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

This matter concerned an opposition by Hotel Cipriani S.P.A. to a trade mark application (no. 1074984) by Altunis-Trading Gestao E Servicos LDA, and a related application by Cipriani Group Inc. to remove Hotel Cipriani S.P.A.'s registered trade mark (no. 486420) from the register. The hearing was conducted by Bianca Irgang, a delegate of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether Hotel Cipriani S.P.A. had used its registered trade mark no. 486420 in Australia in relation to hotel reservation services within the three-year period preceding the filing of the removal application, as required by section 92(4)(b) of the *Trade Marks Act 1995* (Cth). This required Hotel Cipriani S.P.A. to rebut the allegation of non-use, placing the onus on it to establish use on the balance of probabilities, pursuant to section 100(1)(c) of the Act. A secondary issue involved Hotel Cipriani S.P.A.'s opposition to Altunis-Trading Gestao E Servicos LDA's trade mark application on grounds including section 60 of the Act.

The Hearing Officer reasoned that the removal application was made under section 92(4)(b) of the Act, which requires proof of use of a trade mark during a specified three-year period. The Hearing Officer found that Hotel Cipriani S.P.A. had met its burden under section 100(1)(c) by establishing that its trade mark no. 486420 had been used in the relevant period for the claimed services. Consequently, the application to remove the trade mark was refused. Regarding the opposition to the new trade mark application, the Hearing Officer found that Hotel Cipriani S.P.A. had successfully established its opposition on the grounds argued, specifically under section 60, and therefore refused to register the application.

In conclusion, the Hearing Officer refused to remove trade mark registration no. 486420 and refused to register trade mark application no. 1074984. Costs were awarded against Altunis-Trading Gestao E Servicos LDA in relation to the opposition to the application, and against Cipriani Group Inc. in relation to the removal application.