Opposition by Iconic Hotels Group Pty Ltd to registration of trade mark application number 1927038 (class 36) – IH ICONIC HOTELS (stylised)- in the name of Geocon Distributions Pty Ltd

[2020] ATMO 194

TRADE MARKS ACT 1995

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

Re:Opposition by Iconic Hotels Group Pty Ltd to registration of trade mark application number 1927038 (class 36) – IH ICONIC HOTELS (stylised)- in the name of Geocon Distributions Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: Peter Wallis of Counsel instructed by David Hope and William Ho of Hope & Co Lawyers Applicant: Warwick Rothnie of Counsel instructed by Tristan Ferris and Michael Redpath of Geocon Distributions Pty Ltd
Decision:	2020 ATMO 194 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under section 58 and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. These reasons concern the extent of proprietary rights that may arise from limited use of the name of a company. This takes place in an opposition to registration of a trade mark, the details of which follow:

   Trade Mark:     (‘Trade Mark’)

   Specification of services:     Class 36:

   Management of property

   
   

   (‘Applicant’s Services’)

   Application number:           1927038

   Applicant:  Geocon Distributions Pty Ltd (‘Applicant’)

   Priority date:   23 May 2018 (‘Relevant Date’)

2. As required by the Trade Marks Act 1995 (Cth)[1] the Trade Mark was examined, accepted for possible registration and advertised for opposition purposes. Iconic Hotels Group Pty Ltd (‘Opponent’) filed a notice of intention to oppose registration of the Trade Mark on 17 December 2018 and a statement of grounds and particulars a month later. This office sent those documents to the Applicant, who responded with a notice of intention to defend the Trade Mark from this opposition. The parties then filed evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[2]

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth).

   [2] Trade Marks Regulations 1995 (Cth) reg 5.14. Each reference to a regulation in these reasons is a reference to a regulation of the Trade Marks Regulations 1995 (Cth).

3. The Applicant asked to be heard on the opposition, which the Opponent later advised it would attend. I heard the opposition on 16 September 2020 in my capacity as a delegate of the Registrar of Trade Marks. In attendance for the Opponent was Peter Wallis of Counsel instructed by David Hope and William Ho of Hope & Co Lawyers. Appearing for the Applicant was Warwick Rothnie of Counsel, who was instructed by Tristan Ferris and Michael Redpath, both in house legal counsel of the Applicant. Observing the hearing were two officers of the Applicant, Jasmine De Martin, Director of Marketing and Communications and Ryen Donkin, General Manager of Hotels.

Grounds and onus

1. The Opponent originally raised grounds of opposition under ss 43, 58 60 and 62A earlier in these proceedings. By the time of the hearing it had abandoned the ss 43 and 62A grounds. As such I find neither of those grounds established. At the hearing the Opponent confirmed that it sought to establish grounds of opposition under ss 58 and 60. The onus is on the Opponent to establish one of those grounds on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date.[4]

   [3] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

1. Three declarations were filed during the prosecution of this opposition:

   Evidence in support

   Dion Chandler, Managing Director of the Opponent, made 30 June 2019 with annexures DC-1 to DC-8

   Evidence in answer

   Jasmine De Martin, Director of Marketing and Communications of the Applicant, made 12 December 2019 with annexures JD-01 to JD-31

   Evidence in reply

   Dion Chandler, made 13 February 2020

2. In my discussion of the grounds below I have only referred to aspects of Mr Chandler’s first declaration. While his second declaration sought to correct certain statements in Ms De Martin’s declaration, I have not had to refer to the Applicant’s evidence. The Applicant’s evidence would have been more relevant to rebutting certain aspects of the Opponent’s now abandoned s 62A case, as well as aspects of s 60 that did not arise in my reasoning through the remaining grounds.

3. The Opponent was incorporated on 22 February 2013 and ever since has used its own name, Iconic Hotels Group Pty Ltd. At times it has omitted Pty Ltd from the name, using only Iconic Hotels Group. At other times it has incorporated aspects of its name into a byline such as ‘AN ICONIC HOTELS GROUP PROPERTY’. I refer to these below collectively as the Iconic Hotels Group formative marks. The evidence establishes that the Opponent’s main, possibly sole, business concern is the running of the Adelphi Hotel a boutique hotel and restaurant in Melbourne.

Discussion

Section 60

1. There are two limbs to this ground of opposition. At the Relevant Date another trade mark had a reputation, and because of that reputation use of the Trade Mark is likely to deceive or confuse. The level of reputation required will depend on the relevant market, but within that market there must be a ‘significant’ or ‘substantial’ reputation:

   For highly specialised products, awareness among a few thousand persons, or even less might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[5]

   [5] Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 50 IPR 1, 19-20 [91] (Heerey J)

2. While not an absolute requirement, it is common to infer this reputation from a combination of sales volumes and promotional expenditure.[6] Beyond the handful of invoices adduced to show continual use over a number of years rather than absolute sales, the Opponent has not offered much evidence of that sort. Another aspect of reputation attaches to the esteem projected by a mark.[7] On this angle the Opponent has led examples of glowing reviews and awards that the hotel has received. In particular, the Adelphi Hotel won national and state level awards in boutique accommodation categories in 2014-2016 and 2018.

   [6] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 129 [86] (Kenny J).

   [7] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436 (Hearing Officer Thompson)

3. But while the Opponent will have received this award as owner of the hotel, the awards were conferred upon the hotel itself. They were awarded for offering excellent boutique hotel services under an entirely different mark: the Adelphi Hotel. That the Opponent owns the Adelphi Hotel does not mean that the reputation for hotel and restaurant services offered therein would necessarily equate with its corporate owner. By choosing to trade under the Adelphi Hotel mark, the name of the Opponent is removed from the services on offer, obfuscating the connection between the owner and the brand. For the Opponent, at least in the present case, the esteem attaches to the wrong name. Even if I were to find some reputation did attach to an Iconic Hotels Group formative mark, that reputation would be so minimal that it could not satisfy the first limb of s 60. This ground of opposition is not established.

Section 58

1. This ground most often applies where someone other than the Applicant was first user of the Trade Mark or a substantially identical mark. Most importantly to the present facts, the earlier use must have been in relation to services that are the same kind of thing as the Applicant’s Services.[8]

   [8] Re Hicks's Trade Mark (1897) 22 VLR 636, 640 (Holroyd, A’Beckett and Hood JJ).

2. At the hearing there was some contention as to whether any historic uses of Iconic Hotels Group formative marks were use as a trade mark. The Opponent submits that all such uses were trade mark use and that they each is substantially identical to the Trade Mark. The Applicant submits that most appearances of those terms were merely used to identify the Opponent.

3. Beyond these issues of similarity and use as a trade mark, the Applicant raised what seems to me an unassailable problem. Recalling firstly that to establish this ground of opposition the services must be of the ‘same kind’. As I read the evidence all arguable uses of Iconic Hotels Group formative marks has been in relation to hotel and restaurant services. In contrast the Applicant seeks registration of the Trade Mark in relation to management of property. The Opponent’s position is that one way you might manage a property is to offer hotel/restaurant services at it. To take such a broad-brushed approach under the s 58 ground of opposition would be erroneous. This is among the narrowest enquiries in trade marks law:

   The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods “though not identical … yet substantially the same” or “goods essentially the same … though they pass under a different name owing to slight variations in shape and size”.[9]

   [9] Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 (Kenny, Gyles and Allsop JJ) (citations omitted).

4. Axiomatically, management of property is providing the services of a property manager. That is, one who manages leased real estate on behalf of a lessor. That activity does not extend to offering hotel or restaurant services (though a lessee may in turn elect to offer such services at the property). The full bench of the Federal Court, engaging with the markedly broader enquiry of whether hotel management and property management services are ‘of the same description’, found they are not:

   the services involved in managing an hotel have different characteristics than property management services. If, as we have held, particular incidental services take their character from the whole, the position is not altered by the fact that managing an hotel may involve the performance of incidental services akin to those carried out by property managers.

   … It is not difficult to infer that hotel management is a specialised undertaking, ordinarily carried out by different entities than those involved in providing property management services, such as real estate agents or shopping centre managers. Partly for this reason, it is difficult to regard hotel managers as being engaged in the same trade or industry as those providing property management services.[10]

   [10] MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, 244 (Burchett, Sackville and Lehane JJ).

5. To be clear, when writing about hotel management services above their Honours had in mind similar services to those shown by the Opponent: ‘the accommodation of guests, the operation of restaurants and bars…and the provision of conference and business facilities and of other services normally offered by hoteliers.’[11] Since such services are not ‘of the same description’ as property management services nor can they be ‘of the same kind’. It follows that this ground of opposition cannot be established.

   [11] Ibid 242.

Decision and costs

1. The Opponent has not established any of the grounds of opposition. As such, the Trade Mark should proceed to registration one month from the date of this decision. But if the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of the opposition should be in accordance with the Court’s order or direction.

2. Both parties asked that costs be awarded. The normal course is for costs to follow the event, and I am not aware of any reason that might cause me to divert from that approach. As such, I award costs against the Opponent.[12]

   [12] For a listing of costs, expenses and allowances, see Trade Marks Regulations 1995 (Cth) sch 8.

Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
15 December 2020