Nomads World Hotels Pty Ltd v Nomad Group Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Nomads World Hotels Pty Ltd to registration of trade mark application number 2225219 (class 43) - Nomad (fancy) - in the name of Nomad Group Pty Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Gorton IP

Applicant: Stephen Rebikoff, Senior Counsel, instructed by Fiona Brittain of Gilbert + Tobin

Decision:

2025 ATMO 44

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 44, 42, 43, 58, 58A, 60 and 62A – deceptively similar trade mark in respect of similar services – s 44(3)(a) not applicable – registration refused.

Background

On 3 November 2021 (‘Relevant Date’) an application under the Trade Marks Act 1995 (Cth) (‘Act’) was made in the name of Nomad Group Pty Ltd (‘Applicant’) for a trade mark with the following details:
Priority date: 3 November 2021
Trade mark number: 2225219
Trade mark:
(‘Trade Mark’)
Specification: Class 43: Inn keeping (bar and restaurant)
(‘Applicant’s Services’)
Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.; Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.
The Trade Mark was examined under s 31 and acceptance was advertised on 20 July 2022.
On 12 August 2022, Nomads World Hotels Pty Ltd (‘Opponent’) filed its Notice of Intention to Oppose and its Statement of Grounds and Particulars (‘SGP’) followed on 13 October 2022. The Applicant filed its Notice of Intention to Defend on 28 October 2022.
On 21 February 2023, the Opponent filed its Evidence in Support (‘EIS’), consisting of a declaration of Michelle Gorton, Lawyer for the Opponent, made on 21 February 2023 (‘Gorton-1’).
Gorton-1 lists Annexures A to H (‘Annexures’). However, none of these Annexures appear to have been filed with Gorton-1. On 21 February 2023, the Opponent also filed a request for an extension of time (‘EOT’) to file its EIS. On 22 February 2023, the Opponent filed material additional to the EIS, purportedly being the Annexures. After being afforded the opportunity to make submissions on the matter, on 21 September 2023, a delegate of Registrar of Trade Marks (‘Registrar’) refused the request for the EOT for the filing of the EIS.
On 28 September 2023, the Applicant filed its Evidence in Answer (‘EIA’) consisting of a declaration of Fiona Brittain, dated 28 October 2023, with Exhibit FMB-1. Exhibit FMB-1 consists of a declaration of Rebecca Yazbek, Director of the Applicant, dated 24 June 2022, with Exhibits RY-1 to RY-37 (‘Yazbek’).
On 21 February 2024, the Opponent filed its Evidence in Reply (‘EIR’) consisting of a declaration of Michelle Gorton, lawyer for the Opponent, dated 21 February 2024 with Annexures A to C (‘Gorton-2’).
The parties were afforded the opportunity to be heard. The Opponent did not request to be heard though the Applicant did. I heard the matter on 4 December 2024 by teleconference. The Applicant was represented by Stephen Rebikoff SC, instructed by Fiona Brittain of Gilbert + Tobin.
Onus and grounds
The SGP nominated grounds of opposition under ss 44, 42, 43, 58, 58A, 60 and 62A.
The Opponent bears the onus of establishing one or more of the grounds of opposition[1] on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is the Relevant Date.[3]
Evidence
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).
EIS
Gorton-1 consists of various statements about the activities of the Opponent. These statements reference various Annexures which are not contained in the declaration. Accordingly, the statements made in Gorton-1 are not corroborated by other evidence. Gorton-1 also refers to various websites where it states that the trade marks of the Opponent are featured in advertising.
The Opponent is the owner of various registered trade marks (‘Opponent’s Trade Marks’) which contain the word ‘NOMAD’, details of which I extract at Schedule 1 to these written reasons. A strong reputation in the trade marks is asserted in Gorton-1.
I do not otherwise summarise the statements in Gorton-1.
EIA
The Applicant operates two restaurants under the Trade Mark; one is in Sydney and the other in Melbourne. The Opponent has used the Trade Mark for a decade and has built a profile for its restaurants which is recognised by a number of persons. The restaurants known by the Trade Mark have received recognition in various publications and the Applicant has expended substantial amounts of money promoting its business. Articles have recognised the restaurant as one of the best in Sydney and describes it as much feted.
The turnover of the business under the Trade Mark is significant and the restaurants have substantial visitors.
EIR
Gorton-2 consists of various arguments made in paragraphs [1] to [9]. Nothing turns on the remainder of the contents of Gorton-2 and I do not further summarise its contents.
Consideration
Section 44
The Opponent relies on s 44 which relevantly provides:
44 Identical etc. trade marks
…
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
…
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
For its s 44 ground of opposition, the Opponent by its SGP relies on the Opponent’s Trade Marks. For reasons that will be evident later in these written reasons, I need only refer to trade mark 622471.
For ease of reference, I reproduce the details of trade mark 622571 below:
Owner:  Nomads World Hotels Pty Ltd
Trade mark number:              622471
Priority:   14 February 1994
Trade mark:
(‘622471’)
Specification:   Class 42: Hotel services in this class, including accommodation services and the provision of food and beverages (‘Opponent’s Services’)
Trade mark registration 622471 has an earlier priority date to that of the Trade Mark and is in the name of a person other than the Applicant.
Similarity of services
I must next consider whether the Applicant’s Services are similar to the Opponent’s Services. Section 14(2) relevantly provides that ‘services are similar to other services… (a) if they are the same as the other services; or (b) if they are of the same description as that of the other services’.
What I must consider is the language of the specifications of each of the Trade Mark and 622471. I cannot ignore any of the words in the language of the specification. I consider the presence of ‘bar and restaurant’ to be of at least some limiting effect. However, the presence of the word ‘inn-keeping’ must also have some effect. The word ‘inn’ is defined as, ‘noun 1. a small hotel that provides lodging, food, etc., for travellers and others…. 2. British a tavern.’[4] My assessment is that the Opponent’s ‘hotel services in this class, including accommodation services and the provision of food and beverages’ notionally includes services which are similar to those of inn keeping services in the nature of food and beverage provision. I note that sometimes, public houses in Australia carry as an element of their names, the word ‘inn’. Whilst in some contexts the word ‘inn’ might refer to, for example, an old fashioned tavern, being specifically a public house, the ordinary commercial meaning of ‘inn’ is that it is a place where traveling persons can find lodging, food and beverages, such as a ‘bed and breakfast inn’. These services would come within the description ‘hotel services’.
[4] Macquarie Dictionary (Online, accessed 18 December 2024) (‘inn’).
In Watermark Restaurant Pty Ltd v Watermark Hotel Group Pty Ltd (‘Watermark Restaurant’) the delegate decided that temporary accommodation and related hotel services (not being provision of food and drink) and restaurant services as such were not similar services.[5] However, the language at hand is more specific than that in Watermark Restaurant. I read the language of the Applicant’s Services as being bar or restaurant offered as part of broader hotel inn-keeping services. The language appears to refer to a bar and restaurant as an incident of inn-keeping not as, for example, the style of a bar and restaurant. The Opponent’s Services are a kind of hotel service which I consider to, if not include the Applicant’s Services, at least refer to services which have a very similar nature, use and trade channels. Therefore, they would at least be of the same description.
[5] [2002] ATMO 42 (Hearing Officer Ryan).
For these reasons, I am satisfied that the Opponent’s Services are similar to the Applicant’s Services.
Comparison of trade marks
I now turn to the comparison of the trade marks. The trade marks have a number of differences on a side by side comparison, including the inclusion of the depiction of a camel, pluralisation in the word ‘NOMADS’ and slight differences in font in 622471. These elements are not present in the Trade Mark. A total impression of dissimilarity emerges on a side by side comparison. Accordingly, I next consider whether the trade marks are deceptively similar.
In deciding whether two trade marks are deceptively similar a number of considerations are applicable. What I must compare are the respective whole trade marks,[6] with regard to essential or distinguishing features,[7] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[8] Any actual reputation of a trade mark or an owner is not relevant. Rather, the effect and meaning of the trade marks is of importance,[9] especially their effect or impression produced on the mind of ordinary consumers.[10] I must also account for imperfect recollection of those ordinary consumers. Ultimately, what is required is a real tangible danger of confusion.[11] That is, ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … come from the same source’.[12] Actual instances of deception or confusion can be of great weight though they are not required for a finding of deceptive similarity.[13]
[6] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J) (‘Woolworths’). See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).
[7] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).
[8] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).
[9] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).
[10] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[11] Southern Cross (n 3); Woolworths (n 6) [50] (French J); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[12] Woolworths (n 6) 382 (French J); Southern Cross (n 3) 594-595. See also, Australian Woollen Mills (n 10) 658.
[13] Self Care (n 9) [29]; Australian Woollen Mills (n 10) 658.
At the hearing, Counsel for the Opponent referred me to The Agency Group Australia Ltd v HAS Real Estate Pty Ltd (‘The Agency Group’) where the Full Court of the Federal Court affirmed the decision of the primary judge, Jackman J, in finding that trade marks which contained the word ‘agency’ in respect of a range of real estate services were not deceptively similar.[14] In doing so, the Full Court gave some emphasis to the stylisation present in the respective trade marks.[15] My assessment is that a reading of the The Agency Group should be informed by the additional reasons offered by Jackman J in the primary decision. That is, that the trade marks shared as a main element a highly descriptive word.[16] It is in those circumstances that the comments of the Full Court should be understood where it refers to the stylisation.
[14] The Agency Group Australia Ltd v HAS Real Estate Pty Ltd [2023] FCAFC 203 (Yates, Markovic and Kennett JJ).
[15] Ibid, [55]-[56] and [78].
[16] The Agency Group Australia Limited v HAS Real Estate Pty Ltd [2023] FCA 482, [72]-[73].
The Trade Marks each contain as their main identifying element the word ‘NOMAD’. The word ‘NOMAD’ is the most prominent element and is more adapted to distinguish the services in question than the words forming the trade marks in the scenario in The Agency Group. I consider it likely that a person imperfectly recollecting 622471, would be caused to wonder whether there is a connection in the course of trade with the Trade Mark.
Accordingly, I am satisfied that the Trade Mark is deceptively similar to 622471.
Honest concurrent use
The Applicant submits that if I am satisfied that there is an earlier deceptively similar trade mark in relation to similar services, the discretion of the Registrar to accept the application under s 44(3)(a) should apply, based on evidence of honest concurrent use of the Trade Mark. The onus for establishing honest concurrent use and the applicability of s 44(3)(a) is with the Applicant.[17] Reliance should be made on circumstances before the Relevant Date to establish the applicability of s 44(3)(a).[18] The factors usually considered relevant include the honesty of adoption and use; the extent of use in terms of time, geographical area, and sales volume and value; the degree of likely confusion; the manner of use; the relative inconvenience caused by allowing or denying the registration of the Trade Mark; and any instances of actual confusion.[19] Knowledge of an earlier trade mark is not itself always necessarily fatal.[20]
[17] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [186] (Gleeson J) (‘Trident’); Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94, [147] (Lander J) (‘Hills Industries’); Telstra (n 2) [238].
[18] Hills Industries ibid [177]; Trident ibid [186].
[19] Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147, 159-160 (Lord Tomlin); Re Fitton’s Application (1949) 66 RPC 110, 112 (UK Reg), which have been widely adopted and applied in Australia.
[20] McCormick & Co Inc v McCormick [2000] FCA 1335 (Kenny J); Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226, 235 (CA); Joseph Rodgers & Sons Ltd v W N Rodgers & Co (1924) 41 RPC 277, 291 (Romer J).
The ‘honesty’ of adoption and use by an Applicant has been said to be the essential and most important factor, if not at least a crucially important factor.[21] The Full Federal Court has recently noted the importance of honesty.[22] What is required in terms of honesty is ‘commercial honesty’, which is no different to ‘common honesty’.[23] The Applicant should demonstrate that the honesty of adoption, and use of the Trade Mark, weighs in favour of an exercise of this discretion.[24] Some decided cases have featured an unhelpful lack of evidence or detail preventing honesty from being established and thereby impacting an applicant’s case for exercise of the discretion.[25] Delegates of the Registrar have also found that it is necessary for an applicant to be full and frank in its dealings with the Registrar in pursuing the application of s 44(3)(a).[26]
[21] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [103] (Greenwood, Jagot and Beach JJ); PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [58] (Carr J). See also, Re Granada Trade Mark [1979] RPC 303, 313 (UK Reg).
[22] Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 12, [135] (Nicholas, Jackson and Rofe JJ).
[23] Re Parkington & Co Ltd's Application (1946) 63 RPC 171, 182-3 (Romer J) (‘Re Parkington’).
[24] Medicon eG Chirurgiemechaniker-Genossenschaft v Medison Co Limited [2000] ATMO 12 (Hearing Officer Thompson) (‘Medicon’).
[25] FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764, [331] (Rofe J) (‘FanFirm’) where, ‘despite leading evidence from two senior employees of the respondent, the respondent led no evidence as to the existence of any honest belief that there would be no confusion as a result of the respondent adopting the same mark as the applicant’s existing marks’; The Grapevine BVBA v Are Media Pty Ltd [2021] ATMO 66, [32] (Hearing Officer Wilson), where a declaration in evidence made no mention of the surrounding circumstances concerning adoption of the applicant’s trade mark and only uncorroborated statements were made; Happy Skincare ATF Breckell Family Trust v Happy Slom Co Pty Ltd [2021] ATMO 16, [26] and [59] (Hearing Officer T Brown), where, ‘… the exact circumstances surrounding the adoption of the Trade Mark by the Applicant were not disclosed in the Applicant’s evidence’; Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [293] (Dodds-Streeton J) (‘Tivo’) where there was a failure to carry out investigations, seek professional advice or take reasonable precautions in relation to the adoption of the trade mark; and Medicon ibid, where there was silence on the reasons for adoption and circumstances around it.
[26] Chris-Telle Pty Ltd v Australian Swimming Inc [2004] ATMO 60, [39] (Hearing Officer Dunn). See also, Medicon (n 24).
The often cited statement of Romer J in In Re Parkington & Co Ltd's Application gives emphasis to the circumstances regarding adoption of a trade mark: ‘[t]he circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user.’[27] The hallmarks of honesty are said to be independent adoption without any intent to appropriate the reputation or goodwill of a third party and an honestly held belief that there would be no confusion as a result of the respondent adopting the same mark as the applicant’s existing marks.[28]
[27] Re Parkington (n 23) 181-182 (Romer J).
[28] FanFirm (n 25) [330]-[331].
There is also said to sometimes be an obligation to take reasonable care and diligence to undertake precautions to ascertain the ability to use a trade mark.[29] Some decisions have noted that a basic part of commercial honesty has involved the conduct of basic enquiries as to the earlier rights of other traders.[30] Some of these decisions also go further than exploring whether inquiries have been made and discuss the quality of inquiries that have been made by relevant persons before the adoption of a trade mark.
[29] Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235 (Beach J) (‘Flexopack’).
[30] Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369 (Anderson J); Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [103] (Greenwood, Jagot and Beach JJ); Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406, [124]-[125] (Davies J) (‘Insight Radiology’). See also, Firstmac Limited v Zip Co Limited [2023] FCA 540 (Markovic J) where whilst there was not a search of the Register of trade marks there appears to have been at least some internet searching conducted by relevant persons. The Court found that there was honest use of the relevant trade mark.

I also note the comments of O’Callaghan J in The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd where the extent of the searches conducted was at issue:
In my view, a person in the respondent’s position acting honestly and reasonably would have conducted far more extensive and thorough searches than [the witness] says he did to ensure that his chosen name did not conflict with a registered trade mark.[31]
[31] The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd [2024] FCA 1299, [71] (O’Callaghan J).
In Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Insight Radiology’)[32] some focus of the Court’s attention included the contention that it was not honest to adopt the relevant trade marks. Justice Davies found that whilst the ‘evidence does not support a finding that [the relevant persons] knew about the use of similar marks by Insight Clinical Imaging before Insight Radiology commenced using the Radiology marks. … I do not think that it can be said that there has been honest concurrent use’.[33] In doing so, Davies J made reference to the decisions in Tivo Inc v Vivo International Corporation Pty Ltd where Dodds-Streeton J found that there had not been honest concurrent use in circumstances where, amongst other things, the applicant had failed to carry out an adequate search, seek professional advice or take reasonable precautions in relation to its adoption of a trade mark;[34] and Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd where Beach J considered that if a person does not take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark, and has in effect taken a risk, then the person is not acting in good faith in the sense of ‘honestly’ within the terms of the good faith ‘own name’ defence under s 122(1)(a) of the Act.[35]
[32] Insight Radiology (n 30).
[33] Ibid [125].
[34] Tivo (n 25) [293].
[35] Flexopack (n 29).
During the examination the Applicant filed evidence of its use of the Trade Mark and an examiner found it sufficient to establish honest concurrent use and apply s 44(3)(a). The Applicant relies on the same evidence in the present opposition.
Yazbek declares the following in respect of the origins of the Trade Mark:
In November 2012, the Applicant engaged the design agency, MAUD, to design the Trade Mark for use in respect of the Applicant’s Services.
The word ‘Nomad’ was chosen as the Applicant considered it was emblematic of how the Directors of the Applicant, myself and my husband, Alan Yazbek, travelled, and was further emblematic of the food and wine that was to be offered at the Applicant’s restaurants. The Applicant’s Mediterranean-style menu was not restricted in terms of its countries of inspiration but would draw inspiration from any country touching the Mediterranean Sea.
The design created by MAUD met the brief of ‘utilitarian meets luxury’ with the ‘A’ and ‘D’ letters being spaced as shown in the Trade Mark to convey that they are travelling across the page. In an earlier iteration of the Trade Mark used by the Applicant, the letters ‘A’ and ‘D’ had an indented outline, as shown on the depiction below:
…
In or about October 2013, the Applicant also commenced use of the current version of the Trade Mark in which the indented outlines of the letters ‘A’ and ‘D’ in the Trade Mark were removed…[36]
[36] Yazbek, [10]-[13].
Yazbek also declares:
The Trade Mark was honestly adopted by the Applicant. As far as the Applicant is aware, the Applicant and the owners of the Cited Marks have co-existed in Australia in relation to the promotion and sale of their respective Services for almost 10 years, without any instances of consumer confusion. I make this declaration conscientiously believing the statements contained in this declaration to be true and correct.[37]
[37] Yazbek, [40].
General statements that a trade mark was adopted honestly do not suffice for these purposes. Yazbek speaks only to the creation of the Trade Mark and that it was in fact adopted and does not address the hallmarks of honesty at the point of adoption. The evidence contains no direct statement about when and how the Applicant became aware of 622471 or whether the Applicant was aware of 622471 at the time that the Trade Mark was adopted. There also is nothing said about whether any checks were conducted by the Applicant or its representatives before the adoption and commencement of use of the Trade Mark, and if not, why such checks were not conducted. A reasonable person such as the Applicant would be likely to take some steps to assess whether there was an earlier trade mark in relation to the Applicant’s Services. Yazbek is silent about these matters and discusses only conception and creation of the Trade Mark, not its adoption.
Whilst some relevant factors may otherwise weigh in favour of the discretion being exercised, the essential element of honesty has not been established. My finding is not that the Applicant, or its operators, have been dishonest. Rather, that the explanation and evidence concerning the adoption of the Trade Mark is lacking in such a way that I am not satisfied that the crucial element of honesty was present at the relevant point in time.
For these reasons, s 44(3)(a) is not applicable.
Accordingly, the ground of opposition under s 44 has been established.
Decision and costs
Section 55 relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
The Opponent has established a ground of opposition under s 44. Accordingly, I refuse to register trade mark 2225219.
The Opponent has requested costs. It is normal for costs to follow the event. I see no reason to make an exception here. I award costs against the Applicant under s 221 in the amounts according to Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
4 March 2025
Schedule 1
Trade mark number:              622471
Filing:   14 February 1994
Trade mark:
(‘622471’)
Specification:   Class 42: Hotel services in this class, including accommodation services and the provision of food and beverages (‘Opponent’s Services’)
---
Trade mark number:              859465
Filing:   06 December 2000
Trade mark:
Specification:   Class 39: Travel agency services
---
Trade mark number:              1580860
Filing:   18 September 2013
Trade mark:
Specification:   Class 39: Advisory services relating to travel; Agency services for arranging travel; Agents for arranging travel; Arrangement of travel; Arranging of travel; Arranging of travel tours; Booking agency services for travel; Booking agency services relating to travel; Booking of seats for travel; Booking of tickets for travel; Consultancy for travel; Information services relating to travel; Issuing of tickets for travel; Itinerary travel advice services; Organisation of travel; Provision of information relating to travel; Provision of tourist travel information; Provision of travel information; Services for the arranging of travel; Services for the booking of travel; Ticket booking services for travel; Tourist agency services (travel); Travel agency services for arranging travel; Travel agency services for booking travel; Travel arrangement; Travel information services; Travel ticket reservation services; Travel tours and cruises
Class 43: Hostel services; Youth hostel services; Accommodation finding services for tourists; Accommodation finding services for travellers; Accommodation reservation services; Agency services for booking hotel accommodation; Agency services for the reservation of accommodation; Arrangement of accommodation for holiday makers; Arrangement of accommodation for tourists; Arrangement of accommodation for travellers; Arranging holiday accommodation; Arranging hotel accommodation; Arranging of temporary accommodation; Booking of accommodation for travellers; Booking of hotel accommodation; Booking of temporary accommodation; Booking services for accommodation; Holiday information (accommodation); Hotel accommodation reservation services; Hotel accommodation services; Inn keeping (bar, restaurant and accommodation); Providing information, including online, about services for providing food and drink, and temporary accommodation; Providing temporary accommodation; Provision of hotel accommodation; Provision of tourist accommodation; Reservation of accommodation for travellers; Reservation of accommodation in hotels; Reservation of hotel accommodation; Reservation of temporary accommodation; Reservation of tourist accommodation; Resort accommodation; Temporary accommodation; Temporary accommodation (hotels, motels, resorts) booking and reservation services provided in relation to a customer loyalty or frequent buyer scheme; Tourist agency services for booking accommodation; Travel agencies for arranging accommodation; Travel agency services for booking accommodation; Travel agency services for reserving accommodation; Travel agency services for reserving hotel accommodation
Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
---
Trade mark number:              1580867
Filing date:   18 September 2013
Trade mark:
Specification:   Class 39: Advisory services relating to travel; Agency services for arranging travel; Agents for arranging travel; Arrangement of travel; Arranging of travel; Arranging of travel tours; Booking agency services for travel; Booking agency services relating to travel; Booking of seats for travel; Booking of tickets for travel; Computerised reservation services for travel; Information services relating to travel; Issuing of tickets for travel; Itinerary travel advice services; Provision of information relating to travel; Provision of tourist travel information; Provision of travel information; Provision of travel services from customer loyalty and frequent buyer schemes; Reservation of seats for travel; Reservation services for booking seats (travel); Reservation services for travel; Seat reservation services for travel; Services for the arranging of travel; Services for the booking of travel; Ticket booking services for travel; Tourist agency services (travel); Tourist travel reservation services; Transport of travellers; Travel advisory services; Travel agency services for arranging travel; Travel agency services for booking travel; Travel arrangement; Travel booking and reservation services provided in relation to a customer loyalty or frequent buyer scheme; Travel information services; Travel reservation; Travel ticket reservation services; Travel tours and cruises
Class 43: Hostel services; Youth hostel services; Accommodation finding services for tourists; Accommodation finding services for travellers; Accommodation reservation services; Agency services for booking hotel accommodation; Agency services for the reservation of accommodation; Arrangement of accommodation for holiday makers; Arrangement of accommodation for tourists; Arrangement of accommodation for travellers; Arranging holiday accommodation; Arranging hotel accommodation; Arranging of temporary accommodation; Booking of accommodation for travellers; Booking of hotel accommodation; Booking of temporary accommodation; Booking services for accommodation; Hospitality services (accommodation); Hotel accommodation reservation services; Hotel accommodation services; Information services relating to the provision of temporary accommodation; Inn keeping (bar, restaurant and accommodation); Providing information, including online, about services for providing food and drink, and temporary accommodation; Providing temporary accommodation; Provision of hotel accommodation; Provision of information relating to the availability of accommodation; Provision of information relating to the booking of accommodation; Provision of temporary accommodation; Provision of tourist accommodation; Reservation of accommodation for travellers; Reservation of accommodation in hotels; Reservation of hotel accommodation; Reservation of temporary accommodation; Reservation of tourist accommodation; Resort accommodation; Temporary accommodation (hotels, motels, resorts) booking and reservation services provided in relation to a customer loyalty or frequent buyer scheme; Temporary accommodation reservation services; Tourist agency services (provision of temporary accommodation); Tourist agency services for booking accommodation; Travel agencies for arranging accommodation; Travel agency services for booking accommodation; Travel agency services for reserving accommodation; Travel agency services for reserving hotel accommodation
Endorsements:  Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
---
Trade mark:   1591591
Filing:   15 November 2013
Trade mark:
Specification:   Class 39: Advisory services relating to travel; Agency services for arranging travel; Arranging of travel; Arranging of travel tours; Travel agency services for booking travel
Class 43: Accommodation finding services for travellers; Booking of accommodation for travellers; Hotel accommodation services
Endorsement:   Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

[2025] ATMO 44

4 March 2025