Danilo Spagnuolo v Mantra IP Pty Ltd - [2010] ATMO 110

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Danilo Spagnuolo to registration of trade mark applications 1228706(36), 1228707(39), 1228708(35, 43) - Q1 - in the name of Mantra IP Pty Ltd.

Delegate: Claudia Murray

Representation: Opponent: Ms Cassandra Voller of IP Wealth Pty Ltd did not appear at the hearing, but provided written submissions.
Applicant: Mr Andrew Musgrave of Counsel, instructed by Ms Carly Long from Mallesons Stephen Jaques, Brisbane.

Decision: 2010 ATMO 110
Section 52 oppositions – section 43 ground established – existence of geographical connotation means that trade mark use on relevant services likely to deceive or cause confusion - registration refused – costs awarded against applicant.
Background

Trade mark applications 1228706, 1228707 and 1228708 were filed on 10 March 2008. They are all in respect of the trade mark:

Trade mark number 1128706 was filed in class 36 of the International (Nice) Classification of Goods and Services. It covers the following services:
Leasing of accommodation; rental of accommodation; accommodation letting agency; accommodation bureaux (apartments); apartment rental services; apartment letting agency; management and administration of buildings; real estate management; provision of long-term accommodation; apartment house management; management services including property management and administration; acquiring and managing real estate for investors; leasing of real estate; renting of apartments; real estate agency services; body corporate management services; insurance and financial services in relation to real estate and investment; financial management services for apartments, resorts and hotels; financial sponsorship of education, training, entertainment, sporting or cultural activities; and management, sale and financing of real estate
Trade mark number 1228707 is in class 39 and covers:
Holiday travel reservation services; advisory services relating to travel; agency services for arranging travel; arrangement of travel; booking agency services for travel; computerised reservation services for travel; consultancy for travel; information services relating to travel; provision of information relating to travel; provision of tourist travel information; provision of travel information; reservation services for travel; ticket booking services for travel; tourist travel reservation services; travel agents services for arranging travel; travel information services; travel reservation; computerised reservation services for travel; computerised transport information services; luggage storage services; organising of excursions; parking of cars; parking services for vehicles; provision of parking facilities; reservation services for tours; services for the arranging of excursions for tourists; tour organising; and arranging rental of cars
Lastly, trade mark number 1228708 covers services in two classes as follows:
Class: 35 Advertising services for accommodation, including providing these services online
Class: 43 Hotel and resort services; accommodation reservations; provision of accommodation including hotel, motel, apartment and resort; provision of temporary accommodation; administration and booking services for accommodation; rental of temporary accommodation; accommodation reservations; accommodation management services; provision of food and drink; restaurant services; reservations (temporary accommodation); hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings; accommodation letting agency services (holiday apartments); arrangement of accommodation for holiday makers; arranging holiday accommodation; holiday…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2010] ATMO 110
Decision Date: 5 November 2010

CaseChat Overview and Summary

This matter concerned three trade mark oppositions brought by Danilo Spagnuolo against applications by Mantra IP Pty Ltd for registration of trade marks numbered 1228706, 1228707, and 1228708. The dispute centred on the use of the trade mark "Q1" in relation to accommodation services. Evidence presented by both parties detailed the existence and promotion of the "Q1" residential tower in Surfers Paradise, Queensland, and the operation of a resort named "Q1 RESORT & SPA" within that building by Mantra IP.

The primary legal issue before the Hearing Officer was whether the grounds of opposition, specifically under section 43 of the relevant Act, were established. Section 43 concerns whether a trade mark is likely to deceive or cause confusion. The onus rested on the opponent, Mr Spagnuolo, to prove this ground on the balance of probabilities.

The Hearing Officer found that the ground of opposition under section 43 was established. This conclusion was reached having regard to the evidence demonstrating the prominence and iconic status of the "Q1" building and the associated resort. The Hearing Officer determined that the use and proposed registration of the trade marks by Mantra IP were likely to deceive or cause confusion. Consequently, the Hearing Officer refused to register the trade marks. The Hearing Officer also ordered that costs follow the event, awarding costs against Mantra IP.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The evidence is the same for all three trade mark oppositions. It comprises:Evidence in SupportØStatutory declaration of Danielle Jepson, with Exhibits A to D, dated 12 May 2009. Evidence in AnswerØStatutory declaration of Carly Long, with Exhibit CL-1, dated 7 October 2009. ØStatutory declaration of Bryan Luke Jamieson, with Exhibits BLJ-1 to BLJ-10, dated 3 December 2009 (‘Jamieson Declaration’). Evidence in ReplyØStatutory declaration of Danilo Spagnuolo, with Exhibits 1 to 6, dated 6 May 2010 (‘Spagnuolo Declaration’). The evidence shows that ‘Q1’ (for ‘Queensland 1’) is the name of an ‘iconic’ high rise apartment building situated in Surfer’s Paradise, on Queensland’s Gold Coast. When it was opened in 2005, it was the world’s tallest residential tower. It is the tallest building in Australia. The following excerpt from some of the advertising material in evidence paints a glowing picture of its attributes:Q1 SURFERS PARADISE RESORT Surfers ParadiseWith its stunning glass-encased structure Q1 Resort Surfers Paradise is quite possibly the most striking building to appear on the Gold Coast skyline. Standing 80+ levels and 322 metres high, with Australia's only beachside observation deck, the Q1 Resort caters for all holiday and business occasions. Starting with the Q Deck on level 77 you'll take in 360 degree views over the entire Gold Coast, serviced by an express elevator taking 43 seconds from top to bottom. Both levels 77 & 78 are available for functions and events with a capacity of 400 people. The facilities on level 2 are also ideal for conferences and events including a modern ballroom with audio visual technology and room for 400 guests, and the option to split into 3 smaller function rooms. Beneath the Surfers Paradise Q1 Resort is one of the Gold Coasts most stylish precincts of shops and dining. The Q1 Resort Day Spa is located in the poolside gardens and is operated by Exclusive Spas Australia, offering arguably the Gold Coasts best treatments. Q1 Resort facilities include 2 lagoon pools, a 25 metre heated indoor pool, steam & sauna rooms, a modern gym, in-house theatre, and bar-b-q areas.[1][1] Spagnuolo Declaration, Exhibit E. Mr Bryan Jamieson is the General Manager – Distribution of the Mantra Group (‘MG’), of which Mantra IP is a part. He declares that MG is one of Australia’s largest accommodation providers, and that it operates a leisure resort called ‘Q1 RESORT & SPA’ at the Q1 building, and promotes the resort under the trade marks ‘Q1’ and ‘Ql RESORT & SPA’. The building consists of several businesses and over 500 luxury self-contained apartments as well as sub-penthouses. MG offers guest facilities at the Q1 Resort & Spa, such as a 24 hour reception, daily mini service, concierge service, business centre, two lagoon swimming pools, an indoor lap pool, gymnasium, sauna and steam rooms and a day spa. Some of these facilities are only available to guests who book through MG.

Decision

Reasons for decision

I find the ground of opposition in terms of section 43 to be established. Decision Subsection 55(1) of the Act provides:(1) 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. The onus is upon an opponent to establish one or more grounds of opposition, according to the balance of probabilities.[26] The opposition has succeeded in relation to the ground under section 43 nominated in the notices of opposition. I therefore refuse to register trade mark numbers 1228706, 1228707 and 1228708.[26] Pfizer Products Inc v Karam (2006) 70 IPR 599; Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13 (at [22] to [26]).Costs It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant, Mantra IP.Claudia MurrayHearing OfficerTrade Marks Hearings5 November 2010

Ratio Decidendi

Legal Principle Established

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Delegate:	Claudia Murray
Representation:	Opponent: Ms Cassandra Voller of IP Wealth Pty Ltd did not appear at the hearing, but provided written submissions. Applicant: Mr Andrew Musgrave of Counsel, instructed by Ms Carly Long from Mallesons Stephen Jaques, Brisbane.
Decision:	2010 ATMO 110 Section 52 oppositions – section 43 ground established – existence of geographical connotation means that trade mark use on relevant services likely to deceive or cause confusion - registration refused – costs awarded against applicant.