Choice Hotels International Inc, Re

[1994] ATMO 83

TRADE MARKS ACT 1955

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

RE:Trade Mark Application No. 535999 in the name of CHOICE HOTELS INTERNATIONAL INC.

Application No. 535999 was lodged on 13 June 1990 and is now in the name of CHOICE HOTELS INTERNATIONAL INC., a corporation of the State of Delaware of United States of America.  It sought the registration as a trade mark in Part A of the Register of the words CHOICE HOTELS in respect of:  "Hotel and motel services; restaurant, catering, cafe and cafeteria services; and all other services in class 42".

On 10 October, 1991, an examiner's report on the application was issued objecting to the registration of the mark in terms of paragraphs 24(1) (c), (d) and (e) of the Trade Marks Act on the grounds that it was not an invented word, that it had direct reference to the character or quality of services included in the specification and that it was not distinctive. In the examiner's words:

"The mark consists of the words CHOICE HOTELS which have direct reference to the character or quality of services included in the specification as choice hotel services".

On 21 April, 1992, in response to this objection, the attorney for the applicant, having assumed that the objection was raised because of the laudatory and descriptive nature of the mark, submitted that not all laudatory or descriptive terms were incapable of being registered.  He, however, requested an amendment to Part B of the Register stating that he believed that the mark was registrable at least in Part B.

The examiner maintained the objection in terms of section 25 of the Act, adding that it was open to the applicant to submit evidence of use to show that the mark was capable of becoming distinctive of the services claimed.  In this second report, the examiner also pointed out that a claim for "all services in class 42" was not permissible unless the applicant could substantiate use, or intention to use, on all the services claimed.

In response to this second report, the attorney requested an amendment to the statement of services to read:  "Hotel and motel services, including management, reservations, accommodation and restaurant services included in class 42".  He also included evidence in the form of advertising brochures and a list of 1700 travel agents in Australia who receive these brochures.  In light of the evidence and previous submissions, the attorney suggested that the mark should be in order for acceptance in Part A and thereby requested that the previous request to transfer the application to Part B be withdrawn.

The examiner replied that even considering the evidence lodged, this application was not eligible for either Part A or Part B registration because the mark was so totally non-distinctive.  At the suggestion of the examiner, the attorney for the applicant requested a hearing on the matter.

At the hearing the applicant was represented by Mr Andrew Cowie of Carter Smith & Beadle, patent attorneys of Melbourne.  Mr Cowie stated that the applicant did not actually operate hotels/motels;  the applicant is, in fact, a world-wide franchiser of various hotel services under various trade marks, for example, Quality Inns, Comfort Inns etc.  The applicant is engaged in purely franchising activities: hotel marketing and reservation systems.  If the statement of services could be amended to "franchising services", Mr Cowie said, the trade mark would then be directed to a special group aware of the trade mark usage and which would not be affected by the laudatory significance of the mark.  Mr Cowie then made further submissions as to the registrability of the trade mark as applied to "franchising services".

I advised Mr Cowie that it could not be agreed that "franchising services" were encompassed by the original specification since such services come within class 35, not class 42.  That being the case, a fresh application would need to be lodged in the appropriate class to cover these services.  Any such application would, of course, be considered on its own merits.

I now issue the decision, and reasons therefor, which I reserved at the hearing.

In considering a mark's registrability in terms of the Act, Gibbs J. in the Burger King Corporation case, 128 CLR 417, said:

"...that the primary enquiry is whether the word is inherently adapted to distinguish the goods in respect of which registration is sought, and that if it is simply a laudatory or descriptive epithet, registration will generally be refused, even if there is evidence of such user as has in fact rendered the word distinctive of the goods."

The mark in suit consists of the words CHOICE HOTELS, the word CHOICE being defined in the Macquarie Dictionary as, inter alia:

1. the act of choosing; selection.  5. that which is preferred or preferable to others;  the best part of anything.  8. worthy of being chosen; excellent; superior.

Mr Cowie, while acknowledging that CHOICE has these meanings, submitted that it is not the most apt or usual word to use in relation to the specified services.  While one might refer to fruit, for example, as "choice", it is not common, he argued, to describe a hotel or its services as such.

With respect, I cannot agree with that submission.  It is not at all unusual to refer to houses or land as "choice real estate", and it seems to me a most ordinary and apt use of this laudatory epithet to extol the claimed virtues of a hotel.  I believe ordinary people would have no hesitation in understanding the words CHOICE HOTELS, in their application to the specified services, as describing or indicating their nature or some attribute they possess: Dixon CJ in Mark Foy's Ltd v. Davies Coop & Co Ltd (1956) 95 CLR 190 at pp194-195.

The mark is, in my view, merely laudatory and descriptive of the services for which registration is claimed.  The evidence of user lodged does not weigh in favour of this application as it simply shows use in relation to franchising services, and not in relation to the services covered by this application.  However, due to the mark's total lack of inherent adaptedness to distinguish such services, even evidence amounting to factual distinctiveness would not have gained the mark registration.

Subsequent to the hearing, Mr Cowie drew my attention to the decision made to accept for registration the mark SUPER SUITES in respect of hotel services, and suggested that the subject trade mark could be accepted for registration on much the same basis.  Again I cannot agree.  The combination of two ordinary descriptive words can be accepted as producing something which, as a whole, has some degree, however small, of inherent adaptedness to distinguish.  This was presumably the case with SUPER SUITES, which was accepted for registration in in Part B, subject to disclaimer of the separate exclusive use of the individual words.  I do not believe the same can be said for CHOICE HOTELS, which, as a whole, represents an ordinary, laudatory description of hotels and the services they provide.

As a consequence of this finding, and in line with the decision in Burger King, above, I have no option but to refuse to register application number 535999.

(S. FARQUHAR)
Deputy Registrar
4 November 1994