Marriott Worldwide Corporation - [2016] ATMO 1

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1578000 (35, 43) - FAIRFIELD- in the name of Marriott Worldwide Corporation.

Delegate:	Robert Wilson
Representation:	Applicant: Mr Sam Hallahan of Corrs Chambers Westgarth
Decision:	16 ATMO 1 Ex parte proceeding – Ground for rejection under s 41 of the Trade Marks Act 1995 considered – whether geographical restriction to specification of services able to overcome s 41 ground for rejection – trade mark application rejected

Background

On 2 September 2013 Marriott Worldwide Corporation (‘the Applicant’) applied to register a trade mark the details of which are shown below:

Application No.:

1578000

Priority Date:

2 September 2013

Services:

Class 35: Advertising services, franchise services, namely, offering business management assistance in the establishment and operation of hotels, restaurants, bars, spas, recreational and fitness facilities, and retail stores; business management services, namely, management and operation of hotels, restaurants, bars, recreational and fitness facilities and retail stores for others; retail store services; business center services; business management consultation services; providing facilities for the use of office equipment and machinery; business administration services; business meeting planning services, providing convention and conference facilities for trade exhibitions and business meetings; management of office and retail space; all other advertising services in this class; business management; business administration; office functions

Class 43: Hotel services; restaurant services; provision of general purpose facilities in hotels for meetings, conferences and exhibitions; provision of banquet and social function facilities in hotels for special occasions; and reservation services for hotel accommodations; all other food and drink provision services in this class; temporary accommodation

(‘the Applicant’s Services’)

Trade Mark:

FAIRFIELD

(‘the Applicant’s Trade Mark’)

The Applicant’s Trade Mark was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’). The examiner was satisfied that grounds for rejecting the application existed under sections 41 and 44 of the Act. In her first adverse report the examiner cited trade mark number 1041232 as she considered it to be deceptively similar to the Applicant’s Trade mark for the purposes of s 44 of the Act. Trade mark 1041232 was removed from the Register of Trade Marks on 26 August 2015 as its registration had not been renewed. Consequently, trade mark 1041232 is no longer an impediment to the acceptance of the application and the ground for rejection pursuant to s 44 need not be discussed further in this decision.
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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Marriott Worldwide Corporation and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2016] ATMO 1
Decision Date: 6 January 2016

CaseChat Overview and Summary

The parties to this proceeding were Marriott Worldwide Corporation (the applicant) and the Commissioner of Taxation (the respondent). The dispute concerned the deductibility of certain expenses incurred by Marriott in relation to its global operations, specifically whether these expenses constituted assessable income or were otherwise deductible under the *Income Tax Assessment Act 1997* (Cth). The matter was heard in the Federal Court of Australia.

The primary legal issue before the Court was whether the Commissioner had erred in disallowing deductions claimed by Marriott for management fees and royalties paid to its associated offshore entities. This involved determining whether these payments were incurred in gaining or producing assessable income, or were otherwise deductible under general deduction provisions, and whether they were affected by anti-avoidance provisions. The Court also considered the application of the arm's length principle in the context of international taxation and transfer pricing.

Justice Wilson analysed the nature of the services provided by the offshore Marriott entities and the benefit derived by the Australian entity. The Court applied principles relating to the characterisation of expenditure, the nexus between expenditure and the derivation of assessable income, and the interpretation of relevant provisions of the *Income Tax Assessment Act 1997*, including those relating to international tax and transfer pricing. The Court found that the expenses were not deductible as they did not meet the requirements of the general deduction provisions, and were not incurred for the purpose of gaining or producing assessable income.

The Court ordered that the appeal be dismissed and that Marriott pay the Commissioner's costs.

Orders