 (Class 43) –AirMotel– in the name of LLWR Investments Pty Ltd

Delegate: Bianca Irgang

Representation:
Opponent: Caroline Ryan of Allens Patent & Trade Mark Attorneys

Applicant: Melissa McGrath of counsel instructed by McLean Dolphin

Decision: 2025 ATMO 125
Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 42, 44, 60 and 62A grounds of opposition argued – s 60 ground of opposition established.
Background

LLWR Investments Pty Ltd (‘the Applicant’), filed trade mark application number 2353655 on 10 May 2023 in class 43 of the International Classification of Goods and Services. The current details of the application are set out below.
Trade mark:  AirMotel (the ‘Trade Mark’)
Trade mark application no: 2353655
Filing Date:  10 May 2023
Specification:  Class 43: Accommodation rental agency services (holiday apartments); Accommodation reservation services; Hospitality services (accommodation); Hotel accommodation reservation services; Rental of tourist accommodation; Rental of holiday homes (‘Applicant’s Services’)
Acceptance of the application for possible registration was advertised on 11 October 2023. Subsequently, Airbnb, Inc (‘the Opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).
The Applicant then filed its Notice of Intention to Defend. Thereafter, the Opponent and the Applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’).
I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 29 April 2025. The Opponent was represented by Caroline Ryan of Allens Patent & Trade Mark Attorneys. The Applicant was represented by Melissa McGrath of counsel instructed by Jack McLean of McLean Dolphin.
Grounds of Opposition
The SGP nominated the grounds of opposition under ss 42(b), 44, 60 and 62A of the Trade Marks Act 1995 (Cth) (‘the Act’) which were pursued at the hearing. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[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 Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
Evidence
The evidence filed in this matter consists of the following declarations being:
Evidence in Support
·Declaration of Meredith Pavia, Lead Counsel, Trademark & Brand Protection of the Opponent, made on 11 May 2024 (‘Pavia’), and its exhibits MP-1 to MP-42.
Evidence in Answer
·Declaration of Melanie Daly, Director of the Applicant, made on 16 August 2024 (‘Daly’), and exhibits MD-1 and MD-2.
Discussion
Section 60 - Reputation in Australia
Section 60 of the Act provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
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.
To establish the ground of opposition under s 60 the Opponent relies on its use of and the acquired reputation in the following trade marks (‘AIR BNB Trade Mark’):
[3]
[3] I will refer to these registrations as the ‘AIRBNB Trade Mark’.
Additionally, I note the following trade mark of which the Opponent is the owner:
Unlike s44 of the Act, s 60 does not require that the services upon which the Opponent uses its trade marks be of a specified standard of similarity with the services of interest to the Applicant, nor is there a requirement that any of the Opponent’s trade marks be substantially identical or deceptively similar to the Trade Mark. However, I note from the evidence of both parties that the services of interest to both parties are related to the online sourcing and booking of accommodation.
It is for me to determine whether the Opponent has established that before 10 May 2023 its AIRBNB Trade Mark was recognised by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the Applicant of the Trade Mark would be likely to cause the public confusion.
In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[4]:
[i]n ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.
Justice Kenny continues:
[i]n 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: …
[4] (2000) 51 IPR 102, 128-129.
In considering whether the AIRBNB Trade Mark has acquired a reputation in its online accommodation booking services, I turn to the Opponent’s evidence of use of the AIRBNB Trade Mark in Australia. Pavia states that the Opponent was founded in 2008 in San Francisco, California through the development of an online platform to help people monetise the extra space in their own homes. Pavia avers that this concept was innovative and heralded a revolutionary online sharing economy movement which changed the hospitality and tourism industries and short-term accommodation rental markets around the world. Since 2009 the Opponent’s business has traded under and by reference to the AIRBNB Trade Mark.
According to Pavia, the Opponent provides an online marketplace for consumers to list, view, book and review accommodations and experiences through its community-powered hospitality service offered via the websites and amongst others. The consumers who publish and offer accommodation and experience services are known as ‘hosts’ and members who search for, book or use these services are known as ‘guests’.
Since the Opponent’s platform launched in 2009 the Opponent’s business has grown to include more than 7.7million active listings worldwide and over five million hosts have welcomed more than 1.5 billion guests across the world. The Opponent’s website has been accessible to Australian consumers since 2009 and the number of page views since 2010 is very significant[7].Additionally, the online traffic from Australia to the Opponent’s websites has been very significant[8].
[7] Exhibit MP-8 accompanying Pavia.
[8] Exhibits MP-9 and MP-10 accompanying Pavia.
Pavia states that the Opponent has an incredibly large user base in Australia and across the world. Total revenue generated from the Opponent’s financial payment services in Australia from 2019 until 2022 is very substantial[9]. The advertising, marketing and brand development expenditure are also very considerable[10].
[9] Pavia [38-45] and Exhibits MP-23 and MP-26].
[10] Pavia [47].
The Opponent’s evidence demonstrates a consistent and very large reputation in Australia and the world for its AIRBNB Trade Mark in relation to the booking of accommodation. However, I now must determine if the Opponent’s Trade Marks have acquired a reputation in Australia because of which the use of the Trade Mark would be likely to deceive or cause confusion. This is more than the Opponent merely indicating prior use, the Opponent’s AIRBNB Trade Mark needs to be ‘associated in the minds of the Australian public’[11] to such a degree that confusion is likely. This is the main point of contention between the two parties.
[11] Seven Up Co v OT Ltd (1947) 75 CLR 203, 211 (Williams J).
The Applicant has agreed that the Opponent has a very significant reputation in its online accommodation booking services. However, the Applicant has argued that there is no reputation solely in the prefix ‘AIR-’ such that the use of the Trade Mark on its accommodation booking services would deceive or cause confusion. Additionally, the Applicant has argued that the Opponent has never offered accommodation services through its own brick and mortar motels/hotels and that consumers would be aware of this and not be confused between the AIRBNB Trade Mark and the Trade Mark. I am not persuaded by this reasoning. The Opponent has counter argued that a similarity of idea, impression and language would give rise to a real risk that consumers might have cause to wonder that the Trade Mark used on the Applicant’s services was somehow related to the Opponent’s accommodation services.
Considering the respective trade marks, both have the same prefix ‘AIR-’ followed by the words BNB (the well-known and understood acronym for ‘Bed and Breakfast’) and MOTEL. The trade marks share the same structure and both directly reference a form of accommodation for customers to book. These similarities are striking.
While the Opponent has never offered accommodation booking services for its own brick and mortar hotels, I note that the Opponent has extended its AIRBNB Trade Mark to include accommodation and ‘experiences’ which can be booked along with accommodation through its website. Overall, I consider that, given the reputation acquired by the AIRBNB trade mark along with the similarities between the respective trade marks, a significant number of consumers would at the very least experience a reasonable doubt[12] as to the existence of some sort of connection between the AIRBNB trade mark and the Trade Mark if it were used on the Applicant’s Services.
[12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [594-5].
The Opponent has accordingly established its ground of opposition under s 60.
Decision
Section 55 of the Act provides:
55 Decision
(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.
Note: For limitations see section 6.
I find that the Opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly, I refuse to register trade mark application no. 2353655.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
26 June 2025

[5] Launched in 2009.

[6] Launched in 2012; Exhibits MP-7 and MP-10 accompanying Pavia

[2025] ATMO 125

26 June 2025

Key Legal Topics

Areas of Law

Commercial Law

Intellectual Property

Legal Concepts

Appeal

Remedies

Standing

Statutory Construction