Hilton Worldwide Inc v Waldorf Australia Group Pty Ltd
[2018] ATMO 86
•31 May 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Hilton Worldwide, Inc to registration of trade mark applications 1249768, 1550830, 1638440, 1638711 - WALDORF APARTMENTS - filed in the name of Waldorf Australia Group Pty Limited.
Delegate: | Cristy Condon |
Representation: | Opponent Miriam Stiel, Kimberley Evans and Julia Kovarsky of Allens Patent and Trade Mark Attorneys Applicant David Studdy of Counsel instructed by Philip Macken, Halfords IP |
Decision: | 2018 ATMO 86 Trade Marks Act 1995 - Section 52 – oppositions to registration: ss 44, 58, 60, 42(b) and 62A pressed - s60 discussed – confusion arising from reputation of Opponent’s trade marks. Registration of all trade marks listed above refused. |
Background
Waldorf Australia Group Pty Ltd (‘the Applicant’) has filed for the registration of four trade marks (‘the WAG applications’).
Relevant details of the WAG applications, all for the trade mark ‘WALDORF APARTMENTS’, are set out below.
Trade mark application no: 1249768
Filing Date: 3 July 2008
Acceptance Advertised: 3 July 2014
Specification: Class 37: Property development services; building of apartment buildings; apartment refurbishment services
Divisionals: 1629709 1638440 1638711
Trade mark application no: 1550830
Filing Date: 10 April 2013
Acceptance Advertised: 1 August 2013
Specification: Class 19: Non-metallic structures and buildings; non-metallic apartments; non-metallic studio apartments
Trade mark application no: 1638440
Filing Date: 1 August 2014
Divisional Date 3 July 2008 (Divisional Number: 1249768 details above)
Acceptance Advertised: 28 August 2014
Specification: Class 35: Business management and administration of apartments, serviced apartments and other temporary accommodation; advertising and marketing services in relation to temporary accommodation including apartments and serviced apartments
Trade mark application no: 1638711
Filing Date: 4 August 2014
Divisional Date 3 July 2008 (Divisional Number: 1249768 details above)
Acceptance Advertised: 28 August 2014
Specification: Class 36: Real estate affairs including: leasing of long term accommodation including apartments, serviced apartments and car park spaces; management of real estate including apartment buildings, apartments (serviced and unserviced) and car parks; administration of real estate; real estate advisory services; real estate sales and leasing services; provision of long-term accommodation; none of the foregoing being short-term accommodation, temporary accommodation or timeshare services
(Collectively ‘the Applicant’s Trade Marks’)
Acceptance of the WAG applications for possible registration was advertised in the Australian Official Journal of Trade Marks[1].
[1] See the table in [2] above for the respective dates.
Subsequently, and within the respective timeframes allowed for each of the WAG applications, Hilton Worldwide, Inc. (‘the Opponent’) filed the Notices of Intention to Oppose the registration of the WAG applications followed by the Statements of Grounds and Particulars (‘SGPs’). The four SGPs nominate the same grounds of opposition available under sections 44, 58, 60, 42(b) and 62A of the Act. The Applicant then filed the respective Notices of Intention to Defend. Thereafter the Opponent and Applicant filed evidence in respect of each of the WAG applications in accordance with the provisions of the Trade Mark Regulations 1995.
On 6 November 2017 I sent an email to the parties confirming, as per their request, that the four opposition matters would be heard together in one hearing on 24 January 2018.[2]
[2] The parties also requested that these opposition matters be heard together in Sydney.
The parties filed written submissions prior to the oral hearing.
The matters came before me, a delegate of the Registrar of Trade Marks on the scheduled day in Sydney. The Opponent was represented by Miriam Stiel, Kimberley Evans and Julia Kovarsky of Allens Patent and Trade Mark Attorneys. The Applicant was represented by David Studdy of Counsel and instructed by Philip Macken of Halfords IP.
Also present at the hearing was Avi Rubenstein, a representative of Waldorf Australia. He observed the proceedings.
Grounds of Opposition and Onus
All of the grounds of opposition nominated in each of the four SGPs were pursued at the hearing.
The Opponent bears the burden to establish one or more of its grounds of opposition on the balance of probabilities.[3] Should the Opponent establish one ground of opposition in relation to all the WAG applications and all of the respective goods and services, there is no requirement for me to consider the other grounds of opposition.
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133]. Where the full bench of the Federal Court affirmed the approach in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].
The date at which the rights of the parties are to be determined is not the same in all four opposition matters. In the case of the oppositions to trade mark application numbers 1249768, 1638440 and 1638771 the relevant date is 3 July 2008. This is because trade mark applications numbers 1638440 and 1638771 are valid divisional applications which derive from trade mark application number 1249768. In the case of the opposition to trade mark application number 1550830 the relevant date is 10 April 2013.
Evidence
In accordance with the timeframes allowed the parties have filed the following evidence:
Opposition to trade mark application number 1249768:
Evidence in Support
Statutory Declaration of Christian Eriksen dated 2 February 2015 together with Exhibit CE-1 (‘Eriksen 1’);
Evidence in Answer
Declaration of Philip James Macken dated 14 June 2016 together with Annexures PM-1 to PM-6 (‘Macken 1’);
Evidence in Reply
Statutory Declaration of Christian Eriksen dated 2 September 2016 together with Exhibit CE-2 to Confidential Exhibit CE-3 (‘Eriksen 2’).
Opposition to trade mark application number 1550830:
Evidence in Support
Statutory Declaration of Christian Eriksen dated 12 March 2014 together with Exhibit CE-1 (‘Eriksen 3’);
Statutory Declaration of Miriam Anne Stiel dated 13 March 2014 together with Exhibit MS-1 (‘Stiel 1’)
Evidence in Answer
Declaration of Avi Rubinstein dated 18 June 2014 together with Annexures AR 1 to AR 26 (‘Rubinstein 1’)
Declaration of George Falzon dated 18 June 2014 together with Annexures GF 1 to GF 2 (‘Falzon 1’)
Declaration of Robert Pullen dated 18 June 2014 together with Annexures RP 1 to RP 5 (‘Pullen 1’);
Declaration of Basil Jacob Klevansky dated 17 June 2014 (‘Klevansky’)
Declaration of Eleni Demos dated 17 June 2014 together with Annexures ED 1 to ED 3 (‘Demos’)
Declaration of Joanne Finch dated 17 June 2014 (‘Finch’)
Declaration of Johanna Peterson dated 18 June 2014 (‘Peterson’)
Declaration of John Tognolini dated 17 June 2014 (‘Tognolini’)
Declaration of Mark Higgins dated 17 June 2014 together with Annexures MH 1 to MH 2; (‘Higgins’)
Statutory Declaration of Mark Tindale dated 18 June 2014 (‘Tindale’)
Statutory Declaration of Robert Farrell dated 16 June 2014 (‘Farrell’)
Declaration of Sabine Massberg dated 17 June 2014 (‘Massberg’)
Declaration of Sidney Charles Knell dated 17 June 2014 (‘Knell’)
Evidence in Reply
Statutory Declaration of Miriam Anne Stiel dated 25 August 2014 together with Exhibit MS-2 (‘Stiel 2’).
Opposition to trade mark application numbers 1638440 and 1638711
Evidence in Support
Declaration of Christian Eriksen dated 13 June 2016 and Exhibit CE-1 (‘Eriksen 4’)
Evidence in Answer
Declaration of Philip James Macken dated 5 October 2016 together with Annexures PM1-PM 4 (‘Macken 2’)
Evidence in Reply
Declaration of Christian Eriksen dated 11 December 2016 together with Exhibit CE-2 to Confidential Exhibit CE-3 (‘Eriksen 5’).
Preliminary Matters
In relation to the voluminous amount of evidence filed in these matters, one issue that came up during the hearing was: that because there were a number of opposition matters proceeding, some running parallel and some with different timeframes, there is a substantial amount of evidence to consider and both parties have taken the approach that the evidence filed in all four opposition matters applies to all four trade mark opposition matters. That said, at the request of the Opponent (and with no objection from the Applicant) and noting the highly similar evidence filed for each WAG application[4], I gave a direction at the start of the hearing that the evidence filed in respect of each matter applied across all four of the opposition matters.
[4] For example: the Eriksen declarations for each of the WAG applications are repetitive to the extent they highly similar - bar the relevant trade mark number.
It is also apparent that the Opponent and the Applicant have been involved in trade mark disputes previously and that these current matters have been protracted for various reasons including two cooling off periods in which the parties were trying to negotiate a settlement. I also note that the Registrar’s delegate decided a number of matters between the Applicant and Hilton Hospitality Inc in 2013 and I note that I am not bound by this earlier decision.[5]
Discussion
[5] Hilton Hospitality Inc v Waldorf Australia Group Pty Ltd [2013] ATMO 20 (22 March 2013) (‘Hilton v WAG’).
Section 60 – Reputation in Australia
Section 60 of the Act provides:
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
To establish the ground of opposition under section 60 the Opponent is relying on its reputation in the ‘WALDORF’ trade mark, as well as the following trade marks registered in Australia: ‘WALDORF ASTORIA INTERNATIONAL’, ‘THE WALDORF=ASTORIA COLLECTION’ and ‘WALDORF ASTORIA’[6] (collectively ‘the Opponent’s Waldorf trade marks’)[7].
[6] I note that these trade marks are in the name of Hilton Worldwide Holding LLP.
[7] See 315649 WALDORF ASTORIA INTERNATIONAL, registered 2 October 1980
(class 42); 1186964 THE WALDORF=ASTORIA COLLECTION, registered 21 May 2007 (class 43); 1528871 WALDORF ASTORIA, registered 30 November 2012 (classes 41, 43 and 44); 1671720 WALDORF ASTORIA, under examination – deferred (classes 35, 36).
Unlike section 44 of the Act, section 60 does not require that the goods and services upon which an opponent uses its trade marks be of a similar nature to an applicant’s goods or services, nor is there a requirement that an opponent’s trade marks be substantially identical or deceptively similar to those an applicant is seeking registration for.
In the matters before me I need to decide whether the Opponent has established that before 3 July 2008 (or in the case of Trade Mark registration number 1550830 - 10 April 2013) whether any of the Opponent’s trade marks were recognised by the relevant market, or at least by a significant number of the Australian population and whether because of that, use of the Applicant’s Trade Marks would be likely to cause confusion.[8]
[8] Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.
In my opinion the relevant market in this case is the Australian population.
French J in Registrar of Trade Marks v Woolworths[9] explained the principles relevant to the assessment of the likelihood of confusion. His Honour said:
(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 of deceptive similarity 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:[10]
“...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.”
[9] [1999] FCA 1020 [50].
[10] [1973] HCA 43; (1973) 129 CLR 353, 362.
It is also well established that the kind of confusion contemplated by section 60 need not lead to the actual purchase of the goods or services covered by the opposed trade mark. As Heerey J said in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd[11]:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[12]
[11] [1997] FCA 623.
[12] Heerey J was citing Re Hacks Application (1940) RPC 9 at 103-104.
In McCormick & Co Inc v McCormick[13], Kenny J set out the test for assessing reputation. Her Honour said:
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?
[13] [2000] FCA 1335 [81].
Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[14]The nature of the goods and services will also influence the assessment of what will constitute a ‘significant’ or ‘substantial’ reputation. Specialised products will require less awareness among the Australian population but products commonly found on supermarket shelves will require a much greater awareness among the Australian population.[15]
[14] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <
[15] Le Cordon Bleu BV v Cordon Bleu International Ltee [1979] RPC 410, 423 (citations omitted).
The Opponent’s Evidence
Mr Eriksen is an attorney and counsel, Brands and Intellectual Property, of Park Hotels & Resorts, Inc. formerly known as Hilton Worldwide, Inc. and he has held this position since August 2012. Prior to this time Mr Eriksen was in private practice and he specialised in intellectual property law and litigation. In 2009 Mr Eriksen’s client base included Hilton Worldwide, Inc.[16] He has provided five declarations in relation to the matters before me which contain substantially similar evidence.
[16] See for example Eriksen 4.
According to Mr Eriksen,
The WALDORF ASTORIA brand has developed an association of some of the best known luxury hotels and resorts in highly desirable locations around the world. The following hotels and resorts were marked WALDORF ASTORIA as at 3 July 2008.
Arizona Biltmore, a WALDORF ASTORIA Hotel
Grand Wailea, a WALDORF=ASTORIA COLLECTION hotel
La Quinta Resort 7 Club, a WALDORF=ASTORIA COLLECTION hotel
Waldorf Astoria New York
The evidence also shows that since this time the Opponent has branded many more luxury hotel and resorts throughout the world with one of the Opponent’s Waldorf trade marks.
Going to the fame and notoriety of the Opponent’s Waldorf trade marks are exhibits to the Eriksen declarations which contain the results of a number of searches for Australian publications appearing on many databases including: the Trove database, the Westlaw database and the LexisNexis database for occurrences of the word ‘WALDORF’ in connection with the hotel services provided by the Opponent. These occurrences are notable and there are many. The incidences which refer to the Opponent’s New York hotel refer to the hotel both as ‘the Waldorf’ and as ‘the Waldorf Astoria’ (both with and without the ‘equal’ sign) and to the acclaimed ‘Waldorf salad’ named after the Opponent’s New York Waldorf Astoria hotel where Oscar Tschirky, who was the maitre d’hôtel, apparently devised the recipe at the hotel.
Australian publications such as the Weekend Australian, the Sydney Morning Herald, the Sunday Telegraph, Daily Telegraph, The Age, the Advertiser and the Sunday Mail are some examples of publications that have mentioned the Opponent and or the Hilton Group. In my opinion these publications are well known to the Australian public and exhibited to Eriksen is also a copy of a Roy Morgan Readership estimate for 1 January 2001 to December 2007 which confirms these publications are frequently and widely read by members of the Australian population.
Also exhibited to the Eriksen declarations are excerpts from a number of Australian travel websites and or magazines dated before 21 May 2007 and include: Luxury Travel, ‘Australia’s only luxury travel magazine’; frequentflyer.com.au and tripadvisor.com.au. I note that many of these sites refer to the Waldorf Astoria hotel as ‘the Waldorf’. In addition to this there are excerpts from travel websites in, or prior to, April 2013 which include: travelchanneltv.com.au, Australianfrequentflyer.com.au and tripadvisor.com.au. Many of these excerpts also show that the Waldorf Astoria hotel is referred to as simply ‘the Waldorf’.
In his declarations Mr Eriksen refers to many instances where the Waldorf Astoria hotel has been mentioned in pop culture, mostly in a variety of movies and television series and in some cases the Australian gross revenue generated from the movies is provided in the evidence.
The arrival and departure date of the guests of the Waldorf Astoria Hotel who list their home country as Australia and stayed between June 2002 and 21 May 2007 is also exhibited to the Eriksen declarations. So too is a record of group bookings made by large Australian groups totaling 618 rooms visiting the Waldorf Astoria Hotel or the Waldorf Towers in New York between 141 April 2006 and 29 October 2008.
In Australia, prior to 17 May 2013, bookings for the Waldorf Astoria hotels and resorts were made from within Australia by Australian travel agents or via online booking facilities on the Internet and that such use of the Opponent’s Waldorf trade marks qualifies as Australian use.[17]
[17] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 (‘Sitmar’).
The Opponent also operates a reward scheme called the ‘HHonors’ program which is available to any of its patrons. Relevantly, between the years 2002 and 2013 the Australian membership of this scheme sharply increased from 51,976 to 268,028. Australian members of ‘HHonors’ are sent promotional material which includes mention of the Opponent’s Waldorf trade marks and the services offered under them.
Ms Stiel is a lawyer representing the Opponent in these matters. In her submissions Ms Stiel provides an informative outline to the background of the Opponent’s Waldorf trade marks and its Waldorf brand. She says:
The Waldorf=Astoria hotel
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 often as simply 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.
The Waldorf=Astoria chain
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 twenty five properties around the world. As at April 2013, THE WALDORF=ASTORIA COLLECTION of hotels included eleven properties worldwide that were under development with completion planned between 2014 and 2020.
The Hilton trade mark portfolio
Hilton Worldwide Holding LLP, HLT Domestic IP LLC and HLT IP LLC (each an indirect wholly owned subsidiary of Hilton Worldwide Inc.) own, for the Hilton group, an extensive portfolio of trade marks worldwide. This includes an extensive portfolio of 310 trade marks comprising or containing the sign WALDORF. Those marks are closely associated with Hilton and other companies in the Hilton group.
I also note that a ‘hotel within a hotel’ called ‘The WALDORF TOWERS’ exists within the WALDORF=ASTORIA hotel in New York.
Ms Stiel includes in her evidence excerpts from searches conducted via the Australian Securities and Investment Commission (ASIC) relating to the Waldorf Apartments Hotel Sydney Pty Ltd (Waldorf Constructions) and a copy of the memorandum of Association of Waldorf Constructions is exhibited which states, et al, that it was established ‘to carry on a business as proprietors of flats and to let on lease or otherwise apartments therein and to provide for the tenants and occupiers hereof all or any of the conveniences commonly provided in hotels or clubs’.
Exhibited to Stiel 1 are also screenshots from pages of the website thebookingbutton, access to which is obtained via the Applicant’s website, Waldorf.com.au and it shows that a one night minimum stay is required for bookings at the Applicant’s properties in Sydney, Woolloomooloo, South Sydney, Parramatta, Pennant Hills, The Entrance, Leura, Canberra and Perth. Ms Stiel also provides information about Australians who have visited New York and Americans who have visited Australia between 2007 and 2013.
The Applicant’s Evidence
Phillip Macken is a registered patent attorney and he is acting on behalf of the Applicant in these proceedings. He says:
‘As stated on the website of WAG, at (the ‘WAG Website’):
“The Waldorf Apartment Group is one of Australia and New Zealand’s leading accommodation chains of quality furnished apartments and serviced apartments.”
“The Group is a developer, promoter, finance manager & owner of serviced apartments all over Australia and New Zealand.”
Mr Rubinstein is the Director of the Applicant and he has been a director of various companies within the Applicant’s group of companies since 7 May 1993. Mr Rubinstein states that the activities of the Applicant include the sale of residential apartments, furnished and unfurnished as well as serviced apartment buildings for short term or long term rental all marketed under the trade marks ‘Waldorf Apartments’ and/or ‘Waldorf’ in locations such as: Canberra, Pennant Hills, Parramatta, Perth, South Sydney, Wooloomooloo, Sydney City, Sydney North Shore, Drummoyne, Bondi, Eastwood, Randwick, Hornsby, The Entrance, Carlinglford (sold in 2013), North Sydney (closed 2009), Blacktown (closed 2013) Botany Downs, New Zealand. Mr Rubinstein also provides an overview of the Applicant’s group of companies and in his declaration he says:
The business of the Waldorf Group of Companies began in Australia about 33 years ago. From 1983-1987, apartments were sold at the building called ‘The Waldorf Apartments’ at 57 Liverpool Street, Sydney…From 1993, the business of the Waldorf Group of Companies expanded considerably in relation to the sale of residential and services apartments. In 2004, the business of the Waldorf Apartment Group of Companies expanded into New Zealand.[18]
[18] Rubinstien, [15].
Rubinstein also avers that the word ‘WALDORF’ has several meanings one being the name of two locations in the United States in Maryland and Minnesota and it is the name of a German town. He also says that although the Opponent may have rights in Australia in the words ‘WALDORF ASTORIA’ in relation to hotel services the Opponent cannot claim any exclusive rights in the name ‘WALDORF’ solus in relation to hotel services or any other goods and services. [19]
[19] Ibid, [47].
Eleni Demos is a manager of Waldorf Apartment Hotel ‘Wooloomooloo Waters’ and is employed by Waldorf Australia Group and he says that the Applicant’s apartments are generally used as serviced apartments. He claims:
The type of person who owns, occupies or temporarily stays at one of the Waldorf Apartments are, typically ‘run of the mill’, unpretentious, average Australians (or sometimes, tourists) who are satisfied with comfortable but relatively inexpensive accommodation in a location which is convenient for business, sightseeing or simple residential purposes.
For the above reasons, I have not (for one instant) ever thought that any of the Australian properties which operate under the name ‘Waldorf Apartments’ or ‘Waldorf’ were, in any way, associated with the Waldorf Astoria Hotel.
Also throughout the ten years that I have been employed by Waldorf Australia as Manager, I have not received a single comment or query as to whether the above mentioned property which I manage (or any other ‘Waldorf Apartments’ premises) is related to or, in any way, associated with the iconic hotel Waldorf Astoria.
Similar testimonies that claim no confusion has arisen between the Applicant’s Waldorf Australia Apartments and the Opponent’s ‘luxury’ Waldorf Astoria hotel in New York are also found throughout the Applicant’s evidence.[20] The Opponent’s rebuttal to this part of the Applicant’s evidence are exhibited comments to Stiel 2 from people on the tripadvisor.com.au website and a gentlemen who claims he has a ‘mountain of legal problems and complaints relating to the activities of the fake Waldorf managing director, Avi Rubinstein’[21].
The Arguments of the Parties
[20] See for example: Higgins [7], Finch [6], Knell [7], Massburg [8], Peterson [9], Klevansky [8], Farrell [21], Tindal [20], Tognolini [8], Falzon [9], Pullen [11], Rubinstein [41] –[43].
[21] Stiel 2, TAB 3.
The Opponent
The Opponent’s argument under the section 60 ground is that the Opponent, its predecessors and related companies have used the ‘WALDORF’ trade mark since 1893 throughout the world including in Australia and that the ‘WALDORF’ trade mark has accrued a significant reputation for a number of services, including hotels, serviced apartments, the operation of hotels and property management services. The Opponent also says that the Opponent’s reputation in the ‘WALDORF’ trade mark was recognised by the delegate in Hilton v WAG[22] and that because of the Opponent's reputation in the ‘WALDORF’ trade mark, use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.
[22] See footnote [5].
The Applicant
The Applicant’s main arguments under the section 60 ground, as I understand it, are essentially two fold. Firstly, that the Opponent has no rights in the word ‘WALDORF’ solus and secondly, that the Opponent’s Waldorf trade marks denote an iconic luxury accommodation while the Applicant’s Waldorf Australia buildings and serviced apartments are a more basic accommodation for the modest Australian (it is not my view that persons seeking the Opponent’s services are pretentious but, in terms of the Applicant’s evidence, and at the risk of quoting a well-known Australian movie - it’s the ‘vibe’ of the evidence in answer for WAG application 1550830) and for this reason the Applicant claims that potential consumers have not, and would not, be likely to confuse the Applicant’s goods and services as being offered by, or having any connection with, the Opponent.
Turning firstly to the Applicant’s second line of argument - that the Opponent’s trade marks denote luxury accommodation and the Applicant’s trade mark indicates a more basic serviced apartment, in my opinion this is a straw man’s argument and there is a settled legal principle in this regard. In Berli Hestia Industries Ltd v Bali Company Inc[23] Mason J said:
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 which it can properly put the mark.[24]
[23] (1973) 1 ALR 443.
[24] Ibid. 450.
In regard to the Applicant’s argument that the Opponent does not have rights in the word ‘WALDORF’ solus, I say now that I am satisfied on the balance of probabilities based on the evidence I have before me, that at the very least the Opponent’s WALDORF ASTORIA trade mark (with or without the ‘=’) had a substantial reputation in Australia before 3 July 2008 with respect to hotel and short-term and long-term accommodation and property management services (‘the Opponent’s services’), and that this particular trade mark is commonly used and recognised, in Australia and throughout the world, in the shortened form ‘WALDORF’ to indicate the ‘WALDORF ASTORIA’ trade mark owned by the Opponent. That said, I am satisfied that the Opponent has made out the first leg of the section 60 ground of opposition.
I turn now to the second leg of section 60, that is, even though the Opponent’s ‘WALDORF’ trade mark has a significant reputation in Australia, will this reputation and the use of the Applicant’s ‘WALDORF APARTMENT’ trade marks in connection with the goods and services specified in the Applicant’s trade marks be likely to deceive or cause confusion?
Regardless of the level of opulence, the services offered by both parties are basically the same in the context of the Opponent’s ‘Waldorf Towers’ within the Waldorf Astoria, New York and the Applicant’s serviced apartments. Similarly the Opponent’s hotel and resort services are similar to the Applicant’s class 35, 36 and 37 services and its buildings specified in class 19 of trade mark application number 1550830. While a similarity of services or goods between the parties is not a requirement of section 60 it is inescapably relevant when assessing whether use of the Applicant’s trade marks would be likely to deceive or cause confusion. I also note that the Opponent’s hotel services cannot be provided without the goods subject of trade mark application number 1550830.
The Opponent’s evidence in my opinion is quite persuasive and it attests to the Opponent’s claim that the Opponent’s ‘WALDORF’ trade mark has a substantial reputation in Australia in relation to the provision of luxury hotels and long and short-term accommodation and property management services.
In my opinion, the average Australian consumer is aware of international airlines and international hotels, and it seems to me that the Applicant is in the business of building buildings, selling them and leasing them back for the provision of serviced apartments available for short and long term accommodation.
Given the above similarities between the respective trade marks and the respective goods and services, I am satisfied there is a real and tangible danger of confusion taking place between the Opponents ‘WALDORF’ trade mark and the Applicant’s ‘WALDORF APARTMENTS’ trade marks. I am unable to carve out any goods or services in any of the WAG applications that can be retained by the Applicant.
The Applicant submits that I am not bound by the earlier decision of the Registrar’s delegate in Hilton v WAG which also relates to the Applicant’s trade mark for ‘WALDORF APARTMENTS’. Indeed, I am not, however I agree with the Registrar’s delegate in that case that the Opponent, its predecessors and related companies, have used the term WALDORF since 1893 to such an extent in many countries throughout the world, including Australia, for which WALDORF has accrued a substantial reputation for a number of services including, the provision of hotels, accommodation and property management services and because of this reputation, use of the Applicant’s trade marks would be likely to deceive or cause confusion.
I am satisfied the Opponent has established the section 60 ground of opposition in relation to all of the Applicant’s goods and services in all of the WAG applications. As the Opponent has made out the section 60 ground of opposition there is no need for me to discuss the other grounds as set out in the respective SGPs, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.
Decision
I have found the Opponent has established the ground of opposition it raised pursuant to section 60 of the Act in respect of trade mark application numbers 1247689, 1550830, 1638440 and 1638771. As the Delegate of the Registrar I accordingly refuse to register the Trade Marks.
Costs
The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. In respect of trade mark numbers 1247698 and 1550830 I award costs against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995. In respect of trade mark numbers 1638440 and 1638711 I award reduced costs against the Applicant under s 221 of the Act in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd[25].
[25] [2001] ATMO 78.
Cristy Condon
Hearing Officer
Trade Marks and Designs Oppositions and Hearings
30 May 2018
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