Ines Mcleod and the Original Silverton Hotel Pty Ltd v the Silverton Hotel Pty Limited

[2012] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by Ines McLeod and The Original Silverton Hotel Pty Limited to registration of trade mark application 1287161(43) – SILVERTON HOTEL - filed in the name of The Silverton Hotel Pty Limited.

Delegate:	Alison Windsor
Representation:	Opponent:  Benjamin Fitzpatrick of counsel instructed by Lesicar Murray Trento, patent and trade mark attorneys Applicant:  Written submissions by Actuate IP, patent and trade mark attorneys
Decision:	2012 ATMO 122 Section 52 opposition:  Opponent has established ground of opposition under section 58 of the Act – registration refused.

Background

1. On 27 February 2009, The Silverton Hotel Pty Ltd (‘the Applicant’) filed an application under the provisions of the Trade Marks Act 1995 (‘the Act’) to register as a trade mark the words SILVERTON HOTEL (‘the Trade Mark’) in respect of the following services in class 43 of the Nice Classification:

   Accommodation services in this class including holiday accommodation services, temporary accommodation services, and rental of accommodation; hotel services; motel services; resort services; hospitality services in this class; services relating to the arrangement of accommodation; services for providing food and drink including cafe, take-away, catering and restaurant services; bar services; inn keeping services; wine bar and public house services; provision of information, advisory, and consulting services in relation to the aforementioned services.

2. The application was examined as required by section 31 of the Act, and accepted for possible registration on the basis of evidence of use, endorsed as follows:

   Provisions of subsection 41(5) applied.

3. The acceptance was advertised in the Australian Official Journal of Trade Marks on 22 July 2010.  After applying for and being granted an extension of time for the purpose, on 21 January 2011 Ines McLeod (‘McLeod’) and The Original Silverton Hotel Pty Ltd (‘OSH’ and collectively both parties will be referred to as ‘the Opponents’) jointly filed a notice of opposition (‘the Notice’) to registration of the Trade Mark.

4. The parties then filed evidence in support of their respective positions, and once the evidence stages were completed, the Opponent requested a hearing. 

5. As a delegate of the Registrar of Trade Marks I heard the matter in Melbourne on 13 November 2012.  The opponent was represented by Benjamin Fitzpatrick of counsel, instructed by Kate Maynard of Lesicar Murray Trento patent and trade mark attorneys.  The Applicant elected not to appear on the day, but its legal representative, Actuate IP patent and trade mark attorneys, provided written submissions.  Also in attendance at the hearing were Peter and Patsy Price, owners of OSH. 

   The evidence

6. The evidence provided in this matter consists of the following Statutory Declarations:

   Evidence in support

   ·Ines McLeod, made 15 July 2011 with Annexures IMcL-1 to IMcL-5 (‘Mcleod’)

   ·Bruno Genua, made 18 July 2011

   ·Gordon Neilson, made 18 July 2011

   ·Vita La Rovere, made 18 July 2011

   ·Lee Fabbian, made 18 July 2011

   ·Patricia Facchin, made 18 July 2011

   Evidence in Answer

   ·Christopher Fraser, made 15 March 2012, with Exhibits CF-1 to CF-4 (‘Fraser 1’)

   ·(Exhibit CF-4 consists of a copy of the Statutory Declaration of Christopher Fraser, made 20 June 2010, with Exhibits CF-1 to CF-14, which was filed as evidence of use to assist the Applicant in overcoming grounds for rejecting the application which were raised during the examination of the Trade Mark.) (‘Fraser 2’)

   Evidence in Reply

   ·Kerry Susanne Keady, made 19 June 2012, with Annexures A and B (‘Keady’)

   ·Peter Price, made 30 May 2012, with Exhibits PP-1 to PP-12 (‘Price’)

   Grounds of opposition and onus

7. The Notice nominated almost all available grounds of opposition but only the following grounds were pursued at the hearing: s 42(b) (use contrary to law); s 43 (trade mark likely to deceive or cause confusion); s 58 (Applicant not owner of trade mark); s 59 (Applicant not intending to use trade mark); s 60 (trade mark similar to trade mark that has acquired a reputation in Australia); and s 62A (application made in bad faith).

8. The onus is on the Opponent to establish one or more of the grounds which it has pursued.  The standard of proof is the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].

9. The date at which any ground must be established is the application filing date, that is, 27 February 2009.[2] 

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592at 595 per Kitto J; Winton Shire Council v Lomas (2002) 56 IPR 243; [2002] FCA 696 (FC); Lomas v Winton Shire Council [2003] AIPC 91-839; [2002] FCAFC 413.

10. If the opponent succeeds in establishing one ground it is successful and there is no requirement for the remaining grounds to be considered.

    Discussion and Reasons

11. According to both the Opponents and the Applicant the name ‘Silverton Hotel’ refers to the only extant hotel in the small village of Silverton, which is located about 25 kilometres north-west of the city of Broken Hill in outback New South Wales.  Both Opponents and Applicant make reference to the ‘iconic’ status of the hotel via its exposure to the wider public through its appearance in a number of widely distributed feature films, television shows and more than 150 television commercials. 

12. In their evidence both the Applicant and the Opponents state that there has been a hotel in Silverton for over 100 years.  They refer to the first hotel having been set up in approximately 1884.  They say that the original hotel was burnt down in 1918 and the present structure, which had until then been the town post office, was converted into the current hotel.  

13. Over the years since the hotel business was established, there have been a number of owners and lessees of the property.  McLeod states that her father, Luigi Reato, purchased the hotel in 1956 and owned it until 1974 when he sold the premises and the business to her.  Mr Reato either operated the hotel business himself or leased it to a licensee during his period of ownership.  McLeod says that she and her husband Colin owned the premises and ran the hotel business at the Silverton Hotel up until 1 July 2000 when she leased it out. 

14. The lessees concerned were Christopher Fraser and Joanne Casey (together ‘the Lessees’) who subsequently, in 2002, incorporated the Applicant.[3]  The original lease was for a five year period with the option to extend it for another five years, an option which the Lessees took up.  Part of the lease agreement between the Lessees and McLeod involved transfer of Hotel Licence no 110383 (sometimes referred to in the evidence as a Liquor Licence or the hotelier’s licence) to the Lessees.  The Licence has a start date of 14 April 1960 and has been held in the past in the name of a number of previous owners or lessees of the property.  The Licence name recorded on the official New South Wales government licensing service website is ‘Silverton Hotel’.[4] 

    [3] While the evidence shows that the Lessees advised McLeod of the formation of the Applicant for the purposes of running the hotel business, it did not become the lessee of the property nor the proprietor of the hotel business. 

    [4] Price, Exhibit PP-2

15. Pursuant to the terms of the lease granted to the Lessees, at the expiration of the term of the original lease and then the lease as extended, the Lessees were required to ‘peaceably surrender, quit and yield up’ to McLeod the hotelier’s licence and the hotel and land ‘in good and substantial repair and condition in all respects to the extent of the Lessee’s covenants herein contained’.[5]  It appears from the evidence that the name Silverton Hotel would remain as the hotelier’s licence name, notwithstanding who was to be registered as the licensee.

    [5] Keady, Annexures A and B, clause 4.1 of Schedule 1

16. The evidence shows that the Applicant had earlier purchased a block of land not far from the hotel and began construction of a building on that block in August 2007.  Subsequently, on 27 February 2009 the Applicant had filed the present application in respect of services in class 43 which are generally relevant to the operation of a hotel. 

17. In an interview on ABC Radio on 16 June 2009[6] Chris Fraser specified that the Lessees had only intended to lease the Silverton Hotel for a period of 10 years, and that there was only one year of that period remaining.  He said that he intended setting up a new business to be named ‘Silverton Souvenirs’ in the new building constructed nearby.  Following a question from the interviewer, Mr Fraser specified that the name Silverton Hotel was the name on the liquor licence which belonged to McLeod, and that he was not in a position to “take that anywhere, mate”. 

    [6] Price, Exhibit PP-8 provides the transcript of this interview.

18. Exhibit PP-6 to the Price declaration is described as a copy of Chris Fraser’s application for an hotelier license for the new premises he had constructed on the nearby block of land and the initial rejection response from the licensing authority.[7]  Mr Fraser’s submissions in support of the application include the following paragraphs:

    EXISTING SILVERTON HOTEL

    To address those persons concerned about removing the name of the existing hotel, I advise that the name “Silverton Hotel” is shown on the liquor licence of the existing premises, and will remain the property of the freehold owner.

    My new business is, and will continue to be, called SILVERTON SOUVENIRS.

    The iconic and international status of the existing Hotel will not, and indeed, CANNOT, be removed.

    [7] While neither of these documents are dated, the final dot point in item 1 of the rejection response states that objections to the application should be filed with the Liquor Authority by Thursday, 29 April 2010.

19. Fraser 2 consists of a copy of the declaration Mr Fraser provided to the examiner during the course of the examination of the present application.  That declaration is dated 20 June 2010, a matter of 10 days prior to the end of the Lessees’ second lease of the Silverton Hotel premises and hotel business.  Mr Fraser declared the following:

    On 1 June 2000 I entered into a lease agreement together with Joanne Casey (“Joanne”) as co-lessee with respect to premises located at 12 Layard Street, Silverton in New South Wales (the “Business Premises”).  The Business Premises consists of a hotel and residential premises in which myself and Joanne have resided since 1 July 2000.  The hotel is known by the name “The Silverton Hotel” and has been known by this name since 1884.  Joanne and I have provided hotel, accommodation, restaurant and bar services (the “Services”) under this name consistently since acquiring the business approximately ten years ago.

    On 2 April 2002, Joanne and I incorporated the Applicant company with the intention that the business would be owned and operated under this corporate name.  In addition to providing the Applicant’s Services, the business Premises have been used extensively as a backdrop in a number of iconic Australian cinematographic films, television commercials and television series … .  Various props and memorabilia from these films  …  remain at the Business Premises and are a popular drawcard for tourists and visitors to the hotel. 

    …

    I respectfully submit that the following information supports the Trade Mark application for the SILVERTON HOTEL mark in respect of the objections raised by the Examiner.

    USE OF THE SILVERTON HOTEL MARK

    The name THE SILVERTON HOTEL has been known and used consistently in relation to the hotel situated on the same site since 1884.  Now exhibited to me and marked “CF-4” are photographs showing the Silverton Hotel and prominently displaying the Trade Mark dated 1926.

    Given the small population of Silverton and the fact that the Silverton Hotel is the only hotel and pub in Silverton, THE SILVERTON HOTEL has become the primary tourist attraction of the town of Silverton and is arguably more well-known that the town itself.  In addition to local trade, we receive approximately 120,000 visitors to the hotel every year.

    …

    The promotion of the Applicant’s Services bearing its trade mark have been consistent and extensive.  Through the Applicant’s (and its predecessors’) use of THE SILVERTON HOTEL trade mark in Australia since July 2000 and the prior use of the Trade Mark in relation to hotel, restaurant and bar services conducted at these premises since 1884, I consider that consumers recognise and view THE SILVERTON HOTEL trade mark as being particular to the Services that it provides

20. OSH agreed to purchase the Silverton Hotel property from Mcleod in January 2010.  A proviso of the purchase contract was that OSH would not be able to take possession nor settle the sale of the property until such time as the Lessees operating lease terminated on 30 June 2010.  The contract also required that OSH would apply to have the hotelier’s licence which was currently in the names of the Lessees, but which would revert to Mcleod at the end of the Lessees operating lease, transferred into its name. [8]

    [8] Price PP-1, para 20

21. In Fraser 1, Chris Fraser makes the following statements in respect of the leases and the name of the property:

    The Lease Agreement is simply an agreement for the lease of premises and makes no provision for the use of the name SILVERTON HOTEL by myself and Joanne as the lessors of the premises.  In fact, the use of the SILVERTON HOTEL name was never discussed between myself and Joanne and the McLeod’s at any time prior to entering into the Lease.

    …

    Joanne and myself purchased the business from Colin and Ines McLeod upon the understanding that the entirety of the business would be owned by us, including the goodwill in the business and the SILVERTON HOTEL name.  Since taking over the conduct of the business, we have continued to trade under the SILVERTON HOTEL name and neither Colin nor Ines have at any point taken issue with our use of this trading name. 

22. There is indeed no mention of any intellectual property of any kind in either of the versions of the lease agreements between the McLeods and the Lessees which have been provided in the relevant evidence by either the Applicant or the Opponents.[9]  There is a reference to the goodwill of the business being transferred for the term of the relevant lease.  There is also mention that the property in which the hotel business operated was known as ‘The Silverton Hotel’.  As noted previously (in paragraph 15) the name attached to the hotelier’s licence is likewise ‘Silverton Hotel’.  There is a copy of a sale agreement between the Lessees and McLeod which covers the sale of operating equipment and various chattels to the sum of just over $6000.

    [9] These agreements appear to be copies of the same document, but different portions of the agreement have been attached to different declarations.

23. The evidence quoted above forms a summary of the background to the dispute between the parties in this matter. It is appropriate now for me to move on to considering the grounds of opposition which the Opponent pursued at the hearing. As the dispute is over ownership of the Trade Mark, an appropriate place to begin the discussion is with a consideration of section 58 of the Act.

    Section 58 – Applicant not owner of trade mark

24. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

25. It is accepted that the first person to use a trade mark in Australia ‘as a trade mark’ in respect of the relevant services will be the owner of the trade mark at common law. In order to establish a ground of opposition under the provisions of section 58 the Opponent needs to establish that:

    ·   the respective trade marks of the Applicant and any other party claiming earlier use are either identical or substantially identical[10],

    ·   the respective goods/services of both parties are the ‘same kind of thing’[11] and

    ·   the other party has the earlier claim to ownership based on use prior both to the application to register and to any pre-filing use of the trade mark by the Applicant[12]. 

    [10] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 31 IPR 375, 120 ALR 495.

    [11] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

    [12] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

26. Both the Opponents and the Applicant in this matter are claiming rights in the Trade Mark, that is, in the words ‘Silverton Hotel’.  Both the Opponents and the Applicant are claiming rights in the Trade Mark in respect of the same range of services – that is, those services relevant to the operation of a hotel which are largely described in the specification claimed in the Trade Mark application.

27. The remaining question is which party to this opposition, if any, has the right to claim ownership based on the earliest use of the Trade Mark in Australia.

28. It appears from the evidence before me that use of the Trade Mark in respect of the relevant services could be said to date back to the late 19^th century.  That use has been by a number of different parties who have had involvement in the purchase, lease and running of the hotel premises and the associated hotel business.  The Applicant is attempting to lay claim to such use from the time it was incorporated by the Lessees as the vehicle to run the hotel business on or around 2 April 2002.  The Lessees may make a similar claim to use since taking up the business on 1 July 2000 under their initial lease.

29. Prior to either of those dates, however, the Silverton Hotel name and trade mark was owned and used by McLeod and her husband; by her father Luigi Reato; and by the party from whom Mr Reato purchased the premises, as well as by other earlier owners.  Since at least 1960 the hotelier’s licence has existed under the name of Silverton Hotel.  (The licence appears to be firmly attached to the premises, rather than to any particular owner.) 

30. It appears that the words ‘Silverton Hotel’, while obviously the name attached to the premises in which the business is run, is also the brand or trading name by which the business itself is identified.  I am satisfied that this use of the words is and has been use as a trade mark in respect of the hotel business services and that such trade mark use has devolved at various times to the publicans who were running the business.

31. However, it is also clear to me that use of the trade mark by a party who is leasing the property is authorised use on behalf of the owner of the property.  The use in that case, to my mind, devolves to the owner of the property who, at the filing date of this application, was McLeod.  It should also be noted that at no time has the Applicant, a company which is a separate legal entity from the Lessees, formally been the owner or the lessee of the premises or the hotel business.

32. I am thus satisfied that a number of parties other than the Applicant (or the Lessees) have used the Trade Mark in respect of the relevant services prior to the date on which the application was filed. On this basis, the Applicant is not the owner of the Trade Mark, and the ground of opposition under section 58 is established.

    Decision

33. The Opponent has established a ground of opposition and is therefore successful in this opposition.  I refuse to register trade mark application 1287161.

    Costs

34. The Opponent has requested its costs in the event of success and is so entitled.  I award costs against the Applicant according to the official scale as set out in Schedule 8 of the Trade Mark Regulations 1995. 

    Alison Windsor
    Hearing Officer
    Trade Marks Hearings
    18 December 2012