Hotel Cipriani S.P.A v Altunis-Trading Gestao E Servicos LDA & Cipriani Group Inc

[2011] ATMO 106

TRADE MARKS ACT 1995

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

Re:Opposition by Hotel Cipriani S.P.A to registration of trade mark application 1074984 (35, 36, 37 and 45) - CIPRIANI RESIDENCES - filed in the name of Altunis-Trading Gestao E Servicos LDA.

AND

Trade Mark Registration No. 486420 (42) – HOTEL CIPRIANI - in the name of Hotel Cipriani S.P.A and non-use removal application by Cipriani Group Inc. and opposition by Hotel Cipriani S.P.A.

Delegate:	Bianca Irgang
Representation:	Hotel Cipriani S.P.A : Ms Siobhan Ryan of Counsel instructed by Norton Rose Lawyers Altunis-Trading Gestao E Servicos LDA and Cipriani Group Inc.: Not represented at the hearing
Decision:	2011 ATMO 106 1074984: Section 52 opposition: sections 43, 44 and 60 pressed at the hearing – s60 ground of opposition established for all services - trade marks substantially identical – use likely to deceive or cause confusion - no requirement to consider other grounds 486420: section 92 opposition –use shown class 42 services –non-use application unsuccessful – trade mark to remain on the register.

1. Altunis-Trading Gestao E Servicos LDA (‘Altunis’), filed trade mark application number 1074984 on 12 September 2005 in classes 35, 36, 37 and 45 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  Cipriani Residences

   Trade mark application:      1074984

   Filing Date:  12 September 2005

   Convention details:              11 March 2005  78/585,895 United States of America

   Specification:  Class 35: Apartment, home and condominium services, namely, promoting the interests of renters and owners that reside in a community   

   Class 36:Leasing and rental of apartments, homes and condominiums; real estate brokerage services for apartments, homes and condominiums

   Class 37:Real estate development services, namely, the development of residential communities including apartments, homes and condominiums and hotels and commercial properties including industrial building, office and retail space

   Class 45: Hotel concierge services

   Endorsements:  Convention priority claimed: 11 March 2005, United States of America, No. 78/585,895 in respect of APARTMENT, HOME AND CONDOMINIUM SERVICES NAMELY PROMOTING THE INTERESTS OF RENTERS AND OWNERS THAT RESIDE IN A COMMUNITY in class 35, LEASING AND RENTAL OF APARTMENTS, HOMES AND CONDOMINIUMS; REAL ESTATE BROKERAGE SERVICES FOR APARTMENTS, HOMES AND CONDOMINIUMS in class 36, REAL ESTATE DEVELOPMENT SERVICES NAMELY THE DEVELOPMENT THE DEVELOPMENT OF RESIDENTIAL COMMUNITIES INCLUDING APARTMENTS, HOMES AND CONDOMINIUMS AND HOTELS AND COMMERCIAL PROPERTIES INCLUDING INDUSTRIAL BUILDING, OFFICE AND RETAIL SPACE in class 37, HOTEL SERVICES; MAKING HOTEL RESERVATION FOR OTHERS in class 43 and HOTEL CONCIERGE SERVICES in class 45.

2. The application was accepted for possible registration and the official notice of acceptance was published in the Australian Official Journal of Trade Marks. Subsequently on 7 September 2007 Hotel Cipriani S.P.A (‘Cipriani S.P.A’) filed a Notice of Opposition (‘the Notice’) to registration of the application.

3. On 7 June 2007, Cipriani Group Inc. (‘Cipriani Group’) filed an application for the removal of Cipriani S.P.A.s trade mark registration number 486420 in class 42. Cipriani S.P.A. opposed the removal of its trade mark registration, the current details of which are set out below:

   Trade mark:  Hotel Cipriani

   Trade mark registration:     486420

   Filing Date:  4 May 1988

   Specification:  Class 42: Hotel reservation services in class 42

   Endorsements: Accepted on provision of evidence of use. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

4. I heard the oppositions in Melbourne as a delegate of the Registrar of Trade Marks on 9 March 2011. Cipriani S.P.A. was represented by Ms Siobhan Ryan of counsel instructed by Norton Rose Lawyers. Cipriani Group and Altunis did not appear at the hearing although both have been legally represented by EKM Patent & Trade Marks .

   Evidence

5. The evidence provided with regards to trade mark application no. 1074984 consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Fiona Keddie	Director of Legal Services of Orient-Express Hotels Ltd.	17 June 2008	Exhibit FK-1 to FK-18
Susan Spicer	Solicitor Employed by Deacons	29 July 2008	Exhibits SS-1 to SS-23

1. The evidence of the parties with regards to the removal of trade mark registration no. 486420 consists of the following declaration:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Fiona Keddie	Director of Legal Services of Orient-Express Hotels LTD.	17 June 2008	Exhibit FK-1 to FK-18

1. I heard the oppositions at the same time.  In deciding the matters I consider it appropriate and convenient to deal with the removal application against trade mark registration 486420 first.

   Section 92 Application for Removal of a Trade Mark from the Register

2. The removal application cited the ground for removal under subsection 92(4)(b) of the Trade Marks Act 1995 (the Act). Section 92 relevantly provides:

   92       Application for removal of trade mark from Register etc.

   (4)An application under subsection (1) or (2) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

   (a)…

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application was filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

3. This ground for removal is qualified by subsection 93(2) of the Act which provides that an application for removal based on the subsection 92(4)(b) ground ‘may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark.’ It is clear that the requirement imposed by subsection 93(2) of the Act is satisfied. I must, therefore, consider whether the subsection 92(4)(b) ground for removal has been rebutted by Hotel Cipriani.

4. To defeat the non-use application, Cipriani S.P.A. must demonstrate that it has used trade mark No. 486420 in respect of its claim for hotel reservation services in Class 42 to which registration applies within the relevant three year period ending on 21 April 2007.

5. This arises by virtue of section 100 of the Act which states:

   100     Burden on opponent to establish use of trade mark etc.

   (1)In any proceedings relating to an opposed application, it is for the opponent to rebut:

   …

   (c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

6. Therefore, under section 100(1)(c) of the Act, the opponent is required to establish use in the relevant period.  The evidentiary standard is the ‘balance of probabilities’ which means that I must be satisfied it is more likely than not that the trade mark was used in the appropriate period.

7. In saying this it is far easier for a trade mark owner to prove use than it is for a removal applicant to prove non-use, and is both preferable and sensible for a trade mark owner to provide conclusive proof of use. Cipriani S.P.A. has supplied a number of exhibits which it claims demonstrate use of the trade mark on hotel reservation services through the relevant period.

8. Cipriani S.P.A. is the owner of the luxury “Hotel Cipriani” located on three acres of land on Giudecca Island in Venice, Italy. The hotel was opened in 1958 and Ms Keddie states that the hotel has enjoyed a reputation as one of the world’s most exclusive hotels in terms of luxury, service and location. Hotel Cipriani is positioned opposite the Piazza San Marco and has a total of 82 suits and rooms. The hotel is open for business for nine months of the year beginning in March.

9. In the statutory declaration made by Fiona Keddie (‘The Keddie declaration’) Ms Keddie states that there were 170 direct bookings for accommodation at Hotel Cipriani which were made by Australian customers in 2006. In exhibit FK-3 accompanying the Keddie declaration there are a number of emails from Australian customers which are dated within the relevant time and confirm booking and payment details for staying at the Hotel Cipriani.

10. Further to this, exhibit FK-2 is a print-out from the Cipriani S.P.A. website which shows information and prices for staying at the hotel. The website does provide the option for determining in Australian dollars how much a room or a suite would cost. I also note that Cipriani S.P.A. has advertised services through its parent company Orient Express Hotels Ltd’s regional office in NSW (exhibit FK-4).  It is clear that Cipriani S.P.A. has been taking reservations and bookings during the relevant period from Australian customers seeking to stay at the Hotel Cipriani. It is also clear that Cipriani S.P.A.has been using its HOTEL CIPRIANI trade mark to provide these services.

11. Taken together with all the other exhibits and the Keddie declaration, I am satisfied the evidence illustrates usage which establishes that Cipriani S.P.A. has indeed used its HOTEL CIPRIANI trade mark in Australian in the relevant period on the services claimed.

12. Therefore, I determine that Cipriani S.P.A. has met its onus under section 100(1)(c) of the Act with respect to hotel reservation services. Consequently the ground of removal under section 92(4)(b) is rebutted with respect to all the services in class 42. I refuse to remove trade mark registration no. 486420 from the Register.

    Section 52 Opposition

13. It is now for me to consider the section 52 opposition brought against Altunis’s trade mark application no. 1074984 for the trade mark CIPRIANI RESIDENCES.

14. The Notice nominated most of the grounds of opposition available under the Act.  The onus is upon Hotel Cipriani to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

    [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

    [2] [2009] FCA 891, para 22-27

15. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on those grounds under sections 43, 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

16. Therefore, the grounds remaining for my consideration are those under sections 42, 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services specification, there is no requirement for any of the other grounds of opposition to be considered.

    Section 60 – Trade mark similar to a trade mark that has acquired a reputation in Australia

17. Section 60 of the Act provides:

    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)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

18. To establish the ground of opposition under section 60, Hotel Cipriani must demonstrate:

    ·That Altunis’s trade mark is either substantially identical, or deceptively similar to a second trade mark;

    ·That, at the priority date of the opposed application, the second trade mark had acquired a reputation in Australia; and

    ·That because of the reputation of the second trade mark, use of Altunis’s trade mark would be likely to deceive or cause confusion.

19. The application was filed on 12 September 2005, prior to the amendment of section 60 which took effect from 23 October 2006. The requirements of the section prior to the amendment are that the trade marks under consideration be substantially identical or deceptively similar. This is a threshold test for the application of section 60 as it was at the time the application was filed. The relevant principles are often quoted, familiar and well-established and it is neither necessary nor appropriate to restate them all here[3]. However, when comparing the two trade marks I draw particular guidance from Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 where Windeyer J said at paragraph 12:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

    [3] Those principles are enunciated in the following authorities: In the matter of an Application by the Pianotist Company Limited for the Registration of a Trade Mark (1906) 23 RPC 774 at 777 (per Justice Parker); Australian Woollen Mills Limited v F.S. Walton & Co.Limited (1937) 58 CLR 641 at 658 (per Justices Dixon and McTiernan); Application by Smith Hayden & Co.Limited (1946) 63 RPC 97 at 101 (per Justice Evershed); Cooper Engineering Co. Pty. Limited v Sigmumd Pumps Limited (1952) 86 CLR 536 at 538; Southern Cross Refrigerating Co. v Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 594-5 and 607; Berlei Hestia Industries Limited v The Bali Company Inc. (1973) 129 CLR 353; and Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson).

20. A consideration of Altunis’s trade mark shows that it consists of the two words CIPRIANI RESIDENCES. Cipriani S.P.A. has a trade mark registration for HOTEL CIPRIANI. In comparing the Cipriani S.P.A. HOTEL CIPRIANI trade mark with the opposed CIPRIANI RESIDENCES trade mark the common element of both marks is the word CIPRIANI. I note the addition of the descriptive words HOTEL and RESIDENCES to the respective trade marks but these elements are minor variations and not sufficient to distinguish the trade marks from each other. I must consider both the visual and verbal uses of the respective trade marks and I note that in a verbal sense both may be used, referred to and remembered by the striking element CIPRIANI. I consider the Altunis CIPRIANI RESIDENCES trade mark to be substantially identical with the Cipriani S.P.A. trade mark. Therefore, Cipriani S.P.A. has satisfied the first test in establishing the section 60 ground of opposition.

21. It is now for me to determine if Cipriani S.P.A. has acquired a reputation in Australia for its HOTEL CIPRIANI trade mark which is sufficient to establish that use of the opposed CIPRIANI RESIDENCES trade mark would be likely to deceive or cause confusion. This is more than merely indicating prior use, the Hotel Cipriani trade mark needs to be “associated in the minds of the Australian public”[4].

    [4] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

22. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, (2000) 51 IPR 102, at 128:

    In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

    [R]eputation 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.

    At 129, Justice Kenny continues:

    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: …

23. Exhibit SS-20 accompanying the Spicer declaration evidence editorials and articles published in the Australian media in widely circulated magazines and newspapers including the Australian, Australian Financial Review, Sydney Morning Herald, Canberra Times, Sun Herald and The Bulletin. These articles all refer to the prestige of the HOTEL CIPRIANI and there are many comments to the effect that HOTEL CIPRIANI is one of the finest hotels in the world. HOTEL CIPRIANI has also been advertised in a number of travel guides (exhibit SS-6, SS-10, SS-13, SS-14, SS-17 to 19) and even in online forums (SS- 9).

24. It is clear from the evidence that Cipriani S.P.A. does have an extensive and impressive reputation for its HOTEL CIPRIANI as being one of the leading hotels in the world (Exhibits FK-6 to FK-9 accompanying the Keddie declaration). The hotel has also been prominently advertised in numerous trade guides for Italy and Venice which are published and circulated globally including in Australia (Exhibit FK-12).  The Keddie declaration also outlines Cipriani S.P.A.’s significant and growing expenditure on advertising in the period 2000 until the present. Total revenue generated by the purchases of services under the HOTEL CIPRIANI trade mark is very significant and has been growing since the year 2000.

25. Hotel Cipriani is an expensive luxury hotel which is located overseas rather than in Australia but this does not mean that Cipriani S.P.A. will be unable to establish the ground of opposition under section 60. A trade mark owned by a foreign trader, although not directly used in Australia, may provide sufficient basis for objection if it has “nevertheless become associated in the minds of the Australian public with his goods because it has been advertised in publications which have circulated extensively in Australia or in some other manner, …”[5]. There are numerous publications in which the HOTEL CIPRIANI branded hotel has been advertised or referred to (exhibits SS-6, SS-10, SS-13, SS-14, SS-17 to 19 and FK-12) and these publications are either available in Australia or exclusively published in Australia. I am satisfied that at the priority date of the opposed application, Cipriani S.P.A. did have a significant reputation in Australia for its HOTEL CIPRIANI. I must now decide if, because of this reputation, use of Altunis’s CIPRIANI RESIDENCES trade mark would be likely to cause deception or confusion.  

    [5] Seven Up Co supra

26. In my consideration of the likelihood of confusion or deception, I am to consider any of the uses of the opposed trade mark that would be within the scope of the registration which is sought, should it be granted in the terms presently sought. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[6], based on the proper allowance for the possibility of confusion of one trade mark for the other at a time when only the other and competing trade mark is present. As stated by Branson J in Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 45 IPR 411; (1999) AIPC 91-499 at paragraph 88:

    The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

    [6] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

1. It is clear from the evidence that a number of Australian consumers are aware of the HOTEL CIPRIANI and that is has a strong reputation both in Australia and internationally. While there have not been any documented examples of instances of confusion between the trade marks provided to me, overall I consider that, given the significant reputation evidenced by Cipriani S.P.A. in its HOTEL CIPRIANI trade mark, a significant number of consumers would at the very least experience a reasonable doubt[7] as to the existence of some sort of connection between the HOTEL CIPRIANI trade mark and the CIPRIANI RESIDENCES trade mark if it were used to the extent of all of the services enlisted in the opposed application.

   [7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

2. I am satisfied that Cipriani S.P.A. has established the section 60 ground of opposition in relation to all the applicant’s goods. Having found in favour of Cipriani S.P.A. in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

   Decision

   Opposition to Trade Mark application no. 1074984

3. I find that Cipriani S.P.A. has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark application 1074984.

   Opposition to Removal Application against Trade Mark registration no. 486420

4. I am satisfied that the trade mark of registration no. 486420 has been used in the relevant period on the services claimed. Therefore, I refuse to remove trade mark registration no. 486420.

   Costs

5. It is usual for costs to follow the event, and I see no reason to depart from that principle here.

   Opposition to Trade Mark application no. 1074984

6. I award costs against Altunis-Trading Gestao E Servicos LDA in terms of Schedule 8 of the Regulations.

   Opposition to Removal Application against Trade Mark registration no. 486420

7. I award costs against Cipriani Group Inc. in terms of Schedule 8 of the Regulations.

   Bianca Irgang
   Hearing Officer
   Trade Marks Hearings
   31 October 2011