Fairmont Hotel Management L.P. v Schwartz Family Co. Pty Limited

[2014] ATMO 69

TRADE MARKS ACT 1995

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

Re:Opposition by Fairmont Hotel Management L.P. to registration of trade mark application 1400100(43) - FAIRMONT  - filed in the name of Schwartz Family Co. Pty Limited.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Mr Neil Murray of Counsel, instructed by Miriam Stiel, a partner of Allens, Patent & Trade Mark Attorneys.

Applicant: Mr Sean McManis, a partner in the firm Shelston IP.

Decision:

2014 ATMO 69

Background

1. This is a proceeding under section 52 of the Trade Marks Act 1995 (‘the Act’) concerning the application (‘the Application’) filed by Schwartz Family Co. Pty Limited (‘the Applicant’) which is detailed below:

Application No: 1400100

Priority Date:  13 December 2010

Services:Class 43: Services for providing food and drink; temporary accommodation

Trade Mark:  FAIRMONT

(‘the Trade Mark’)

Endorsement:                  Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.[1]

[1] These provisions provide an exemption to the dictates of subsection 44(2) and allow the acceptance of an otherwise conflicting trade mark for which the examiner is satisfied that use has been established that was before the priority or registration date of any conflicting trade marks.  Here the conflicting trade marks are those of the Opponent which are detailed at paragraph 11 below.

1. The Trade Mark was advertised as accepted for possible registration on 24 May 2012 in the Australian Official Journal of Trade Marks. On 23 November 2012, after seeking and receiving an extension of time in which to do so, Fairmont Hotel Management L.P. (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice includes reference to all available grounds of opposition to registration of a standard trade mark including that under section 60 under which I will decide this matter.

2. The parties have filed their evidence as allowed by the Trade Mark Regulations 1995 and both subsequently availed themselves of the opportunity to be heard.  The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 20 June 2014.  Mr Sean McManis, a partner in the firm Shelston IP, represented the Applicant; Mr Neil Murray of Counsel, instructed by Miriam Stiel, a partner of Allens, represented the Opponent.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].

2. The relevant date at which the grounds must be considered is the filing  date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited [1947] 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

1. The evidence comprises:

   Evidence in Support

   Statutory Declaration of Terence Patrick Badour dated 17 May 2013, with Exhibit TPB-1 Tab 1 to TPB 1 Tab 17;

   Statutory Declaration of Gillian Elizabeth Seller dated 23 May 2013, with Exhibits GS-1 Tab 1 to GS-1 Tab 32 (‘First Seller declaration’); and

   Statutory Declaration of Miriam Anne Stiel dated 22 May 2013, with Exhibits MAS-1 Tab 1 to MAS-1 Tab 15 (‘First Stiel declaration’).

Evidence in Answer

Statutory Declaration of Peter John Grant dated 4 September 2013, with Exhibits PJG -1 to PJG-6 (‘First Grant declaration’);

Statutory Declaration of Peter John Grant dated 4 November 2013, with Exhibits PJG -7 to PJG-9 (‘Second Grant declaration’);

Statutory Declaration of Randall Walker dated 4 November 2013, with Exhibit RW-1.

Evidence in Reply

Statutory Declaration of Miriam Anne Stiel dated 18 February 2014, with Exhibit MAS-2 Tab 1 to MAS-2 Tab 5 (‘Second Stiel declaration’);

Statutory Declaration of Glenn Anthony Baker dated 18 February 2014; and,

Statutory Declaration of Gillian Elizabeth Seller dated 12 February 2014 (‘Second Seller declaration’).

1. The parties own and operate hotels: the Opponent operates hotels under the trade mark FAIRMONT primarily on the North American continent but also in other countries including the United Kingdom, China, Singapore and Germany[3].  The Applicant owns and operates a hotel at Leura (‘the Resort’) in the Blue Mountains which it states has always traded under the Trade Mark.[4]

   [3] First Stiel declaration [16].

   [4] Second Schwartz declaration (attached to the First Grant declaration).

2. Mr Badour states he is Executive Vice President Law & Administration of Fairmont Hotel Management Company and is based in Toronto, Canada.  Mr Badour in his declaration attests to the history and scope of the Opponent’s operations under its FAIRMONT trade mark.  He states:

   In 1907, FAIRMONT was first adopted as a hotel name by a predecessor in title of the Fairmont Group, in relation to a hotel in San Francisco. The trade mark FAIRMONT has been in use ever since. Copies of a hotel invoice dated March 2, 1908 and a 'Menu' and 'Program' dated May 13, 1910 from the Fairmont hotel in San Francisco are behind tab 1. The Fairmont hotel in San Francisco soon became one of the best known hotels in the United States.

3. Mr Badour continues:

   In the years following the opening of the Fairmont hotel in San Francisco, the Fairmont group expanded, including by branding other hotel properties across the United States and Canada with the trade mark FAIRMONT, such as:

   (a) Fairmont Dallas, which has been branded FAIRMONT since 1969;

   (b) Fairmont San Jose, which has been branded FAIRMONT since 1987;

   (c) Fairmont Chicago, which has been branded FAIRMONT since 1987;

   (d) Fairmont Copley Plaza, Boston, which has been branded FAIRMONT since 1996;

   (e) Fairmont Kansas City, which has been branded FAIRMONT from 2000 to 2006;

   (f) Fairmont New Orleans, which was branded FAIRMONT from 1965 to 2007;

   (g) Fairmont Mayo Hotel, Tulsa, which was branded FAIRMONT from 1968 to 1977; and,

   (h) Fairmont Colony Square Atlanta, which was branded FAIRMONT from 1972 to 1977.

   In addition, in 1999 the following high profile hotels were re-branded as Fairmont Hotels:

   (a) Fairmont Royal York;

   (b) Fairmont Queen Elizabeth;

   (c) Fairmont Banff Springs;

   (d) Fairmont Chateau Lake Louise;

   (e) Fairmont Le Chateau Frontenac;

   (f) Fairmont Hotel Vancouver;

   (g) Fairmont Chateau Laurier;

   (h) Fairmont Hotel Macdonald; and

   (i) Fairmont Empress.

   Since 1999, the Fairmont Group has also acquired or been made the manager of, and rebranded, the following high profile properties:

   (a) The Plaza, A Fairmont Managed Hotel (New York);

   (b) Fairmont Orchid (Hawaii);

   (c) Fairmont Kea Lani (Hawaii);

   (d) Fairmont Vancouver Airport;

   (e) Fairmont Pacific Rim (Vancouver);

   (I) Fairmont Chateau Whistler;

   (g) Fairmont Scottsdale Princess;

   (h) Fairmont Olympic, Seattle; and

   (i) Fairmont Washington, DC.

   The Fairmont Group today has over 60 distinctive hotels and resorts, and more than 10 properties currently under development, which bear the trade mark 'FAIRMONT'. These properties span across a wide number of countries such as the United States of America, the United Kingdom, Germany, Bermuda, Barbados, Canada, China, Egypt, India, Kenya, Mexico, Monaco, Philippines, Saudi Arabia, Singapore, South Africa, Switzerland and the United Arab Emirates, among others.

4. Mr Badour also states that:

   The Fairmont Group operates regional offices in Calgary, Dubai, London, Montreal, and Shanghai, a regional sales office in Mexico City, and global sales offices in Sydney, Beijing, Chicago, Dallas, Dubai, Frankfurt, Hong Kong, London, Los Angeles, Mexico, Milan, Moscow, New Delhi, New Jersey, New York, Ottawa, Paris, San Francisco, Shanghai, Singapore, Tokyo, Toronto, Vancouver, and Washington, DC.

5. Mr Badour states that the Opponent owns, inter alia, Australian trade mark registrations (‘the Opponent’s registrations’) which are detailed below:

Registration No:              546594

Priority Date:  27 November 1990

Services:  Class 42: Hotel services

Trade Mark:  FAIRMONT

Registration No:              546595

Priority Date:  27 November 1990

Services:  Class 42: Hotel services

Trade Mark:  

Registration No:              546596

Priority Date:  27 November 1990

Services:  Class 42: Hotel services

Trade Mark:  

Registration No:              1200422

Priority Date:                    24 September 2007

Services:Class 43: Services for providing food and drink; temporary accommodation; hotel and resort services, hotel accommodation services, housekeeping services; reservation services for hotel accommodation; room hire; making reservations and bookings for temporary lodgings; making reservations for long and short term stays in apartments and condominiums; private residence and social club services in this class, including child care services, bookings for restaurants and meals, banquet and social functions for special occasions; provision for conference facilities, banqueting services; bar, cafe, restaurant services, cocktail lounge and coffee shop services, food cooking services; catering services; providing of facilities for conventions and exhibitions; including all of the aforesaid services provided electronically or online from a computer database or via the Internet; information, advisory and consultancy services relating to the aforesaid services; all included in class 43[5]

Trade Mark:  FAIRMONT

[5] Only the Class 43 specification is detailed here.

1. Concerning the extent of the Opponent’s reputation Mr Badour states that worldwide annual revenues for hotels under the trade mark FAIRMONT have averaged around 2 billion US dollars in the period 2005 to 2010 with commensurate advertising expenditure.  Examples of television advertising (‘Scenic Tours’) in Australia of Canadian holidays featuring at least one very large hotel set in rugged landscape are exhibited to Mr Badour’s declaration.  Australians may make reservations for any of the Opponent’s hotels directly via a toll-free telephone number or via the Internet on the Opponent’s website.  Additionally, Australians may book via travel agencies such as Flight Centre, Harvey World Travel or Escape Travel or on-line travel agencies such as Expedia, Zujo or Orbitz.

2. A total of 84,229 Australian guests stayed at a hotel bearing the trade mark FAIRMONT during the period 2004 to 2013.

3. Mr Badour states that at December 2010 there were 19,038 Australian members of the Opponent’s loyalty program.

4. Concerning incentives provided to book at the Opponent’s hotels Mr Badour states:

   ResPlus is a reward program for external executive and administrative assistants that book reservations for their colleagues at Fairmont Hotels. Each time a program member makes a booking with Fairmont Hotels & Resorts, Raffles Hotels & Resorts or Swissôtel Hotels & Resorts, the member earns points that they can use toward free room nights, retail gift cards and other rewards. The first Australian member of this program joined in 2009. There are presently 215 active members in Australia. In 2010, there were 108 active members in Australia. In 2010, Australian members of this program booked 2,615 room nights at Fairmont Hotels for their colleagues.

   Ovation Rewards is a way for companies to purchase flexible accommodation packages to stay at Fairmont, Raffles and Swissôtel brand hotels to offer to their employees as incentives.

   The Famous Agents (which was branded FAIRMONT FAMOUS from 2004 to March 2009) is an education and rewards program for travel agents who promote Fairmont Hotels. From 2005 to 11 December 2010, 2,164 Australian individual travel agents (not agencies) enrolled in the program. From 2005 to 31 December 2010, 10,697 room nights at Fairmont Hotels were awarded to Australians under this program.

   From June 2005 to 12 December 2010, the number of Famous Agents members that indicated in their profile that their country of residence was Australia was 2,109.

5. Ms Seller is Director, Global Sales – Australia/New Zealand of Swissôtel International (Australasia) Pty Limited, (‘Swissôtel’) a position she has had since 2004.  Swissôtel is, Ms Seller states, a related body corporate of the Opponent.

6. In her first declaration Ms Seller states:

   The Fairmont Group has been represented in Australia for many years. For example, I am aware from personal conversations with Ms Jane Roennfeldt (a former employee of The Fairmont San Francisco and a current employee of JCR Consulting in Sydney), that Ms Roennfeldt represented the Fairmont brand in Australia from 1991 to 1995. I am also aware from personal conversations with Ms Fiona Rose (currently of Luxe Hotels), that Ms Rose represented the Fairmont brand in Australia from 1995 to 1998.

   My own involvement with the Fairmont Group started in 2004.

   From on or around 1 October 2004 to May 2008, Destination Marketing Services (‘DMS’) operated a Global Sales Office in Sydney (‘Sydney GSO’) on behalf of the Fairmont Group. During that time period, I was a full-time DMS employee dedicated exclusively to the Fairmont Group's Sydney GSO. My position was fully funded by the Fairmont Group.

   In 2006, the Sydney GSO's responsibilities were expanded to include the Raffles brand in Australia following the acquisition of the Fairmont Group by Colony Capital.

   In May 2008, the Fairmont Group ended its arrangement with DMS and moved the Sydney GSO in-house. I was then employed directly by the Fairmont Group. The Sydney GSO's office was moved to the Swissôtel Hotel in Sydney's central business district. My responsibilities were expanded to include the Swissôtel brand in Australia.

   There are currently three employees of the Fairmont Group working at the Sydney GSO: me (the Director of Global Sales), a Sales Manager and a Sales Services Executive. We are all employed by Swissôtel International (Australasia) Pty Limited, which is a wholly owned subsidiary of FRHI Holdings Limited (which is also the ultimate holding company of the Opponent).

   Since its inception, the Sydney GSO has provided the Fairmont Group with sales and marketing services, public relations support and representation at tradeshows and networking events. The Sydney GSO works with various travel market segments in Australia and New Zealand, including travel agents, tour wholesalers, incentive, group and conference planners, and corporate companies travelling for business purposes.

   By way of example, representatives from the Sydney GSO have attended the following exhibitions, conferences or trade fairs on the Fairmont Group's behalf:

   (a)         Asia-Pacific Incentives & Meetings Expo (AIME), which is held in Melbourne in February annually:

   (i)           in 2005 and 2006, Fairmont Hotels & Resorts was a co-exhibitor on the DMS stand; and

   (ii)          in each year from 2007 to 2103, the Fairmont Group had its own stand;

   (b)         Pacific Area Incentives & Conferences Expo (PA/CE), which is held in Auckland sometime between August and November annually: in each year from 2008 to 2012 (and confirmed for 2013), the Fairmont Group exhibited on its own stand;

   (c)          Corroboree, which is an Australian Roadshow organised by the Canadian Tourism Commission held in February each year and travelling to Perth, Adelaide, Melbourne, Sydney, Brisbane: the Fairmont Group has participated every year from 2000 to 2013;

   (d)         Qantas Corporate Travel Show, which is held in July and August annually and travels to Brisbane, Adelaide, Perth and Canberra: the Fairmont Group has participated every year from 2008 to 2012;

   (e)         Carlson Wagonlit Travel Expo: the Fairmont Group participated in 2010, 2011 and 2012; and

   (f)          Creative Holidays Roadshow: the Fairmont Group participated each year from 2008 to 2011.

7. Ms Seller continues:

   Scenic Tours is an Australian-owned international tour operator. Copies of selected pages from Scenic Tours' brochures are behind tabs 4 to 11 of Exhibit GS-1:

   (a)         Copies of selected pages from a Scenic Tours brochure released in 2001 for 2002 and 2003 are behind tab 4. Page 7 of that brochure endorses Fairmont Le Chateau Montebello as one of the '[F]inest hotels in central locations'.

   (b)         Copies of selected pages from a Scenic Tours Canada and Alaska guide released in 2004 are behind tab 5. Page 3 of that guide contains a pictorial advertisement for The Fairmont Empress Hotel as well as print advertising for other Fairmont properties, including The Fairmont Chateau Whistler, The Fairmont Chateau Lake Louise and The Fairmont Banff Springs.

   (c)          A copy of a Scenic Tours brochure dedicated to the Fairmont brand, which was produced in 2005, 2006 and 2007, is behind tab 6. This brochure was distributed to every travel agent in Australia and all consumers who contacted Scenic Tours about tours in Canada.

   (d)         Copies of selected pages from a Scenic Tours Canada and Alaska guide released in 2005 for the year 2006 are behind tab 7. Page 5 of that guide contains a pictorial advertisement for The Fairmont Chateau Lake Louise as well as print advertising for various Fairmont properties including The Fairmont Chateau Whistler, The Fairmont Chateau Lake Louise and The Fairmont Banff Springs.

   (e)         Copies of selected pages from a Scenic Tours Canada and Alaska guide released in 2005 for the years 2006 and 2007 are behind tab 8. Page 5 of that guide contains a pictorial advertisement for The Fairmont Chateau Lake Louise as well as print advertising for various Fairmont properties including The Fairmont Chateau Whistler, The Fairmont Chateau Lake Louise and The Fairmont Banff Springs.

   (f)          Copies of selected pages from a Scenic Tours Canada and Alaska guide released in 2006 for the years 2007 and 2008 are behind tab 9. Pages 4 to 5 of that guide contain an advertisement for Fairmont Hotels and Resorts. The advertisement includes pictures of The Fairmont Express, The Fairmont Banff Springs, Fairmont Le Chateau Frontenac, The Fairmont Lake Louise, The Fairmont Chateau Whistler and The Fairmont Jasper Park Lodge. The advertisement also includes information in print about those properties.

   (g)         Copies of selected pages from a Scenic Tours Canada and Alaska guide released in 2007 for the years 2008 and 2009 are behind tab 10. Pages 6 to 7 of that guide contain an advertisement for Fairmont Hotels & Resorts. The advertisement includes pictures of The Fairmont Chateau Lake Louise as well as information in print about other Fairmont properties including The Fairmont Banff Springs and The Fairmont Jasper Lodge.

   (h)         Copies of selected pages from a Scenic Tours Canada, Alaska and the USA guide released in 2008 for the year 2009 [are] behind tab 11. Pages 10 to 11 of that guide contain an advertisement for Fairmont Hotels & Resorts. The advertisement includes pictures of Fairmont properties in Banff, Victoria and Quebec and includes information about the Fairmont 'experience'.

8. Ms Seller attests to (and exhibits supporting materials relating to) extensive promotional activities of the Opponent’s trade mark FAIRMONT before the priority date, including:

   Special offers every quarter to American Express Platinum and Centurion Card holders

   E-flyers concerning incentives to travel agents

   Advertisements in trade journals

   DMS website material

   Travel agents familiarisations tours of FAIRMONT branded hotels

   Material associated with the broadcasts in 2005 of the program Mornings with Kerri-Anne from different Canadian FAIRMONT branded hotels during which the trade mark FAIRMONT was mentioned on numerous occasions.

   Harvey World Travel television and print advertisements from the period 2004 to 2009 featuring the Opponent’s FAIRMONT branded hotels

   APT (Australian Pacific Touring) promotional material featuring the Opponent’s FAIRMONT branded hotels during the period 2006 to 2011.

1. Ms Stiel is a lawyer who is handling this matter on behalf of the Opponent.  In the First Stiel declaration she details (and exhibits) references to the Opponent’s FAIRMONT trade mark in Australian media.  These references include:

   The LexisNexis database, 184 articles[6] in the period January 2000 to December 2010 in such publications as The Age, The Sun Herald, The Sunday Age, The Advertiser, The Sunday Times, The Australian, The Sunday Telegraph, The Sunday Mail, The Sunday Tasmanian, The Weekend Australian; The Sydney Morning Herald and the Australian Financial Review.[7]

   The National Library’s Trove database which returned 91 articles from the period 1900 to 1980.  These articles are exhibited to Ms Stiel’s declaration.

   A search of the TripAdvisor website on 18 April 2013 which returned 105 references to ‘lodgings’ which bear the trade mark FAIRMONT all but one of which are the Opponent’s properties.[8]

   [6] Of the 184 articles, four refer to the Applicant’s Resort.

   [7] The Opponent provides data from Roy Morgan concerning the readership of the publications which is extensive.

   [8] The one property which does not belong to the Opponent used to be one of the Opponent’s properties.

2. Ms Stiel provides Australian Bureau of Statistics data on overseas trips made by Australian residents to overseas destinations as well as that on arrivals to Australia from the United Kingdom, the United States of America, China and Singapore.

3. Ms Stiel also supplies a list of the Opponent’s FAIRMONT branded hotels which have featured in motion pictures.  These include, Vertigo, Sudden Impact, Junior, Jade, The Rock, The Crooked ‘E’, The Unshredded Truth About Enron, Category 6: Day of Destruction, Category 7: The End of the World, The Big White, Capote, Beyond Borders, Michel Vaillant, In Love and War, For those I Loved and Are We There Yet?

4. In the First Grant declaration in answer, Mr Grant states that he is a solicitor of the Supreme Court of New South Wales and a director of the Applicant.

5. Mr Grant witnessed two statutory declarations by Mr Jerry Leslie Schwartz (‘the First Schwartz declaration’ and ‘the Second Schwartz declaration’) which were submitted to the examiner of trade marks in order to address issues in terms of subsections 44(2) and 44(4) of Act.  Copies of these two declarations are attached to the First Grant declaration.

6. In the First Schwartz declaration made on 13 February 2012 the deponent states that the Opponent took over the management of the Fairmont Resort (‘the Resort’) in October 2010 and completed the purchase of the Resort on 23 December 2010.  Mr Schwartz says:

   The Resort was first planned to be built through the vision of Mr Robert Cann who was a Director of Fairmont Resort Pty Limited as early as 13 January 1983. I attach a copy of a letter from Pinehurst Hotel and Country Club in North Carolina, United States of America addressed to Mr Robert Cann, Managing Director, Fairmont Resort Pty Limited commenting on the outline for his project in the Blue Mountains together with his response dated 31 March 1983.

   The Fairmont Resort was officially opened on Saturday, 13 August 1988 by the then Premier of New South Wales, Mr Nick Greiner.

   A true copy of the souvenir menu from that occasion is attached. The Resort opening was delayed but the use of the name Fairmont Resort had been actively pursued since at least 1983 and in the intervening year up to the date of the opening of the Resort.

   I attach copies of advertising material and brochures showing use of the name Fairmont Resort prior to the opening from at least early 1987.

   The Resort has been in constant operation since that date to the present and I enclose copies of menus, advertising brochures and editorial material showing the use of the proposed trademark.

   The Resort continues to trade under the name Fairmont Resort Leura.

7. The trade mark most commonly depicted in the materials exhibited to the First Schwartz declaration show the trade mark that appears hereunder although it is also referred to as FAIRMONT and FAIRMONT RESORT:

(‘the Three Sisters trade mark’)

1. In the Second Schwartz declaration made on 20 April 2012 the deponent provides more material in order to support claims of continuous use of the Trade Mark from before the earliest priority date of the Opponent’s registrations until the filing of the Trade Mark.

2. The largest exhibit (Exhibit PJG-7) to the Second Grant declaration is an extract from a book: The Fairmont Resort A Blue Mountains Icon Terri McCormack 2013 CL Creations Pty Ltd.

3. The book gives the background and history of the Resort.  Notably, the book includes the following passage about the founder, Robert Cann:

   In his search for an evocative name for his resort, Robert Cann recalled the grand Fairmont San Francisco, a city landmark.  The name dovetailed neatly with the fairways of the adjacent golf club and the mountain location.  It had no connection with the Canadian Fairmont brand.[9][10]

   [9] On the evidence before me, this assumption that there is no connection with the “Canadian Fairmont brand” appears to be wrong.

4. The Resort was bought in 1997 by Peppers Hotel Trust and was run as Peppers Fairmont Resort from 1999.  On 22 November 2006 the Resort was sold to Noble Growth and was renamed the York Fairmont on 18 December 2007.

5. The Resort’s quality and occupancy rates suffered under its ownership by Noble Growth and effectively became reduced to a one-star motel until bankruptcy forced receivership, rebirth under interim management and the sale of the Resort to its current owners.

6. Mr Walker is Chairman of the Board of Blue Mountains, Lithgow & Oberon Tourism and he declares his knowledge of the Resort and its operation under the trade marks FAIRMONT RESORT, PEPPERS FAIRMONT and YORK FAIRMONT since its opening.

7. Mr Baker is a well-known writer and media identity.  Concerning his background, he states:

   I am the author of 17 books, the most recent being On The Road To Damascus and Other Fabulous Thoroughfares and Best of Baker: Travel. I was the winner of the inaugural Australian Travel Writer of the Year Award in 1995; a title which I won again in 2000 and 2011 and for which I was the runner-up in 1999. I have visited more than a hundred countries throughout my career. I have been the recipient of a Pacific Asia Travel Association (PATA) award and a China Travel writing award. I have contributed to more than 200 prestigious publications, including Conde Nast Traveller, Vogue, Luxury Travel, Cosmopolitan, Good Weekend, The Australian Magazine, Discovery, Signature, Vacations, Tatler, Prestige, Australian Financial Review Magazine, Australian Gourmet Traveller, National Geographic Traveller China, Get Up & Go, Post Magazine and PrivatAir (a leading inflight magazine). I have appeared regularly on the Today Show television program on the 9 Network and Sunrise/Mornings on the 7 Network and also appear as a travel presenter on ABC Radio's national Night Life programme, with occasional appearances on 2GB's travel show. I am a Life Member of the Australian Society of Travel Writers and served from 1999 to 2001 on its guiding committee. In 2012, I took out the Best Trade Story award at the ASTW Travel Writer of the Year Awards.

8. Concerning the reputation of the Opponent’s trade marks, Mr Baker states:

   I am very familiar with the international chain of Fairmont Hotels and Resorts. I have stayed or dined at, or visited, many FAIRMONT-branded properties, including:

   (a)         The Fairmont San Francisco;

   (b)         The Savoy, a Fairmont Managed Hotel, in London;

   (c)          The Plaza, a Fairmont Managed Hotel, in New York;

   (d)         Fairmont Makati, in the Philippines;

   (e)         Fairmont Peace Hotel, in Shanghai;

   (f)          Fairmont Jaipur, in India;

   (g)         Fairmont Monte Carlo;

   (h)         Fairmont Dubai;

   (i)           Fairmont Singapore; and

   (j)          The Fairmont Dallas Hotel.

   In each case I believe I was aware, through visual branding, signage, logos, room amenities and consistency of amenities and facilities, that I was in a FAIRMONT property.

   In my opinion, the Fairmont group has acquired an impressive and enviable reputation in the trade mark FAIRMONT, in Australia and elsewhere in the world, in relation to the services which it offers under the FAIRMONT brand. The services provided by the Fairmont group under the trade mark FAIRMONT, including temporary accommodation and services for providing food and beverages, are a notch above those of its competitors. It takes a special sort of quality to maintain a prestige brand in the manner achieved by the Fairmont group.

   In my professional opinion, many Australians who have travelled internationally, read travel publications or been exposed to media featuring or promoting the FAIRMONT brand, would be aware of the Fairmont group's hotels and resorts and the trade mark FAIRMONT. Even those who have never stayed at one of the group's FAIRMONT-branded properties would likely be familiar to some extent with them and may well have visited them, if only for a meal or a drink or to walk through the lobby. For example, in the same way that travellers often visit the famous 'Tiffany' store in New York only to look in the window, I believe that many international travellers, including Australians, would have heard of the Fairmont group's flagship historic Fairmont Hotel on Nob Hill in San Francisco and would visit the hotel as part of a sightseeing tour of that city or to enjoy a meal or a drink at one of the restaurants or bars at the hotel. To walk down the roadway leading to The Savoy on The Strand is almost an essential activity for those strolling about London and, after the success of the film Crocodile Dundee, New York's The Plaza had a very definite attraction to many Australian travellers.

9. The Second Stiel declaration focusses on the re-branding of the Resort over the years which I have discussed above.

10. The Second Seller declaration discusses alleged confusion between the trade marks of the parties.  Ms Seller states:

    I am aware of a large number of occasions on which consumers and members of the travel industry have been confused into thinking that the hotel owned by the Applicant is part of the Fairmont Group. By way of example, copies of some emails which I received between 18 March 2012 and 5 March 2013 are included in Exhibit GS-2. The number of emails I receive varies at different times but, currently, I am generally receiving around three emails of this kind every month. I do not generally save copies of these emails, rather I regularly delete them.

    Since joining SwissOtel International (Australasia) Pty Limited, I have also regularly received telephone calls from people inquiring about the Applicant's property in Leura. I generally receive around three calls of this kind each week.

11. I note that the emails in evidence referred to by Ms Seller includes emails from those apparently working in the travel industry, a travel agent, an event manager, a Travel Operations & Relationship Manager at American Express and a mistaken request to pay an outstanding commission statement from a travel agent.

Section 60

1. Section 60 of the Act provides:

   60Trade 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.

   Note:For priority date see section 12.

2. In order to found this ground it is incumbent on an opponent to establish both the reputation of its trade mark(s) and the likelihood of deception or confusion.

3. However, before discussing either reputation or the likelihood of deception or confusion I observe that this matter was additionally argued in terms of both sections 44 and 58 where the Applicant’s possible prior use (subsection 44(4)) and ownership of the Trade Mark were also debated.

4. The following questions may thus arise: Setting to one side the clouds[11] over such assertions, could the Applicant’s claims to prior use and ownership of the Trade Mark defeat the Opponent’s allegations under section 60? In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [93] Kenny J said:

   As counsel for McCormick & Co observes, the structure of the Act and the provisions with which this appeal is concerned differ markedly from the 1955 Act. Parts 4 and 5 of the Act relate to separate stages in the registration process. The reasoning that led Mason CJ, Dawson, Toohey and Gaudron JJ to hold that s 28 was subject to s 34 of the 1955 Act does not apply under the new Act. Within Division 2 of Part 4, s 44(1) provides for a ground for rejecting an application before acceptance by the Registrar. Subsection 44(1) expressly states that it is subject to s 44(3), the honest concurrent user provision. The whole of s 44 is expressed as an interlocking series of subsections. Section 60, which is part of a Division specifically setting out the grounds for opposing registration, is directed to the position after acceptance. Section 60 is not expressed to be subject to s 44(3), any analogous limitation, or even the Act generally: contrast s 89(1). On its face, it is a stand-alone provision. Furthermore, s 60 is apparently intended to afford a ground of opposition that is additional to the grounds set out in Part 4. Section 57 expressly states that the grounds of opposition may be "any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4" (which includes s 44). Sections 58 to 62 add further grounds for opposition. On its face, there is no honest concurrent user exception to s 60. [stress added]

   [11] The Applicant’s claims to have continuously used the Trade Mark may be doubtful in the light of its use of the Three Sisters Trade Mark and subsequently the PEPPERS FAIRMONT and then YORK FAIRMONT trade marks during the period 1999 to 2010 (the words ‘Peppers’ and ‘York’ being additions that substantially affect the identity of the trade mark FAIRMONT in terms of subsection 7(1) of the Act).

5. It must follow, in applying the above principle, that if subsection 44(3) does not provide an exception to section 60, then neither does subsection 44(4). Kenny J’s comment which I have stressed, above, indicates that section 60 is also not subject to 58. It is therefore possible for an applicant to show that it is, in effect, the owner of a trade mark via its prior use under subsection 44(4) or via section 58 and yet have it found that the reputation of an opponent’s trade mark is such that the use of the applied-for trade mark would confuse and deceive because of the greater reputation of the opponent’s trade mark. Accordingly, at the very least, the effect of the interaction of sections 60 and subsection 44(4) is such to encourage the early registration of trade marks.

Reputation

1. In McCormick at [81] Kenny J said of reputation:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587; (2000) 50 IPR 1[12] said that the reputation required to be demonstrated was:

one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

[12] Albeit in relation to subparagraph 28(a) of the Trade Marks Act 1955 which, in the circumstances of the matter, required ‘reputation’ to be established.

1. In short, the reputation of a trade mark is to be assessed in the context of the marketplace for the particular goods or services.  Here, the Opponent has shown that there are at least three marketplaces in Australia for its services: one being the general travelling public, another being travel agents and a further being tour organisers.

2. Additionally, in assessing the reputation of a trade mark, the use of the trade mark in overseas countries may be taken into account: Lockhart J stated in Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302; 23 IPR 193 (at 233-4):

   It is no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on. Goods and services are often preceded by their reputation abroad. They may not be physically present in the market of a particular country, but are well known there because of the sophistication of communications which are increasingly less limited by national boundaries, and the frequent travel of residents of many countries for reasons of business, pleasure or study.

3. In McCormick at [85], Kenny J said of the establishment by an opponent of reputation:

   As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 ("Hugo Boss") at 436:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

4. However, Kenny J continued at [86]:

   In 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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. There are a considerable number of Australians who have stayed in the Opponent’s FAIRMONT branded hotels in the United States of America, the United Kingdom, Germany, Bermuda, Barbados, Canada, China, Egypt, India, Kenya, Mexico, Monaco, Philippines, Saudi Arabia, Singapore, South Africa, Switzerland and the United Arab Emirates.  Many more must have been offered the choice of staying in a FAIRMONT branded hotel as a travel option.  Ms Seller’s declarations show that the Opponent has an office in Australia which organises bookings by travel agents, corporate travel arrangers and tour organisers and which, in its turn, organises considerable publicity and promotion of the Opponent’s FAIRMONT branded hotels including, inter alia, Scenic Tours’ extensive television advertising which feature the Opponent’s trade mark.

2. I accordingly consider that the Opponent’s trade mark has sufficient reputation to engage this ground.

Deception or Confusion

1. Although oft discussed as being a single concept, ‘confusion’ and ‘deception’ refer to different mental states.  In Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at page 174 Lord Denning said of the differences between ‘confusion’ and ‘deception’:

   Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.

2. In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423 Richardson J said, in the New Zealand Court of Appeal :

   Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

3. In Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 (the Mickey Mouse case) Rich J, at 454, said of the word 'confusion':

   In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name "Walt Disney" summons up a picture of "Mickey Mouse" and the picture of Mickey Mouse reminds them of "Walt Disney". The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of "Mickey Mouse" with "Walt Disney". This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

4. And the assessment of the likelihood of deception or confusion is informed by the factors discussed by French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50]:

   (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

5. The reports by Ms Seller in the Second Seller declaration of confusion arising from the use of the Trade Mark amongst at least some travel agents and an events organiser are well supported.  It is, in my consideration, telling that deception and confusion arises amongst these travel professionals.  Ms Seller has not documented (for instance by diary entries or another contemporaneous record) her statement that she receives about three telephone calls a week from people seeking to engage the Applicant’s services offered under the Trade Mark however I see no reason to doubt her and I accept it.

6. The services of the parties are both pitched at the premium end of the market.

7. The evidence shows that there are a considerable number of visitors to Australia from the countries in which the Opponent operates its FAIRMONT branded hotels.  The natural expectation of all such visitors to Australia and Australians who have travelled overseas is that an international hotel brand which indicates a hotel operating under the Opponent’s aegis elsewhere in the world, similarly indicates that the Applicant’s resort operates under the aegis of the Opponent.

8. Also telling, in my view, is Mr Cann’s stated reason for adopting the Trade Mark in the first place: he thought that the Trade Mark evoked or called to mind the eponymous hotel in San Francisco.  When the growth of the scale and subsequent reputation of the Opponent’s operations under its FAIRMONT trade mark as at the priority date is considered, in my consideration, a high likelihood of deception or confusion from the concurrent use of the parties’ trade marks was and is inevitable.

9. Accordingly, I accept that the Opponent has established its opposition under section 60 of the Act.

Decision

1. At the filing date of the Trade Mark section 55 relevantly provided:

   55Decision

   (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.

2. I refuse to register trade mark application 1400100.

Costs

1. Having been successful in this matter the Opponent is entitled to its costs which I order against the Applicant at the Official Scale.

Iain Thompson

Hearing Officer

Trade Marks Hearings

6 August 2014

[10] As Mr Cann’s company Fairmont Resort Pty Ltd was incorporated on 10 December 1982, his decision to name the Resort was presumably around that time.