Motel One GmbH v CSI DaniŞManlik Ve Destek HİZmetler&#304

This matter came before a delegate of the Registrar of Trade Marks concerning applications by CSI DANIŞMANLIK VE DESTEK HİZMETLERİ ANONİM ŞİRKETİ for the cessation of protection of two international trade marks registered in the name of Motel One GmbH. The applications sought removal of the trade marks from the Australian Register of Trade Marks on the grounds of non-use, specifically under sections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth).

The delegate was required to determine whether Motel One GmbH had demonstrated use of its trade marks in Australia during the relevant three-year period preceding the applications for removal. The legal issues centred on the interpretation of "use as a trade mark" and whether the evidence presented by Motel One GmbH established a sufficient connection in the course of trade between the trade marks and the services for which they were registered, or if circumstances existed that constituted an obstacle to such use.

The delegate found that while evidence indicated some use of the trade marks in relation to accommodation and catering services (classes 43 and 42), no use was demonstrated for the business consulting and franchising services (class 35). The delegate noted that the evidence of use for accommodation services, while showing Australian consumers accessing the Removal Opponent's website and generating revenue, lacked direct evidence of the trade marks being displayed on Australian-targeted websites or through Australian travel agents during the relevant period. Consequently, the delegate concluded that removals were partially established for both trade marks under section 92(4)(b) of the Act, leading to an amendment of the specifications of each trade mark to reflect only those services for which use had been proven.