Hilton Hospitality Inc v Waldorf Australia Group Pty Ltd

[2013] ATMO 20

TRADE MARKS ACT 1995

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

Opposition by Hilton Hospitality Inc to registration of trade mark applications 1263729(19) - CANBERRA WALDORF; 1263733(19) - PENNANT HILLS WALDORF; 1263734(19) - ROSEHILL WALDORF; 1277438(19) PERTH WALDORF; 1277441(19) SOUTH SYDNEY WALDORF; 1277443(19) THE ENTRANCE WALDORF - filed in the name of Waldorf Australia Group Pty Ltd.

And

Opposition by Waldorf Australia Group Pty Ltd to extension of protection to international registration designating Australia 1186964(36, 43) (International Registration No. 926493) THE WALDORF=ASTORIA COLLECTION - filed in the name of HLT Domestic IP LLC.

Delegate:	Iain Thompson
Representation:	Hilton: Christian Dimitriadis of Counsel assisted by Shauna Ross of Counsel instructed by Allens WAG: Sophie Goddard of Counsel assisted by Hamish Bevan of Counsel instructed by Spruson & Ferguson
Decision:	2013 ATMO 20 Applications 1263729, 1263733, 1263734, 1277438, 1277441, 1277443: s52 oppositions to registration: s59 – applicant’s intention to use the trade marks in relation to apartment buildings; s60 – confusion arising from reputation of Hilton’s trade marks. Registration refused. IRDA 1186964: Reg 17A.29 opposition to extension of protection: s60 registration refused in relation to real estate services.

Background

1. These matters are proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) and regulation 17A.29 of the Trade Mark Regulations 1995 in which Waldorf Australia Group Pty Ltd (‘WAG’) has made application to register six trade marks (‘the WAG applications’) the registration of which is opposed by Hilton Hospitality Inc (‘HHI’).

2. Also, HLT Domestic IP LLC (‘HLT’) (which is an entity related by common ownership to HHI) has applied for extension of protection of an International Registration Designating Australia (‘IRDA’) and protection of that trade mark is opposed by WAG.  Where necessary, I will collectively refer to HLT and HHI and any related entities as ‘Hilton’. The matters are being considered together as a matter of convenience to the three parties involved and the Registrar.

3. Relevant details of the WAG applications which are each made in respect of ‘Apartment buildings; non-metallic buildings; offices (non-metallic buildings)’ in Class 19 (‘the WAG goods’) are as follows:

Application No:         1263729
Priority Date:             23 September 2008

Trade Mark:               CANBERRA WALDORF

Application No:         1263733
Priority Date:             23 September 2008

Trade Mark:               PENNANT HILLS WALDORF

Application No:         1263734
Priority Date:             23 September 2008

Trade Mark:               ROSEHILL WALDORF

Application No:         1277438
Priority Date:             15 December 2008

Trade Mark:               PERTH WALDORF

Application No:         1277441
Priority Date:             15 December 2008

Trade Mark:               SOUTH SYDNEY WALDORF

Application No:         1277443
Priority Date:             15 December 2008

Trade Mark:               THE ENTRANCE WALDORF

1. I will refer to the above trade marks collectively as the WAG trade marks.

2. Applications 1263729, 1263733 and 1263734 (‘Group A’) were examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks (‘the Journal’) on 22 January 2008.  Applications 1277438, 1277441 and 1277443 (‘Group B’) were similarly examined and advertised in the Journal of 23 April 2009.  HHI filed Notices of Opposition (‘the Notices’) to the registration of Group A on 22 April 2009 and to Group B on 23 July 2009.  The Notices recite identical grounds which include those subsequently argued at the hearing.

3. HTL filed application 1186964, an international registration designating Australia (‘IRDA’), under the Madrid Protocol which was examined in compliance with regulation 17A.12 of the Trade Mark Regulations 1995 (‘the Regulations’) and advertised as accepted for possible extension of protection in the Journal on 29 July 2007.  Details of the IRDA are:

Application No:         1186964
International No:        926493
Priority Date:             21 May 2007
Services:  Class 36: Real estate management; real estate leasing

Class 43: Rental of temporary accommodation; reservations (temporary accommodation); hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings; provision of serviced apartments

Trade Mark:               THE WALDORF=ASTORIA COLLECTION

1. Opposition to extension of protection to an IRDA is governed by the provisions of 17A.29 of the Regulations.

2. On 20 December 2007 WAG filed a Notice which recites grounds of opposition to the extension of protection to the IRDA including those subsequently argued at the hearing.

3. The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 11 February 2013.  Christian Dimitriadis of Counsel assisted by Shauna Ross of Counsel instructed by Allens represented Hilton.  Sophie Goddard of Counsel assisted by Hamish Bevan of Counsel instructed by Spruson & Ferguson represented WAG.

Onus

1. In each of these matters the opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]  The dates at which the grounds of opposition must be established are the dates of filing of the applications for registration or application for extension of protection as the case might be: see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595. For convenience I will take the date of Group 1 of the WAG applications, 23 September 2008, as being the relevant date because reference to the later date of Group 2 does not affect the outcome of these proceedings.

   [1] See 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] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

2. I also consider that it is logical to decide the opposition to the WAG applications before deciding WAG’s opposition to the IRDA as it is HHI here who, in essence, asserts that the confusion and deception alleged in the grounds arise because of its prior rights.

Grounds

1. In its opposition to registration of the WAG applications, HHI relies on grounds under section 44, 58, 59, 60 and 62A. In its opposition to the HTL IRDA, WAG relies on grounds under section 60 and subparagraph 42(b) and seeks leave to amend its Notice and to also rely on section 59.

Evidence

1. The evidence in these matters is voluminous.  The evidence in the opposition to the WAG applications comprises:

   Evidence in support (Hilton)

   (a)Statutory Declaration of Barbara Lee Arnold dated 21 April 2010 (‘Arnold Declaration’) and exhibit BLA 1;

   (b)Statutory Declaration of Jacqueline Ruth O’Brien dated 23 July 2010 (‘O’Brien Declaration’) and exhibit JRO 1;

   Evidence in answer (WAG)

   (c)Statutory Declaration of Avi Rubinstein dated 23 February 2011 (‘Rubinstein Declaration’) and Annexures AR 1 to AR 30;

   Evidence in reply (Hilton)

   (d)Statutory Declaration of Miriam Anne Stiel dated 21 October 2011 (‘Stiel First Declaration’) and Exhibits MNS 1 to MNS 8; and

   (e)Statutory Declaration of Miriam Anne Stiel dated 24 October 2011 (‘Stiel Second Declaration’) and Exhibits MNS 9 to MNS 13.

2. The Hilton evidence in support refers to its use of the trade marks Waldorf=Astoria, Waldorf-Astoria, The Waldorf Towers and the Waldorf.  I will refer to these trade marks collectively as ‘the Waldorf trade marks’.

3. Mr Dimitriadis in his submissions provided a concise history of the use of the Waldorf trade marks by Hilton and its predecessors in relation to hotel services.  He said:

   On 24 March 1893, William Waldorf Astor opened the 13 story hotel called The Waldorf on Fifth Avenue at 33rd Street in New York. Four years later, The Waldorf was joined by the 17 story Astoria Hotel erected on an adjacent site. The corridor built to connect the two buildings became an enduring symbol of the combined Waldorf and Astoria hotels. That corridor is represented by the ‘=‘ in ‘Waldorf=Astoria’.

   In 1929, the hotels were razed to make way for the Empire State Building. A new hotel, called the Waldorf=Astoria Hotel, was built on Park Avenue in the 1930s. In 1949, Hilton Hotels Corporation purchased the Waldorf=Astoria Hotel in New York.

   Since that time, as the evidence indicates, the Waldorf=Astoria Hotel has been very widely publicised and referred to around the world, including in Australia, both by its full name and as often as simply as The Waldorf. As a result, the WALDORF brand is, and was at the priority dates of the WAG Trade Marks, a prominent and widely known brand in relation to hotels and the provision of hotel and accommodation services.

   Over many decades, the Hilton group has become associated with the concept of chains of hotels, being properties that offer similar standards and qualities of service in multiple locations around the world under the same name. In January 2006, Hilton Hotels Corporation announced that it would launch a series of luxury hotels using the trade mark THE WALDORF=ASTORIA COLLECTION, branded after the Waldorf=Astoria Hotel.

   As at the priority dates of the WAG Trade Marks, that luxury hotel chain included hotels in New York, Arizona, California, Hawaii, Saudi Arabia and Italy. As at April 2010, THE WALDORF=ASTORIA COLLECTION of hotels included twenty one properties worldwide and seven properties worldwide that were under development with completion planned in 2010, 2011 or 2013.

4. I will add that within the Waldorf=Astoria hotel in New York there exists a ‘hotel within a hotel’ which is called The Waldorf Towers.

5. Ms Arnold is a Director of Intellectual Property Administration and has been the Director of Intellectual Property Administration for Hilton Worldwide Inc since 7 August 2004.  From 31 May 1995 to 6 August 2004, Ms Arnold was a Senior Paralegal Trademark Administrator for Hilton Worldwide Inc (which was known, prior to 10 December 2009, as Hilton Hotels Corporation).  From 1 September 1993 to 31 May 1995, Ms Arnold was a Paralegal, Licensing & Regulatory Compliance for Hilton Worldwide Inc and has worked continuously in the legal industry for the past 30 years.

6. Exhibited to Ms Arnold’s declaration are the results of a number of searches of Australian publications on the LexisNexis database for occurrences of the word WALDORF in connection with the hotel services provided by Hilton.  The incidences are, to my mind, surprisingly frequent – 82 in the year 2008 in publications such as The Age, the Weekend Australian, the Sydney Morning Herald, the Sunday Telegraph, the Advertiser, the Hobart Mercury and the Daily Telegraph which refer to the hotel both as ‘the Waldorf’ and as ‘the Waldorf-Astoria’ (both with and without the hyphenation) and to the famous eponymous salad which was devised at the hotel.

7. In 2007 there were 49 such articles in the same or similar Australian publications.  In 2006 there were 38, in 2005 there were 41, in 2004 there were 42, in 2003 there were 56, in 2002 there were 81 and so on in reverse chronology until 1991 when 21 such articles were located in the search.  Ms Arnold also provides a Roy Morgan readership estimate for the relevant publications which confirm that those publications are very widely read within Australia.

8. Ms Arnold’s declaration also exhibits excerpts from a number of Australian travel websites dated before 15 December 2008.  Ms Arnold states that these:

   … [include] Luxury Travel, ‘Australia’s only luxury travel magazine’, The Sydney Morning Herald Travel Blog, frequentflyer.com.au and tripadvisor.com.au. Many of these sources refer to the Waldorf=Astoria Hotel as ‘the Waldorf’. I have caused the name of the source, the date of publication and the references to ‘Waldorf’ in these sources to be highlighted. These excerpts were obtained by conducting Google searches for the word ‘Waldorf’, and by reviewing popular travel websites.

9. An extensive range of exhibits showing the use of the Waldorf trade marks in popular culture is also exhibited to Ms Arnold’s declaration.  These include an entry in Wikipedia, references to the hotel in the cinematic films Week-End At the Waldorf, The Out-of-Towners, Coming to America, The Godfather Part III, Scent of a Woman, Analyze This, Serendipity, Catch me if you can, Maid in Manhattan, Birth, The Pink Panther and The Muppet Movie.[2]  References to the Waldorf=Astoria also occur in the video game True Crime: New York City, the novels Everlost by Neal Shusterman and Codex 632: The Secret Identity of Christopher Columbus by Jose Rodrigues dos Santos.  References to the Waldorf trade marks occur repeatedly in the TV series Law and Order, also in the musical Ain’t Misbehavin, and in the ubiquitous Waldorf salad — a salad consisting of apple, walnuts, celery, and mayonnaise or a mayonnaise-based dressing — which was first created in 1896 at the Waldorf in New York by Oscar Tschirky, who was the maitre d’hôtel, and is the same salad that was parodied in the British comedy Fawlty Towers.

   [2] Also the Muppet Show: Statler and Waldorf, a pair of Muppet characters, are named after two New York City hotels, the Statler Hotel (now Hotel Pennsylvania) and the Waldorf-Astoria Hotel.

10. Ms Arnold states that, in 2007, 848 Australian guests stayed in either the Waldorf=Astoria hotel or The Waldorf Towers in New York for an average of approximately 4 nights each.  And, in 2008, 1,227 Australian guests stayed in either the Waldorf=Astoria hotel or The Waldorf Towers for an average of about 4 nights each.  Further, between 14 April 2006 and 29 October 2008 a total of 618 rooms were booked by large Australian groups.  In my consideration it is likely that most of these booking were made from within Australia via travel agents or online booking facilities on the Internet and that such use of the Waldorf trade marks qualifies as Australian use: Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 (‘Sitmar’).

11. Hilton offers a ‘rewards’ scheme to its patrons and between the years 2002 and 2008 the Australian membership of this scheme climbed from 51,976 to 56,987.  The brochures and promotional material sent to its Australian members includes mention of the Waldorf trade marks and the services offered under them.  I note that this reward scheme also embraces hotels other than the Waldorf=Astoria.

12. Ms Arnold also includes in her declaration details of the numbers of Australians who visit the United States and the numbers of Americans who visit or stay in Australia.  There are, according to the Australian Bureau of statistics, 61,715 Americans who consider Australia to be their usual place of residence.  In the year 2007, 670,000 Australians visited the United States and 48.9% of those travelers visited New York city.

13. Ms Arnold also includes in her declaration a listing of 43 occurrences of the word ‘Waldorf’ on its own used in relation to Hilton’s hotel within the articles exhibited to her declaration: these include, for example:

    •       Waldorf guard shot in robbery’, The Australian, 17 November 2008, tab 21, page 16;

    •       ‘Sky’s the Limit’, Weekend Australian, 8 March 2008, tab 21, page 94: ‘Adding to the Waldorf’s skyscraper pedigree’;

    •       ‘G’Day USA rolls out red carpet for corporate chiefs’, The Australian (Australia), 15 February 2008, tab 21, page 122: ‘galleries of the Waldorf ballroom’;

    •       ‘Saying g’day to the old US of A’, The Gold Coast Bulletin (Australia), 30 January 2008, tab 21, page 128: ‘at the famous Oscar’s Bar at the Waldorf with the lovely Lorraine’;

    •       ‘Heath tribute at G’Day ball’, Geelong Advertiser (Australia), 28 January 2008, tab 21, page 146: ‘shared the Waldorf red carpet’... ‘Inside the Waldorfs grand ballroom;

    •       ‘History of a Dish’, Sydney Morning Herald (Australia), 7 November 2006, tab 25, page 4: ‘The Cook Book’ by “Oscar” of the Waldorf, published in 1896 by Oscar Tschirky’;

    •       ‘Hotels head for five-star rating’, Sydney Morning Herald (Australia), 10 June 2006, tab 25, pages 38-39: ‘developers interested in building additional Waldorf hotels’... ‘Hilton is building the Waldorf brand’

14. Ms O’Brien is Hilton’s solicitor and trade mark attorney.  Her declaration supplements the information in Ms Arnold’s declaration which I outlined above.  The material exhibited to Ms O’Brien’s declaration includes:

    ·     A spreadsheet obtained from Hilton’s records detailing the number of visits to the website to which the domain name Waldorfastoria.com resolves, by individuals with Australian and New Zealand Internet Protocol addresses, in each month from June 2007 to March 2010.

    ·     A spreadsheet obtained from Hilton’s records detailing the number of referrals from the Australian and New Zealand versions of Google to Waldorfastoria.com.  This spreadsheet records the number of people that used Google Australia or Google New Zealand to find and browse to the website to which the domain name Waldorfastoria.com resolves.

    ·     A printout of the website to which the domain name Waldorfastoria.com resolves, as at 15 July 2010.

    ·     The 235[3] results of a search (using the search parameters ‘Waldorf Astoria’ and the dates 01/01/1935 to 31/12/1954) of the National Library of Australia database, available at (‘Trove’).  Trove contains, among other things, scans of Australian newspapers published from 1803 to 1954.

    ·     Copies of a sample of the promotional materials sent to Hilton’s rewards scheme members in Australia in 2007 and 2008, arranged in approximately reverse chronological order.

    ·     A copy of a spreadsheet (from which personal information has been redacted) detailing the dates of arrival and dates of departures of guests of the Waldorf=Astoria Hotel that listed their county of origin as Australia, so long as the guest arrived after June 2002 and departed before 15 December 2008.

    [3] I note that this search contains some 20 duplicates which have been omitted from the exhibit.

15. Mr Avi Rubinstein’s declaration which was served and filed as evidence in answer attests to WAG’s use of the word WALDORF within the WAG trade marks.  I will note that there are a number of problems with this declaration, the most significant of which is that it focuses entirely on the services that WAG performs rather than on the WAG goods.  The other problems are various inconsistencies in the usage of drafting terminology, omissions, and spelling, grammar and punctuation errors which at times combine to obscure meaning.

16. In common with Mr Rubinstein’s declaration in the related matter, the declaration seeks confidentiality in the following terms:

    This Statutory Declaration contains confidential information concerning the business, commercial and financial affairs of the Waldorf Group which, if disclosed publicly, would be likely to unreasonably prejudice the commercial position of Waldorf Group. I therefore request under Section 43 of the Freedom of Information Act 1982(cth) that access to my declaration is restricted and that public disclosure of it be withheld and exhibits to my declaration which are confidential.

1. The terms of the request are uncertain and vague with no indication of which particular information is considered to be confidential.  The entire declaration concerns the business, commercial and financial affairs of WAG.  The request therefore seeks an exercise of my own judgment about what WAG might consider to be confidential information – clearly a most difficult and onerous task and an unwelcome distraction.  I have therefore redacted any detail of amounts of expenditure in the passages which I quote below as that is most often regarded as being confidential.  To go beyond that would involve decisions about what is confidential, what is merely sensitive, and what is public information.  Such an exercise is, I consider, impossible and the request, viewed in this manner, is unreasonable and unrealistic.

2. Mr Rubinstein has been a Director of WAG since 11 April 2002.  His declaration adopts the following definitions: Waldorf Astoria Group Pty Ltd (‘WAG’); and, WAG and its related companies (‘Waldorf Group’).

3. Mr Rubinstein states that Waldorf Group:

   Operate[s] a chain of serviced, furnished and unfurnished apartments for short and long term rental in Australia under the trade marks WALDORF, WALDORF APARTMENTS and WALDORF SERVICED APARTMENTS and a variety other trade marks incorporating WALDORF with a geographical indicator such as:

   CANBERRA WALDORF

   PENNANT HILLS WALDORF

   PARRAMATTA WALDORF       (ROSEHILL)

   PERTH WALDORF

   SOUTH SYDNEY WALDORF APARTMENTS

   WOOLLOOMOOLOO WALDORF APARTMENTS

   THE WALDORF SYDNEY

   WAITARA WALDORF APARTMENTS

   DRUMMOYNE WALDORF APARTMENTS

   NORTH PARRAMATTA WALDORF FURNISHED APARTMENTS

   BONDI WALDORF APARTMENTS

   EASTWOOD WALDORF APARTMENTS

   RANDWICK WALDORF SERVICED APARTMENTS

   HORNSBY WALDORF APARTMENTS

   THE ENTRANCE WALDORF

   CARLINGFORD WALDORF SERVICED APARTMENTS

   NORTH SYDNEY WALDORF FURNISHED APARTMENTS

   BLACKTOWN WALDORF APARTMENTS

   And are engaging in the development, construction, refurbishment, sale and management of apartments under these same marks as well as [the trade mark] WALDORF REAL ESTATE

4. I note that the Rosehill[4] Waldorf (application 1263734(19)) is not mentioned amongst the above (nor is its absence explained) although the appearance of the word ‘Rosehill’ in brackets against the words ‘Parramatta Waldorf’ makes it possible that these two references are to the one establishment.

   [4] Mr Rubinstein refers to this establishment elsewhere in his declaration as being the ‘Rose Hill Waldorf’ rather than the ‘Rosehill Waldorf’ as that trade mark appears on application 1263734(19).

5. Mr Rubenstein’s declaration provides a brief history of WAG:

   The business originated in 1981 with the construction of the first building which would become Waldorf Apartments in Liverpool Street, in Sydney’s central business district. The name WALDORF had been part of the name of the construction company Waldorf Constructions Pty Limited (Waldorf Constructions) that constructed and owned the building. After it was built, the building in Liverpool Street was given the name ‘The Waldorf Apartments’. The records of the company do not reveal why WALDORF was chosen as part of the name of the construction company. Annexed and marked “AR 3” is a bundle of photographs of the first Waldorf Apartments building at 57 Liverpool Street, Sydney which were in existence as at or before 23 September 2008, the earliest relevant date in respect to the opposed application.

   [and]

   The first Waldorf building was developed by Waldorf Construction P/L [sic] as a pure real estate development aiming at sale of 100 strata titled residential apartments to the public. The building was completed in early 1980[5] failed to sale [sic] to the public and as a result of this in 1983/4 the company decided to furnished [sic] the apartment [sic] and leased [sic] it as long term and short term furnished accommodation. I joined the company which owned Waldorf Sydney in 1987 as a property manager and one of my projects was to start marketing the re-sale of the apartments to the public in 1990. The apartments were sold to both owners/occupiers and investors with the option of lease back to the manager-Waldorf [sic]. Some owners have resided in the apartment they acquired, some have rented it via external real estate agent and some have rented it via an onsite Waldorf [sic] operation. The total sales and realisation of apartments to the public in early 1990 was about $XX million dollars. Currently only about 30 apartments in the complex are being operated as serviced apartments, the rest are owner occupiers or real estate leasing. Various photos of 57 Liverpool Street, Sydney onsite signage, marketing materials used for promotion of sale of serviced apartments in 57 Liverpool Street, Sydney Waldorf apartments complex as at the relevant dates are attached in “AR 6”.

   [5] I note that the date of 1980 given here does not accord with the date 1981 given in the preceding paragraph.

6. Mr Rubinstein also details the type of operation of each of the WAG properties relevant to the WAG trade marks:

   CANBERRA WALDORF APARTMENTS (Period of operation 1998-2010)

   2 AKUNA STREET, CANBERRA, ACT 2261

   Website:

   In late 1999 a conversion of an office building previously known as Wales Centre located in Civic, Canberra took place which resulted in a conversion to a mixed 10 commercial & 133 apartments complex. The apartments were offered to the public as either Owner Occupier or investment real estate. There was an optional leaseback & management contract with Waldorf Apartments Canberra Pty Limited. I was in charge of the development, leasing and sale process. At the completion of the sale programme Waldorf Group acquired the complex reception, back offices, restaurant & conference facilities for an amount of about $XX million.

   Following intensive marketing campaign all apartments were sold by the end of 2001 to the public. The Waldorf Group via its ACT real estate licensed operation (Licensed number 18400854 and 18400552) which is located in the complex is still continuing the sale of apartments in the complex. As a result of legislative requirements in the ACT Waldorf Group have registered within the ACT the business names “The Waldorf Apartments Canberra — (F00087270) and Waldorf CANBERRA Real Estate (F00115565) & WALDORF ON LONDON (F00095257)

   Currently about 30% of the apartments are owner occupiers and about 50 are managed by Waldorf [sic]. The rest are managed by the owner or external agent. Various photos of the Waldorf Canberra [sic] onsite signage, marketing materials used for promotion of sale of serviced apartments in the Waldorf Canberra [sic] as at the relevant date are attached in APPENDIX “AR 6”.

   PENNANT HILLS WALDORF (OPERATIONAL 2004-2010)

   2 CITY VIEW ROAD, PENNANAT HILLS [sic], NSW, 2261

   Waldorf Apartments, Pennant Hills [sic] complex is composed of 3 commercial units, 40 serviced apartments and 78 residential units. The complex was converted in late 2004 and Waldorf Group commenced an onsite real estate management of the residential units as well as operator of the complex 40 serviced apartments. The serviced apartments were sold subject to a lease back for 3 years to Waldorf [sic] which was as at the relevant dates and is still involved in on [sic] sale of apartments in the complex. Waldorf Group acquired all the commercial units in the complex (Reception, manager apartment, bar, restaurant & conference facilities) and owns a large number of apartments (about 26). The total investment of Waldorf [sic] in the complex was about $XX million. Waldorf Group is also the on-site manager of this building complex. The complex restaurant is being operated by a third party who trade [sic] under his own trade name.

   Waldorf Pennant Hills [sic] onsite signage and marketing materials used for promotion of sale of serviced apartments in the Pennant Hills Waldorf apartments complex as at the relevant dates are attached in APPENDIX “AR 6”.

   [Details of WAG’s operations of the Rosehill Waldorf relevant to trade mark application 1263734(19) ROSEHILL WALDORF are not given although it is elsewhere explained by Mr Rubenstein that this facility is at 110 James Ruse Drive, Rosehill, and that it has a twenty-four hour reception.  I have also noted that the Parramatta Waldorf and the Rosehill Waldorf might be one and the same and accordingly I include the relevant details of the Parramatta Waldorf].

   PARRAMATTA WALDORF APARTMENTS HOTEL (OPERATIONAL PERIOD 2002-21010) [Sic]

   110 JAMES RUSE DRIVE ROSEHILL, NSW 2141

   WEBSITE: Waldorf Parramatta [sic] is a 169 residential & serviced apartments complex which were [sic] established in 2000 and converted to a Waldorf [sic] operation in 2002. Following the conversion of the complex to a residential/serviced apartments complex in 2002 the developer in conjunction with Waldorf Real Estate commenced the sale and leased [sic] back of residential apartments to owners occupiers and investors. Most of the investment apartments were sold subject to a lease back to Waldorf. [sic] The Waldorf Group acquired the onsite reception, offices, restaurant, [and] conference facilities for about $XX million. Waldorf Group has operated since 2002 from this site a serviced apartments operation as well as a real estate management, leasing & sales operation with about 150 apartments under the Waldorf [sic] management. The operation is registered as PARRAMATTA WALDORF APARTMENT HOTEL (BN97887012) & WALDORF REAL ESTATE (BN98106985). Waldorf also provides onsite building management services.

   Photographs of Waldorf Parramatta [sic] onsite signage and marketing materials used for promotion of sale of serviced apartments in the Waldorf Parramatta [sic] as at the relevant dates are attached in APPENDIX “AR 6”.

   PERTH WALDORF SERVICED APARTMENTS (OPERATIONAL 1999-2010)

   MOUNTS BAY ROAD, PERTH, WA 6000

   Website: operation is part of the Mounts Bay village and been operated by the Waldorf Group for the purpose of differentiation between the fully serviced apartments and extended stay furnished & serviced apartments accommodation.

   I have been involved personally in this project since 1996. The Complex is composed of about 400 serviced & residential apartments which were developed in 3 stages.

   Waldorf Group acquired a significant part of the project (reception areas, restaurants, conference facility & apartments) for an amount of $XX million. The Waldorf group [sic] as at the relevant dates was managing 300 apartments in the complex. About 150 as serviced or furnished apartments and the rest as residential leasing of unfurnished apartments under its WA real estate license. Waldorf Group operate [sic] a large onsite real estate agency and it is the main sale agent for real estate in this area of Mounts Bay Village. In addition to its real estate & serviced apartment operations Waldorf [sic] has a long term contract to manage the common property and onsite facilities on behalf of the apartment owners. The largest complexes in the village is the combined Acacia-Waldorf has about 130 apartments and incorporates the reception & conference facilities of the Village. Waldorf [sic] is the on-site manager.

   Waldorf Perth [sic] & Mounts Bay Village onsite signage, marketing materials used for promotion of sale of serviced apartments in Perth Waldorf apartments complex prior to the relevant dates are attached in APPENDIX “AR 6”.

   WALDORF APARTMENTS SOUTH SYDNEY [sic] (OPERATIONAL PERIOD 2001-2010)

   47 Chippen Street, Chippendale, Sydney 2008.

   Website:

   As the project manager I planned, supervised the construction, strata titling, promotion and the sale of 72 serviced apartments in the complex known as Waldorf South Sydney [sic]. The Waldorf Group had the exclusive naming rights to the complex. Following the completion of the project the Waldorf Group acquired the reception, restaurant, laundry as well as additional 4 units for total consideration of about $XXM. Currently about 30% of the units are occupied by owner occupiers, 50% managed by Waldorf Group and about 20% by external real estate agents. Waldorf Apartments Sydney South Pty Ltd operate the onsite management which include building management on behalf of the Owners Corporation.

   Various photos of the Waldorf South Sydney [sic] onsite signage, marketing materials used for promotion of sale of serviced apartments in the South Sydney Waldorf apartments complex as at the relevant dates are attached in APPENDIX “AR 6”.

   THE ENTRANCE WALDORF (OPERATIONAL PERIOD 2004-2010)

   18 CORAL STREET, THE ENTRANCE, NSW 2161

   WEBSITES:

   Waldorf Group in conjunction with the project developer participated in the sale of 56 serviced apartments. 61 residential apartments in that complex that was completed in 2000. [Sic] The serviced apartments were sold subject to a 5 years lease back to the Waldorf Group while the 61 residential unfurnished apartments were sold to owner occupiers or managed by Waldorf Group as a real estate on site management. The Waldorf Group acquired the complex reception, onsite office, restaurant & laundry. The complexes [sic] have an onsite real estate operation which manages lease and sale apartments in the complex trading as Waldorf Real estate [sic]. The Waldorf Group has the naming right of the complex. Various business names have been registered in Australia such as: WALDORF BY THE SEA (BN98143657), WALDORF APARTMENT HOTEL THE ENTRANCE (BN98041884)

   Photos of the Waldorf the Entrance [sic] onsite signage, marketing materials used for promotion of sale of serviced & unfurnished apartments in the [sic] Entrance Waldorf apartments complex as at the relevant dates are attached in APPENDIX “AR 6”

7. Mr Rubinstein also states:

   The Waldorf Group through the relevant operational company is contracted by the Body Corporate of all the buildings they manage to provide onsite management, caretaking and cleaning.

   All the buildings managed by the Waldorf Group in Australia are mainly strata titled units or owned by the Waldorf Group.

8. In her evidence in reply Miriam Stiel states she is the lawyer for Hilton.

9. In her first declaration Ms Stiel references an article by Robert Freestone entitled “Preserving Sydney’s Built Heritage in the Early Twentieth Century”, published in Australian Historical Studies 112 1999, which describes plans in the early 1920s to build a first-class hotel to be part of the Waldorf-Astoria chain in Australia.  Ms Stiel arranged for a search of Trove for references to these plans and found:

   (a)     the prospectus of the Waldorf-Astoria Hotel Company Limited (Australia) dated 1923, a copy of which is now exhibited to me and marked Exhibit ‘MNS-2; and,

   (b)     the articles published in The Sydney Morning Herald in 1923 copies of which are now exhibited to me and marked ‘MNS-3’.

10. Ms Stiel explains that the prospectus and articles describe the proposal to form the Waldorf-Astoria Hotel Company Limited (Australia) to acquire the prestigious Burdekin House site on Macquarie Street in Sydney and erect a palatial hotel. The hotel was intended to be “equal in convenience and comfort to the most modern British, American and Continental institutions of a similar nature”. It was also proposed that the company would build and acquire hotels in other parts of Australia, but the project did not eventuate.

11. Ms Stiel also states:

    I am informed by the Opponent and believe that prior to 23 September 2008, the Opponent’s WALDORF ASTORIA branded properties included:

    •       The Waldorf=Astoria — New York City, New York;

    •       Arizona Biltmore, a Waldorf Astoria Hotel — Phoenix, Arizona;

    •La Quinta Resort & Club, a Waldorf Astoria Resort — La Quinta, California;

    •Grand Wailea Resort Hotel & Spa, a Waldorf Astoria Resort — Maui, Hawaii;

    •Qasr Al Sharq, a Waldorf Astoria Hotel — Jeddah, Saudi Arabia; and

    •       Rome Cavalieri, Waldorf Astoria Hotels and Resorts -- Rome, Italy.

    I am informed by the Opponent and believe that at that time, all but one of these properties offered, as they continue to offer now, short-term and long-term accommodation services including apartment-like atmosphere suites and/or villas equipped with fully-functional kitchens, dining areas and bathrooms.

12. Ms Stiel also gives details of the Internet websites which show listings for Hilton’s Waldorf=Astoria branded properties.  These are:

    (a)     tripadvisor.corn

    (b)     lotsofhotels.com.au;

    (c)     bestrates.com.au;

    (d)    justintimehotels.com;

    (e)     splendia.com;

    (f)     expedia.com;

    (g)     homeaway.com.au;

    (h)     realadventures.com;

    (i)     hotelclub.com

    (j)     lastminute.com

    (k)     rentalo.com;

    (I)     gtahotels.com which automatically resolves to dhr.com;

    (m)    holidayrental.co.uk;

    (n)     vacationhomes.com.;

    (o)     self-cateringbreaks.com; and

    (p)     trivgo.com.

13. Ms Stiel refers to enquiries of the Australian Securities and Investments Commission records and states:

    I have obtained copies of archived documents relating to Waldorf Apartments Hotel Sydney Pty Limited ACN 002 079 165 (formerly known as Waldorf Constructions Pty Limited) (Waldorf Constructions).

    Now exhibited to me and marked ‘MNS-5’ is a copy of the Memorandum of Association of Waldorf Constructions dated 11 March 1981, which was obtained from ASIC’s archives. The Memorandum of Association states that an object for which Waldorf Constructions was established was “to carry on business as proprietors of flats and to let on lease or otherwise apartments therein and to provide for the tenants and occupiers thereof all or any of the conveniences commonly provided in hotels or clubs”. I have caused the relevant page of the Memorandum of Association to be tagged and the relevant passage to be highlighted.

14. In her second declaration Ms Stiel states:

    I am aware from a search of the IP Australia database that the Applicant lodged a trade mark application for WALDORF (application number 994608) on 23 March 2004. That application lapsed on 6 October 2005. Now exhibited to me and marked Exhibit ‘MNS-9’ are copies of the official IP Australia records, available for public inspection, in respect of the Applicant’s trade mark application for WALDORF.

15. Details of that lapsed application are:

Application No:         995608
Priority Date:             23 March 2004
Services:  Class 43: Accommodation

Trade Mark:               waldorf

Section 59

1. Section 59 of the Act provides:

   59Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)to use, or authorise the use of, the trade mark in Australia; or

   (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:For applicant see section 6.

2. HHI argues in relation to this ground that WAG’s evidence shows that it has no intention of using the WAG trade marks in relation to the WAG goods.  WAG argues, in effect, that the evidence shows that in fact it is already using the WAG trade marks in relation to the WAG goods.

3. In Television Food Network, GP v Food Channel Network Pty Ltd (No 2) [2009] FCA 271; (2009) 80 IPR 314; [2009] AIPC 92-339 Collier J said at [95]:[6]

   Legal principles relevant to the application of s59 which I consider relevant to the proceedings before me include the following:

   o the intention described in s59 must exist at the filing date: Nikken Wellness Pty Ltd v Van Voorst [2003] FCA 816;

   o   the intention must relate to the applicant or an authorised user or potential assignee of the applicant;

   o   making an application for registration is prima facie evidence of an intention to use (Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 at 401 per Fullagar J, Kimberly-Clark Worldwide, Inc v Goulimis [2008] FCA 1415; (2008) 78 IPR 612 at [10]);

   o   once a prima facie case of lack of intention is established the evidentiary onus shifts to the trade mark applicant to establish intention (Health World [2008] FCA 100; (2008) 75 IPR 478 at [163] affirmed Health World Limited [2009] FCAFC 14);

   o   provided the intention to use is sufficiently definite, it does not matter that the mark will not be used immediately (cf Re Peddie’s Application (1944) 61 RPC 31 and cases cited in Shanahan at 5.1420);

   o the intention, or lack thereof, to which s59 is directed is a real and definite intention of the applicant for registration, to use the mark publicly as a trade mark, although not necessarily immediately or within a limited time (Health World Ltd [2008] FCA 100 at [163], Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158);

   o   the intention to use must be bona fide (cf s62A of the Act).

   [6] This decision was successfully appealed but not on the basis of these observations.

1. Collier J makes it plain that the principles that she stated were those that applied to the proceedings before her: they are not a statement of all of the principles.  A principle that is unstated but implicit in the above and which must apply in every case is that the prima facie intention to use the trade mark must be, as is stated in section 59, ‘in relation to the goods and/or services specified in the application’.

2. In the appeal against Collier J’s decision, in Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9; (2010) 269 ALR 17; (2010) 86 IPR 437; [2010] AIPC 92-383 (‘Food Channel’) the Full Court said at [72]:

   As has been noted, the filing of an application for registration of a mark is prima facie evidence of an intention to use that mark. Once an opponent has made out a prima facie case that there was a lack of intention to use a mark, it has been held that the onus shifts to the applicant to establish that intention (Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478).

3. However, what of an instance such as here where the filing of the WAG trade marks is prima facie evidence of WAG’s intention to use those trade marks and HHI, the opponent, argues that it is the evidence served and filed by WAG, the applicant, which establishes a prima facie case that it does not intend to use the trade marks in respect of the WAG goods?  In particular, here, where it is HHI’s submission that the WAG trade marks have been used only in relation to services and there is no evidence of use or intention to use the WAG trade marks in relation to goods of any description? Under such circumstances, to what extent can HHI, the opponent, be held to have “made out a prima facie case that there was a lack of intention to use a mark,” in terms of Food Channel, above?

4. I consider that the answer to this question in terms of Food Channel is that HHI may make out its prima facie case as to WAG’s intentions based on any of the evidence which has been served and filed – the evidence of an applicant’s intentions does not have to originate from an opponent.  If this occurs, and the evidence of an applicant’s intentions originates from the applicant itself, there is naturally no transfer of onus.

5. However, if stronger notice to WAG other than the mere recitation of the grounds and reliance on WAG’s own evidence were required, it is likely that it exists in Ms Stiel’s second declaration which brings WAG’s own Articles of Association (‘Articles’) to WAG’s attention: the wording of the Articles focuses entirely on the services, ‘to carry on business as proprietors of flats and to let on lease or otherwise apartments therein and to provide for the tenants and occupiers thereof all or any of the conveniences commonly provided in hotels or clubs’.  There is no mention of goods in the Articles.

6. Mr Dimitriadis argued that the evidence served and filed by WAG clearly shows that WAG uses its trade marks only in relation to services.  I agree with this submission.  WAG does not, in its evidence, refer to anything other than the provision of services relating to the construction or refurbishment and management of apartment buildings and the sale of some strata title apartments within those buildings.  Nor has WAG addressed the allegation implicit in Ms Stiel’s second declaration that it only provides services.

7. The business of WAG appears to follow a particular and forged business model: it acquires or builds apartment buildings, or acquires buildings suitable to be converted to such, renovates or refurbishes them if necessary, sells some strata title apartments to the public, retains some apartments for itself and then provides management services in relation to the apartment building which may contain shops, office space, reception and/or restaurant facilities.  WAG has not suggested in the evidence presently before me that its plans to use the WAG trade marks any differently in the future than it has in the past or that the filing of the WAG trade marks is associated with a proposal to sell goods in the future rather than to register the trade marks corresponding to the establishments it currently possesses.  Indeed, WAG’s evidence and submissions make it plain that it believes that WAG is using the WAG trade marks in relation to goods now whereas the evidence and submissions make it plain that the activities WAG undertakes are only referable to as services.  

8. In its submissions, WAG uses expressions such as, “An essential part of the Applicant’s business, built up over 30 years by the Applicant (and its predecessors), concerns dealings in (including by way of sale, lease, management etc .) of real property being the individual apartments created by the registration of a strata plan in respect of the site where each building is situated” and “advertising, offer for sale, sale and or lease or offer to lease apartments” and “advertising and offer to lease for holiday rentals from third party websites.”  This is illustrative at the least of the difficulties in referring to WAG’s activities as being anything other than services.

9. On this basis, it is apparent that WAG has no intention to use the WAG trade marks in relation to goods.

10. Moreover, I also note that WAG does not sell apartment buildings: it sells some strata title apartments within such buildings.  While there is some room for the argument that WAG only sells the airspace contained within the six boundaries of strata title apartments, and could only ever do so, that debate does not have to be entered into here.  What is pertinent is that the evidence shows that WAG sells only apartments within buildings, rather than the buildings themselves and when challenged with HHI’s evidence of WAG’s Articles has not responded with further evidence which shows its intentions to use the WAG trade marks in relation to the sale of the apartment buildings themselves in the future.

11. Looked at another way: if WAG has, as it apparently claims to, sold an apartment building called (for example) CANBERRA WALDORF, one would conclude that it should no longer have a building for sale which carries the trade mark CANBERRA WALDORF.  It should thus be impossible for WAG to use the trade mark CANBERRA WALDORF in the future unless it builds a further apartment building called CANBERRA WALDORF; however, none of the apartment buildings in which WAG has been involved carry duplicate names and there is no suggestion in WAG’s evidence that it might have had, at the priority date, plans to build further apartment buildings using the WAG trade marks in relation to those buildings.  Thus, WAG’s claims to be using the trade marks in relation to goods appear to have a ‘magic pudding’ quality about them: no matter how many apartments in the self-same buildings it sells, the supply of apartments to sell from within those buildings never dwindles.  However, without the physical creation of more goods this inexhaustible supply of ‘vendibles’ is impossible in relation to goods and is only possible in relation to services.

12. I find that HHI’s ground under section 59 has been established.

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. The onus under section 60 is on HHI to establish that the trade mark(s) it relies on has or have a reputation in Australia and, because of that reputation the use of the WAG trade marks would deceive or cause confusion.

3. In McCormick & Company Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, (‘McCormick’) Kenny J said, at [81]-[82]:

   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 s60, 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?

4. In McCormick, Kenny J discussed two ways in which the reputation of a trade mark can be assessed.  At [85] Her Honour quoted my observation in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 at page 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.

5. Kenny J next discussed the second and more usual way of assessing reputation in McCormick 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 8 of the 1955 Act existed.

6. The question here is how to assess the reputation of the trade marks on which HHI relies when the services are performed in New York, there is evidence of some sales in Australia, there is no direct evidence in the way of figures of a high volume of either sales or of substantial advertising expenditures in Australia and much of the alleged reputation of those trade marks is ‘spill-over’ reputation from that overseas use and reputation.

7. In ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302; 106 ALR 465; (1992) 23 IPR 193; [1992] AIPC 90-892; [1992] ATPR (Digest) 46-095; [1992] ASC 56-159 the Full Court stated at [115]:

   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. Modern mass advertising through television (which reaches by satellite every corner of the globe instantaneously), radio, newspapers and magazines, reaches people in many countries of the world. The international mobility of the world population increasingly brings human beings, and therefore potential consumers of goods and services, closer together and engenders an increasing and more instantaneous awareness of international commodities. This is an age of enormous commercial enterprises, some with budgets larger than sovereign states, who advertise their products by sophisticated means involving huge financial outlay. 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.

8. The Full Court concluded at [117]-[118]:

   The requirement in some of the cases that a very slight form of business activity is sufficient is really a somewhat artificial concept. The real question is whether the owner of the goods has established a sufficient reputation with respect to his goods within the particular country in order to acquire a sufficient level of consumer knowledge of the product and attraction for it to provide custom which, if lost, would likely to result in damage to him. This is essentially a question of fact.

   As I outlined in more detail earlier, it is still necessary for a plaintiff to establish that his goods have the requisite reputation in the particular jurisdiction, that there is a likelihood of deception among consumers and a likelihood of damage to his reputation. But reputation 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. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner (see for example C and A Modes, Orkin and Midas).

9. And in Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 Gummow J said at [56]:

   Thus, whilst the course of trade involved the provision of the services contracted for by steps taken outside Australia (i.e. the cruise itself) crucial integers in that course of trade took place in Australia. The trade commenced with the various steps taken to encourage inquiries from prospective customers and advanced with the placing and acceptance of bookings. In relation to that course of trade, the marks “Fun Ship” and “Fun Ships” were used so as to indicate the connexion between Carnival and the services to be provided by means of its cruises, and to distinguish Carnival Cruises from those operated by other traders: Mark Foy’s Limited v Davies Coop and Co. Ltd [1956] HCA 41; (1956) 95 CLR 190 at 205. Accordingly, in my view, before the dates of the relevant applications by Sitmar, there had been public use in Australia of “Fun Ship” and “Fun Ships” as trade marks so as to confer upon Carnival the statutory status of “proprietor” of those trade marks, within the sense of the High Court authorities to which I have referred. Thus, I would not accept the first of the three submissions by Sitmar on the proprietorship issue.

10. Accordingly, the evidence of Hilton’s bookings of its services from Australia by Australians and the existence in Australia of its loyalty club members must, I consider, be accepted as giving force to HHI’s argument that the Waldorf trade marks have a strong reputation in Australia.  In addition, the large volume of Australian newspaper articles, magazine articles, promotional material on the Internet on the websites of travel agents are also the result of, and in themselves contribute to, the reputation of the trade marks on which HHI relies in Australia.  A journalist writing for a newspaper or magazine is not going to write about a topic in which nobody is interested and one reason why so many people might be interested in articles written about the Waldorf or the Waldorf=Astoria is because they already know of the words Waldorf or Waldorf=Astoria and their association with the provision of Hilton’s prestige hotel services.

11. There are, also, large numbers of Australians who visit the USA and nearly 50% of these people visit New York.  In addition, a substantial number of Americans either visit Australia or identify Australia as their country of domicile.

12. It would be difficult to conclude other than that the trade mark WALDORF=ASTORIA has a strong reputation in Australia. 

13. I am accordingly satisfied by the evidence on which HHI relies that its trade mark WALDORF=ASTORIA has a reputation in Australia and it is associated with prestige hotel services delivered in New York.

14. Consideration of whether the use of a trade mark would confuse or deceive are informed by the factors discussed 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] by French J. With suitable redaction of the words ‘deceptive similarity’ which are not contained within section 60, French J said:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (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.”

1. In respect of item (v), above, I consider that the expression ‘apartment buildings’ within the WAG goods includes apartment buildings which function in much the same manner as hotels, with reception and booking facilities, restaurant, a maid service and so forth.  While WAG has attempted in its evidence and submissions to distinguish between its apartment buildings and hotels, I consider that this distinction is artificial and is not one made by the public – some hotels offer suites (as does Hilton) which are similar to those in the apartment buildings offered by WAG.  The distinction appears to elude WAG itself at times in spite of its protests to the contrary: I note that WAG’s website at offers ‘Weekly service (inclusive of linen & towel change) in our serviced apartments, daily optional service in our apartment hotels.’  This information appears under a ‘tab’ marked ‘Waldorf Apartment Hotel Sydney, Perth, Canberra and Central Coast Accommodation Features, Facilities and Inclusions’.  Further, the artificiality of the distinction appears to be confirmed within WAG’s Articles: ‘to carry on business as proprietors of flats and to let on lease or otherwise apartments therein and to provide for the tenants and occupiers thereof all or any of the conveniences commonly provided in hotels or clubs’.

2. Additionally, while it is difficult in view of WAG’s evidence and my conclusions under the section 59 ground to confine attention only to WAG’s goods, it follows that the expression ‘apartment buildings’, if referring strictly to goods, includes apartment buildings which are built to function as, or as parts of, hotels, serviced apartments which function like hotels and the like. I am, after all, to consider WAG’s goods as specified at their widest.

3. The evidence shows that the trade mark WALDORF=ASTORIA is commonly shortened to ‘the WALDORF’ – by both Hilton and by members of the public.  I note that this familiarity of reference to ‘the Waldorf’ on the part of the Australian public in itself constitutes an implicit acknowledgment of the reputation of the trade mark WALDORF=ASTORIA because a trade mark will only be so shortened if it is understood that the audience will immediately comprehend what is being referred to.

4. I consider that it is inevitable that a person who first contemplates the purchase of an apartment carrying the trade mark, for example, CANBERRA WALDORF will be caused to wonder if, or conclude that, there is some connection between the services offered under the trade mark WALDORF=ASTORIA and the WAG goods being considered by that person.  In my consideration, the evidence shows that there is so strong an association or connection between the word ‘WALDORF’ and the services of Hilton in the minds of the Australian public that such an assumption or speculation is nigh on unavoidable.

5. This misapprehension is somewhat less likely, in my estimation, to persist through to the purchase of the WAG goods.  It is doubtful, I consider, that a person engaging in the purchase of goods that are of the expense of an apartment or apartment building (as is specified in the WAG goods) would not soon discover that, in fact, there is no connection between the WAG goods and Hilton’s services offered under its trade mark.  However, in Taco Co. (Aust) Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 Deane and Fitzgerald JJ said (of the higher standard ‘mislead or deceive’)[7] at page 199:

   It is, in the circumstances, unnecessary that we form or express any concluded view on the question whether it is a principle of the law of passing-off that deception must continue, or be likely to continue, to the “point of sale”. As a matter of principle and of logic, it is difficult to see why it should be. For the purposes of the present appeal, it suffices to say that, even if such a limitation should be recognized in the law of passing-off, we see no ground for importing it into the provisions of s 52 of the Act. In our view, it is sufficient to enliven s 52 that the conduct, in the circumstances, answers the statutory description, that is to say, that it is misleading or deceptive or is likely to mislead or deceive. It is unnecessary to go further and establish that any actual or potential consumer has taken or is likely to take any positive step in consequence of the misleading or deception. That is not to say that evidence of actual misleading or deception at the point of sale and of steps taken in consequence thereof is not likely to be both relevant and important on the question whether the relevant conduct in fact answers the statutory description and as to the relief, if any, which should be granted.

   [7] Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited [1982] HCA 44; (1982) 42 A.L.R. 1 per Gibbs C.J. (at page 6)

6. It is possible that this assumption on the part of a potential purchaser of the WAG goods would be a species of confusion, rather than of deception.  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.

7. As explained in Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423, by Richardson J, 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.

8. And in Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 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.

9. I am satisfied that such is the case here.

10. Accordingly HHI has established its ground under section 60 to the registration of WAG trade marks.

HTL Application 1186964: THE WALDORF=ASTORIA COLLECTION

1. In its opposition to the registration of what I will term the Collection trade mark, WAG relies on grounds under sections 60 and 42(b) and has sought to rely on section 59 which was not included in the Notice of Opposition to the registration of the Collection trade mark.

2. To the extent that the subparagraph 42(b) ground is based on alleged reputation in the WAG trade marks, if the ground under section 60 is not established, it follows that the ground under subparagraph 42(b) cannot be established: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191; (1982) 42 ALR 1; (1982) 56 ALJR 715; [1982] ATPR 40-307; (1982) 1a IPR 684; 1 TPR 282

   In McWilliam's Wines Pty. Ltd. v. McDonalds System of Australia Pty. Ltd [1980] FCA 159; (1980) 49 FLR 455; 33 ALR 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. [1953] HCA 73; (1954) 91 CLR 592 , a decision on the Trade Marks Act 1905 (Cth), as amended, is distinguishable. I need not add to what their Honours said on this subject (1980) 49 FLR, at pp 458-459, 475-476; 33 ALR, at pp 397-398, 412-413. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive (1980) 49 FLR, at pp 461, 476-477; 33 ALR, at pp 399-400, 413-414.

3. Accordingly, there is no reason to consider the ground under subparagraph 42(b).

4. Further, at the hearing of the matter I directed the parties that if I were to allow WAG to rely on the section 59 ground it would be appropriate to adjourn proceedings in order that HTL be afforded the opportunity to file further evidence in response to the allegation of lack of intention to use the Collection trade mark. WAG then withdrew its application to amend the Notice.

5. I will state that my reasons for so directing were that WAG’s reliance on section 59 became apparent only when it filed its written submissions in support of its opposition to the registration of the Collection trade mark one week before the hearing of the matter. I consider that in order to establish a section 59 ground WAG must:

• Nominate the grounds in the Notice of Opposition and

• Rely on evidence that HTL or Hilton does not intend to use the trade mark

• Which is brought to HTL’s attention

• Such that HTL may either respond to the allegation or that an adverse inference may be drawn as to its silence on the issue.

1. HLT was not alerted in the Notice of Opposition that section 59 was a ground of opposition and accordingly did not frame its evidence with section 59 in mind as a ground which could be argued at the hearing.

2. Further, and more tellingly, HTL has had no opportunity to respond to this allegation – in the circumstances of this matter, this opportunity is essential if the ground is to be established.  Further, to allow WAG to rely on this ground would lack in natural justice and procedural fairness.

3. I observe, moreover, that the ground under section 59 sought to be included by WAG is mistakenly predicated on the fact that Hilton does not have a hotel property in Australia in respect of which the Collection trade mark is used. However, it is not a prerequisite for the Collection trade mark to be used or intended to be used in relation to a hotel in Australia: see Sitmar.  Bookings can be made from within Australia for reservations at any of Hilton’s hotel properties in relation to which the Collection trade mark is used.  Thus if the ground had been argued, it could not have been established.

Evidence

1. The parties have served and filed the following evidence in relation to WAG’s opposition to the registration of the Collection trade mark.  This comprises:

   Evidence in support (WAG)

   (a)     Statutory Declaration of Mr Avi Rubinstein dated 23 December      2010

   (‘Rubenstein First Declaration’);

   Evidence in answer (HLT)

   (b)     Statutory Declaration of Barbara Lee Arnold dated 25 October       2011;

   (‘Arnold Declaration’)

   (c)     Statutory Declaration of Miriam Anne Stiel dated 22 December      2011

   (‘Stiel Declaration’);

   Evidence in reply (WAG)

   (a)     Statutory Declaration of Mr Avi Rubinstein dated 3 August 2012

   (‘Rubenstein Second Declaration’).

2. Mr Rubinstein’s First Declaration in large part recapitulates the evidence given in answer to the opposition to the registration of the WAG trade marks.

3. Ms Arnold’s declaration also, in essence, recapitulates the evidence given in support of the opposition to the WAG trade marks.

4. Ms Stiel’s in her declaration gives the results of her research into WAG’s mode of operation as an accommodation provider.

Section 60

1. For ease of reference, I repeat the provisions of section 60:

   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 terms of McCormick, above, the assessment of reputation of the trade marks on which WAG relies is problematical. While Ms Goddard made it clear in her submissions that WAG claims reputation for its trade marks WALDORF and WALDORF APARTMENTS, the situation is more complex as WAG also uses the word WALDORF with a large number of geographical indicators. The evidence shows either that these geographical indicators are used both before and after the word WALDORF or that Mr Rubinstein believes that they are so used. Accordingly, there are a host of trade marks used by WAG which include the word ‘Waldorf’ but it is not clear to me whether this should, in fact, lead to a diffusion of any reputation which may reside in them either singly or collectively. Subsection 7(1) of the Act provides:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

3. The geographical indicators and the word ‘apartments’ are alterations or additions which do not affect the identity of the trade mark ‘Waldorf’ and it might be concluded that viewed in that light the WAG trade marks are all one and the same.

4. However, any focus on the word ‘Waldorf’ which involves the reputation of that word as a trade mark in relation to the provision of accommodation immediately gives rise to questions concerning the reputation of that trade mark in relation to Hilton’s services.  There is force in the observation that the disparity between the reputations of the trade mark WALDORF as used by both parties is such that any confusion which is claimed to arise in relation to the use of that trade mark in relation to the provision of accommodation services might do so because of WAG’s use of the trade mark which has the lesser reputation. In my consideration that observation is of such force that WAG cannot establish its opposition to registration of the Collection trade mark in relation to accommodation services as I cannot be satisfied that, to paraphrase section 60, because of the reputation of the WAG trade marks, the use of the Collection trade mark would be likely to deceive or cause confusion.

5. Accordingly, WAG has not established its opposition to registration of the Collection trade mark in relation to accommodation services.

6. However, in my consideration, WAG has established that the trade marks on which it relies have a reputation in relation to real estate sales, management and leasing services and that Hilton’s use of the Collection trade mark in relation to those services in Australia would give rise to deception or confusion.

7. Accordingly, WAG has established its opposition under section 60.

Decision in relation to WAG trade marks

1. Subsection 55(1) of the Act provides:

   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. As HHI has established its oppositions under sections 59 and 60, I refuse to register trade mark applications 1263729(19) - CANBERRA WALDORF; 1263733(19) - PENNANT HILLS WALDORF; 1263734(19) - ROSEHILL WALDORF; 1277438(19) PERTH WALDORF; 1277441(19) SOUTH SYDNEY WALDORF; and, 1277443(19) THE ENTRANCE WALDORF.

Decision in relation to Collection trade mark

1. Regulation 17A.34 provides:

17A.34Decision on opposition

(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

(2)The Registrar must tell the International Bureau of his or her decision.

1. I refuse to extend protection to application 1186964.

2. However, the holder may apply within three weeks of this decision to delete the Class 36 claim, ‘Real estate management; real estate leasing’ from its specification of services.  If the application is so amended, protection should be extended to the remaining services.

Costs

1. Each party has had success and is entitled to its costs in relation to the proceedings in which they have succeeded.  HHI may claim its costs appropriately apportioned between each of the WAG applications.

Iain Thompson
Hearing Officer
Trade Marks Hearings
22 March 2013