Mantra IP Pty Ltd

[2017] ATMO 10

TRADE MARKS ACT 1995

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

ReTrade mark application number 1771347 (39, 43) – BALÉ - in the name of Mantra IP Pty Ltd

Delegate:	Robert Wilson
Representation:	Applicant: King & Wood Mallesons
Decision:	2016 ATMO 10 Trade Marks Act 1995 – ex parte hearing on submissions only – whether ground for rejection of application under s 41 – trade mark is geographical indicator with no inherent adaptation to distinguish the applicant’s services – evidence of use insufficient to demonstrate that trade mark does in fact distinguish – application rejected

Background

1.     On 18 May 2016 Mantra IP Pty Ltd (‘the Applicant’) filed an application (‘the Application’) to register the trade mark BALÉ (‘the Trade Mark’) in respect of certain services in Classes 39 and 43. The Application is a divisional application, the parent of which is trade mark number 1681510 (‘the Parent’).

1. The Application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’) and on 1 June 2016 the examiner issued an adverse report. The report indicated that the examiner considered there was a ground for rejecting the application based on s 41 of the Act. The examiner stated that as ‘BALE’ is the name of geographical locations in Croatia and Ethiopia other traders are likely to need to use the Trade Mark in connection with services similar to many of the Applied for Services. The examiner also indicated that there were some issues with the classification of the services in Class 43. The examiner suggested a number of amendments—being deletions—to the services to overcome the s 41 ground for rejection, and other amendments to overcome the classification issues.

2. The Applicant responded to the adverse report by correspondence dated 28 June 2016. The Applicant’s response was prepared and filed by the Applicant’s representatives King & Wood Mallesons. In its submissions—which I will come to in due course—the Applicant has requested that I take the response into account. The Applicant’s submissions also request that I take into account responses made to adverse reports in respect of the Parent.

3. The following sentence appears at the bottom of the last page of the abovementioned documents: ‘This communication and any attachments are confidential and may be privileged.’ The Applicant has requested a hearing on the written record in respect of this matter. To paraphrase the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd,[1] it is not clear to me how I could decide this matter without discussing the Applicant’s submissions and the various responses to relevant adverse reports. Seemingly barred from any discussion of those documents my hands would appear to have been effectively tied and the Applicant doomed to failure. This position is obviously extreme since the Applicant has filed its submissions and must expect them to be discussed and considered. I will proceed on the assumption that the words regarding confidentiality and privilege which appear on the Applicant’s submissions have been included, without any specific consideration as to their necessity or potential impact in this matter. I will also assume that given the request that I take account of them, the Applicant expects that I will discuss the Applicant’s responses to the adverse reports mentioned above.

   [1] [2008] ATMO 17, [5]-[6] (Thompson).

   5.     The Applicant’s response to the first adverse report requested that the services be qualified, rather than amended by deletion of services as suggested by the examiner. The Applicant requested that both classes have the following qualification appended to them:

   none of the foregoing related to services provided in respect of any places located outside of Australia called ‘Bale’

   As the examiner considered the amendment requested by the Applicant did not overcome the ground for rejection the amendment was not made.[2] The response did not address the classification issue raised in the first report.

   [2] This conforms to the usual Office practice.

   6. The examiner responded with a second adverse report which indicated that she was not satisfied that the amendment overcame the ground for rejection because ‘[c]onsumers are not in a position to know that such a restriction is placed on [the Trade Mark]’. The examiner also indicated that such an amendment would give rise to a ground for rejection pursuant to s 43 of the Act because:

   the word BALE in relation to the Applicant’s services connotes that the services are in relation to the overseas location BALE. Use of BALE on services other than those relating to the overseas location BALE would be deceptive or result in confusion.

   7.     The Applicant’s response to the first adverse report of the Parent included a Statutory Declaration made on 11 April 2016 by Michelle Elizabeth Moret Lalli, the Group Asset Manager of the Applicant, with Exhibits MEML-1 to MEML-5 (‘the Lalli Declaration’).

   8. On 26 October 2016 the Applicant requested a hearing by way of written submissions on the matter as provided for by s 33(4) of the Act. The Applicant provided written submissions in accordance with directions issued by me on 28 October 2016. As well as addressing the s 41 ground for rejection the Applicant indicated its acceptance of the amendment to overcome the classification issues which was proposed by the examiner in the first report. I have amended the specification accordingly and the amended specification appears in Annexure A (‘the Applicant’s Services’).

   9.     In considering my decision in this matter it came to my attention that there exists a province in Burkina Faso by the name of Balé. This geographical location had not been referred to by the examiner in her reports. As I considered this location to be of particular relevance I provided the Applicant with an opportunity to provide supplementary written submissions concerning the location. King & Wood Mallesons provided those submissions on behalf of the Applicant on 20 January 2017.

   The Law in Respect of s 41

   10. Section 41 of the Act provides:

   41 – Trade Mark not distinguishing applicant’s goods or services

   (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:      For goods of a person and services of a person see section 6.

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)This subsection applies to a trade mark if:

   (a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)This subsection applies to a trade mark if:

   (a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)the time of production of goods or of the rendering of services.

   Note 2: For goods of a person and services of a person see section 6.

   Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1: For applicant and predecessor in title see section 6.

   Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

   11.     The case law setting out the necessary considerations for determining whether a sign is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington said:

   The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire.[3]

   [3] (1913) AC 624, 634-5.

   12.     In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

   [W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[4]

   [4] [1964] HCA 55, [5] (‘Clark Equipment’).

   13.     There are a number of cases which have dealt with the distinctiveness of signs which have a geographical signification. Clark Equipment is often cited in this regard. The words of Kitto J quoted above were made in the context of the word ‘Michigan’—a state of the United States of America—which the applicant in that case sought, unsuccessfully, to register in connection with earth‑moving equipment and the like. Kitto J continued after the passage above to state:

   The fact that this is the test is the basic reason for the frequent refusal … to register as a trade mark a word of prima facie geographical signification. It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur. This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as "North Pole" in connexion with bananas, or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification. …

   The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place on in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods; there is necessarily great difficulty in proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting registration will not be to deny the word to a person who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make.[5]

   [5] Ibid [6]-[7] (citations omitted).

   14.     After referring to a number of earlier English authorities, Kitto J continued:

   [T]here is a category of words which are so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration, and that among such words are the names of large and important industrial towns or districts, and also of smaller towns and districts if they are a seat of manufacture of the goods for which registration is sought.[6]

   [6] Ibid [7].

   15.     Another case frequently referred to in respect of signs with geographical significations is the Oxford case.[7] In that case Gummow J stated:

   The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.[8]

   [7] Chancellor, Masters and Scholars of the University of Oxford v the Registrar of Trade Marks [1990] FCA 175.

   [8] Ibid [41].

   16.     The Applicant has referred me to more recent authority to be found in Cantarella Bros v Modena Trading.[9] In that case the High Court indicated that the test for distinctiveness is a two step process. The first step being to determine the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the goods, then having determined the answer to that question to consider the likelihood of the sign being needed by other traders.

   [9] [2014] HCA 48.

   17.     The cases discussed above considered signs intended to be used in connection with goods. Nevertheless, the case law is equally relevant where services are concerned. In the present matter we are concerned with services most of which can be described broadly as accommodation, booking and sundry services provided for travellers and holiday makers. For the sake of simplicity I will refer to services of this type as ‘tourism services’. In connection with tourism services a sign with a geographical signification is likely to be seen simply as indicating a destination for travellers or that the services are to be provided from that location. It is clear that signs such as London, Paris, New York, Canada, Ontario and Burkina Faso simply signify locations to which travellers may wish to travel, to book accommodation for a holiday, or to obtain travel information about (as examples). Such signs are likely to be needed by many traders of tourism services.

   The ordinary signification of BALÉ

   18.     What then is the ordinary signification of the Trade Mark? In its Original Submissions the Applicant submitted:

   From the viewpoint of the vast majority of the relevant consumers, the mark would simply be seen as a foreign word of indeterminate meaning. Consumers may see it as a French word without knowing what it means. A consumer seeing the mark in the context of the services applied for here would not ‘stop and translate’, as that is not how consumers think. They would take the mark as they find it. …

   [The Trade Mark] has no translation or meaning, as it is an invented word. The ordinary signification would reflect this – we submit that the ordinary signification would be a meaningless foreign word, potentially of French origin.

   19.     As it happens, ‘Balé’ is a Portuguese word meaning ‘ballet’. It is also the name of one of the 45 provinces of Burkina Faso known for its Deux Balé Forest which is populated by savannah elephant herds.[10] Other than the information in the previous sentence, there is nothing before me to indicate that the province of Balé is currently a likely destination for tourists or travellers from Australia. On this point, in its supplementary submissions, the Applicant submitted:

   We submit that the ordinary signification of the word BALÉ in the eyes [of consumers] would not be to the province of Burkina Faso.

   We have been unable to locate any information regarding the number of Australian tourists to Burkina Faso or (more particularly) Balé in Burkina Faso. However, we submit that the Registrar can reasonably infer, by virtue of the relative obscurity of this province to an Australian audience, that the number of travellers who would be interested in a holiday would be an extraordinarily small subset of the relevant consumer base.

   We submit that the number of Australians visiting Balé, Burkina Faso, and therefore the number of consumers who would understand the ordinary signification of the mark to mean ‘Balé, Burkina Faso’, would be very low. The Applicant, a large and sophisticated hotel operator, was not aware of the place until the Hearing Officer brought it to our attention. We were not aware either, and neither was the original examiner. It is submitted it is not a well-known destination for Australians. …

   Accordingly, the ordinary signification of the word BALÉ to persons interested in the applicant’s services is very unlikely to be the obscure province of Balé in Burkina Faso. It is much more likely that a trader would consider the ordinary signification of the word to be a foreign word of indeterminate meaning, likely of French, Italian or Spanish origin. …

   We submit that it would be an absurdity (and contradictory to the Cantarella decision) if every geographical location – no matter how distant from the mind of the relevant audience – would be held to be not capable of distinguishing the Applicant’s services. Balé in Burkina Faso is far removed from the relevant Australian audience.

   [10] Balé Province (15 Dec 2016) Wikipedia < assessing the ordinary signification of a word it is important that the persons who will purchase, consume or trade in the goods or services are identified. Asking ‘the man on the Clapham omnibus’ will not necessarily yield useful results. The word ‘EUTECTIC’, for example, is unlikely to have any signification at all for nearly the entire population of Australia, yet that term entirely lacks inherent adaptation to distinguish certain goods.[11] Equally, that to the man on the Clapham omnibus ‘BALÉ’ has no ordinary signification is not particularly instructive. Africa is a well-known destination for wildlife tourism. Of especial interest to some tourists are ‘the Big Five’ which is a set of five different African animals, one of which is elephants. It is reasonable to suppose that, if it is not already, in the future Balé may well become a recognised destination for those people hoping to catch a glimpse of the elephants that live there. Should this occur, the ordinary signification of Balé, to persons wishing to travel to Africa to see elephants, is that Balé is a geographical location where elephants can be seen.[12]

   [11] Eutectic Corporation v Registrar of Trade Marks (1980) 32 ALR 211.

   [12] This is not to suggest that there is no other reason a person might wish to visit Balé.

   What is the likelihood that other traders will want to use Balé?

   21.     The second limb of Cantarella requires an assessment of the likelihood that other traders would want to use Balé in connection with tourism services. The Applicant has submitted the following:

   The likelihood of a trader thinking of BALÉ and wanting to use it in connection with similar services in any manner which would infringe a registration for BALÉ, is we submit very low. …

   As highlighted in our previous submissions, both Kenny J in Sports Warehouse Inc v Fry Consulting Pty Ltd[13] … and French J (as he then was) in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks[14] emphasised that the needs of other traders are better assessed where there is evidence of use.

   We have not identified any use of BALÉ by traders who provide the relevant services. We note that the examiner did not identify any use of BALÉ by traders (either generally, or particularly with reference to the province in Burkina Faso).

   [13] [2010] FCA 664, [102].

   [14] [2002] FCAFC 27, [50].

   22.     The Applicant’s submissions certainly have their appeal. In particular, that it would be absurd for every geographical location to be held to lack inherent adaptation to distinguish tourism services is persuasive. I am also persuaded that, at this time, Balé is seemingly unknown as a destination for tourists. However, to paraphrase the words of Kitto J from Clark Equipment which were reproduced above, if it is reasonable to suppose that tourism services may be provided in connection with Balé in the future, the Trade Mark cannot be considered to distinguish the Amended Services from the services of other traders. I am satisfied that such an assumption is reasonable, and on that basis the Trade Mark is not to any extent adapted to distinguish the Amended Services and, therefore, a ground for rejecting the application exists under s 41.

   Can the application be accepted on the basis of acquired distinctiveness?

   23.     There exists the potential to accept the Application on the basis of the Applicant’s use of the Trade Mark if that use shows that the Trade Mark has acquired distinctiveness in relation to the Applicant’s Services. As the Trade Mark is not to any extent adapted to distinguish the Applicant’s Services the Application may still be accepted if the Applicant has used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact distinguish the Amended Services as being those of the Applicant.[15]

   [15] Trade Marks Act 1995 (Cth) s 41(3)(a).

   24.     The only evidence of use of the Trade Mark provided by the Applicant appears in the Lalli Declaration. That declaration provides the following background information:

   The BALÉ trade mark has been used in connection with two resorts: a resort located in Port Douglas, Queensland and a resort located in Kingscliff, New South Wales. …

   [The Parent] has been used continuously in connection with the services which are the subject of the Application by Mantra Group since at least May 2007. …

   Mantra Group continues to use the Trade Mark in respect of providing the services claimed in the Application, and intends to continue making extensive use of the Trade Mark in the future. …

   The Balé designation has been used for the Kingscliff Resort continuously since 2007. …

   25.     Neither the Applicant’s original submissions nor the supplementary submissions specifically addresses the question of whether the use of BALÉ by the Applicant would result in its distinguishing the Amended Services should the sign be found to lack inherent distinctiveness. The Lalli Declaration, however, contains the following statement:

   I believe that due to:

   (a)   the longstanding use of the Trade Mark by the Mantra Group (since at least 2007);

   (b)   the prior registered trade mark number 984586 that existed from 13 January 2004 until 7 August 2014 which was unintentionally allowed to lapse;

   (c)   the extensive amount of advertising conducted by Mantra Group using the Trade Mark since 2007;

   (d)   the varied forms of media Mantra Group has used to promote the Trade Mark;

   (e)   the amount of money spent by Mantra Group on advertising using the Trade mark, and the significant amount of revenue received from sales made under the Trade Mark,

   the marketplace in which Mantra Group does business, as well as the Australian public generally, closely associates the Trade Mark with Mantra Group and not a place in either Croatia or Ethiopia.[16]

   [16] The Lalli declaration [39].

   26.     Ms Lalli also stated:

   The Kingscliff Resort is often called ‘Peppers Balé Salt’ to denote its location in the Salt Precinct. More commonly, however, the Kingscliff Resort is referred to simply as ‘Balé’ or ‘Peppers Balé’.

   A screen shot of the Tripadvisor page of the Kingscliff Resort dated 29 March 2016 is attached as Exhibit MEML-1, which shows that guests who stay in the Kingscliff Resort commonly refer to it as ‘Balé’.

   27.     Exhibit MEML-1 to the Lalli declaration is some 19 pages long and appears to show what was on the web page if you were to scroll from the top to the bottom of the page. The heading on the page reads ‘Peppers Bale Salt’. I note that the diacritic which appears above the ‘e’ in the Trade Mark is absent. There are instances where reviewers who have posted comments on the web page refer to the resort as ‘Bale’. There are also instances in posts where it is referred to as ‘Peppers’, ‘Peppers Resort’, ‘the Bale section of Peppers Resort’, ‘Peppers Bale’, ‘Peppers Bale Salt’, ‘Peppers BALE Kingscliff’ and ‘Peppers on Salt’. The map provided on the page is headed ‘Near Peppers Bale Salt’. In the ‘Official Description (provided by the hotel)’ the resort is referred to as ‘Peppers Bale Salt’ with references also to ‘Peppers Bale apartments’ and ‘Bale guests’. There are no apparent uses of ‘Bale’ in the exhibit which contain the diacritic.

   28.     Exhibit MEML-2 is declared to be ‘a fact sheet dedicated to the Kingscliff Resort, which is printed in paper form and also published on Mantra Group’s websites’. The fact sheet bears the heading ‘Peppers at your fingertips’ in a large font at the top of the first page. Below the heading is a photo, presumably of the resort, below which appears the following graphics:

Within the fact sheet there are references such as ‘Suites at Peppers Balé Salt’ and ‘One bedroom Balé Spa Suite’. The map provided is labelled as ‘Peppers Balè Salt’. I note that in the left hand graphic above and in the label on the map, a diacritic which is a grave accent is used, rather than the acute accent which appears in the Trade Mark. There is no indication where (in the case of the printed fact sheet), when, to whom, or in what quantities the fact sheet was distributed.

29.     Exhibit MEML-3 is declared to be an example of ‘a direct marketing campaign … to celebrate the opening of Balé Port Douglas in May 2007’. There is also no indication where, when, to whom, or in what quantities the fact sheet was distributed. This exhibit contains a single page flyer which contains a small amount of text which begins with:

Set within the idyllic, tropical landscape of Port Douglas in Far North Queensland, Peppers Balé Resort (opening May 07) blends the invigorating elements of nature right into its immaculately finished living spaces.

The exhibit also contains the following graphics:

30.     Exhibit MEML-4 is declared to be a location map which Mantra Group gives to guests and prospective guests to demonstrate the location of the Port Douglas resort. There is no further detail regarding distribution of the map. Part of the map is shown below:

31.     The Lalli declaration also includes confidential information regarding the number of visitors to ‘the Peppers website’ and ‘the Kingscliff Resort website’. Ms Lalli has declared:

The Trade Mark is used on the main Peppers website and the Balé Resort within the Salt Precinct in Kingscliff website to enable customers to book rooms. An example of the Trade Mark used on the booking page of the website is attached as Exhibit MEML-5.

32.     Exhibit MEML-5 contains 6 pages. The first page contains the graphic shown below at the top of the page and the text heading ‘Peppers Salt Resort & Spa’.

Along with references to other types of rooms and apartments such as ‘One Bedroom Spa Plunge Suite’ and ‘Two Bedroom Spa Suite’, there are references to ‘One Bedroom Balé Apartment’, ‘Two Bedroom Balé Apartment’, ‘Three Bedroom Balé Apartment’ and ‘Two Bedroom Balé Penthouse’. The references to the apartments just given appear to be the only use of ‘Balé’ in the exhibit.

33.     Ms Lalli has also declared that the Kingscliff Resort is very well known in Australia ‘as it is a leading luxury resort’, and that the Trade Mark is clearly visible on the building itself, and on other prominent signage. There are no exhibits referred to specifically to support these statements.

34.     While the Lalli declaration does show some use of the word ‘Balé’ in connection with its services, it is most commonly used in connection with other material. To that extent it may be viewed as a ‘limping’ trade mark of the type referred to by Jacobs J. In Philips Electronics NV v Remington Consumer Products, His Honour observed:

[W]hat we have here is a kind of ‘limping mark’, always used with what is obviously a proper trade mark The same was true of TREAT which was always used with SILVER SPOON. Neither sign was ever used by the proprietor on its own. And that was evidence of a lack of a capacity to distinguish. I do not of course say that you cannot have two trade marks used for the same goods, or that a part of a sign—a ‘subsign’—cannot also be a trade mark: both FORD and FIESTA are obviously valid marks. But there are these other cases, where the sign proffered as a valid mark cannot really stand up on its own.[17]

[17] (1998) 40 IPR 279, 301.

35.     In any case, the use shown falls well short of that required to satisfy the Registrar that the Trade Mark, does in fact distinguish the Applicant’s Services as being those of the Applicant. The Applicant has failed to satisfy the Registrar that the Application should be accepted notwithstanding the Trade Mark’s lack of inherent adaptation to distinguish its services.

Decision

36. I am satisfied that there exists a ground for rejecting the Application under s 41 of the Act, and that the Applicant’s use of the Trade Mark is not sufficient to satisfy the Registrar that the Trade Mark has become distinctive of the Applicant’s Services. Accordingly I reject the Application.

Robert Wilson
Hearing Officer
Trade Marks & Designs Hearings
7 February 2017

Annexure A

The Applicant’s Services

Class 39:
Holiday travel reservation services; advisory services relating to travel; agency services for arranging travel; arrangement of travel; booking agency services for travel; computerised reservation services for travel; consultancy for travel; information services relating to travel; provision of information relating to travel; provision of tourist travel information; provision of travel information; reservation services for travel; ticket booking services for travel; tourist travel reservation services; travel agents services for arranging travel; travel information services; travel reservation; computerised reservation services for travel; computerised transport information services; luggage storage services; organising of excursions; parking of cars; parking services for vehicles; provision of parking facilities; reservation services for tours; services for the arranging of excursions for tourists; tour organising; and arranging rental of cars

Class 43:
Hotel and resort services; accommodation reservations; provision of temporary accommodation including hotel, motel, apartment and resort; provision of temporary accommodation; booking services for accommodation; rental of temporary accommodation; accommodation reservations; temporary accommodation management services; provision of food and drink; restaurant services; reservations (temporary accommodation); hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings; accommodation letting agency services (holiday apartments); arrangement of accommodation for holiday makers; arranging holiday accommodation; holiday home services (accommodation); holiday information (accommodation); holiday lodgings; holiday planning (accommodation); letting of holiday accommodation; provision of self catering holiday accommodation; reservation of places at holiday resorts; travel agencies for arranging accommodation; travel agency services for booking accommodation; travel agency services for making hotel reservations; accommodation finding services for tourists and travellers; accommodation letting agency services (holiday apartments and hotels); accommodation reservation services; arranging holiday and temporary accommodation; booking of accommodation for travellers; booking services for accommodation; hospitality services (accommodation); information services relating to the provision of temporary accommodation; letting of holiday and tourist accommodation; providing information, including online, about services for providing food and drink, and temporary accommodation; provision of self catering holiday or temporary accommodation; and resort accommodation