Opposition by Starwood Hotels & Resorts Worldwide, LLC to registration of trade mark application no.(s) 1778474 and 1778547 (8, 18, 21, 24, 25, 29, 35, 43) – W WYLARAH (stylized) - in the name of AACo Innovation Pty Ltd

[2019] ATMO 152

TRADE MARKS ACT 1995

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

Re:Opposition by Starwood Hotels & Resorts Worldwide, LLC to registration of trade mark application no.(s) 1778474 and 1778547 (8, 18, 21, 24, 25, 29, 35, 43) – W WYLARAH (stylized) - in the name of AACo Innovation Pty Ltd

DELEGATE:

Bianca Irgang

REPRESENTATION:

Opponent: Roseanne Mannion of Spruson & Ferguson

Applicant: Miriam Stiel of Allens Patent and Trade Mark Attorneys

DECISION:

2019 ATMO 152

Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 42(b), 44 and 60 pressed at hearing – no ground of opposition established.

Background

1. AACo Innovation Pty Ltd (‘the applicant’), filed trade mark application numbers 1778474 and 1778547 on 22 June 2016 in classes 8, 18, 21, 24, 25, 29, 35 and 43 of the International Classification of Goods and Services. Current details of the applications are set out below.

1. For ease of reference throughout the decision I will refer to the applicant’s two above trade marks collectively as the ‘Trade Mark’.

2. Acceptance of the applications for possible registration was published in the Australian Official Journal of Trade Marks on 17 November 2016. Subsequently Starwood Hotels & Resorts Worldwide, LLC (‘the opponent’) filed its Notices of Intention to Oppose registration followed by its Statements of Grounds and Particulars1.

3. The applicant then filed its Notices of Intention to Defend. Thereafter the opponent and the applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 16 July 2019. The applicant was represented by Miriam Stiel of Allens Patent and Trade Mark Attorneys. The opponent was represented by Roseanna Mannion of Spruson & Ferguson.

Grounds of Opposition

1. The Notices nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) however, only the grounds of opposition under sections 42(b), 44 and 60 were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd2 affirmed the approach in Pfizer Products Inc. v Karam3 where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.

Evidence

1. The evidence in this matter consists of the following declarations:

Evidence in Support

•Marshall Donat (‘Donat’), Vice President & Assistant Secretary of Starwood Hotels & Resorts Worldwide, LLC, dated 18 June 2018

Evidence in Answer

•Dane Alexander Fitzgibbon (‘Fitzgibbon’), Head of Strategy and Growth at Australian Agricultural Company Limited, dated 26 September 2018

1 which together constitute ‘the Notices’

2 [2015] FCAFC 156, [133]

3 [2006] FCA 1663, [26]

Evidence in Reply

•Roseanne Mannion (‘Mannion’), Registered Trade Mark Attorney, dated 5 December 2018

Discussion

Section 44 – Deceptive similarity

1. Subsection 44(1) and (2) of the Act is relevant in this case and reproduced below:

1.   Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

a.   the applicant's trade mark is substantially identical with, or deceptively similar to:

i.    a trade mark registered by another person in respect of similar goods or closely related services; or

ii.     a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10. Note 2: For similar goods see subsection 14(1). Note 3: For priority date see section 12.

1.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

a.    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.

1. To establish a ground of opposition under section 44 of the Act, the opponent must show all of the following:

   •a trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

   •the trade mark in the name of the other person must be in respect of similar services  or closely related goods; and

   •the priority date of the trade mark of the other person is earlier  than the priority date of the applicant’s trade mark.

1. The opponent has seven trade mark registrations which it has put forward in support of the section 44 ground of opposition. I consider that each of them is registered for services that are similar to the services the applicant seeks registration of its Trade Marks. The details of these registrations with only the overlapping services listed are as follows:

Number	Trade Mark	Similar Services
792487	Class 42: Hotel, motel, resort hotel and motor inn services; restaurant, bar and catering services, food and beverage preparation services, cafe and cafeteria services;
1194750	Class 43: Services providing food and drink including restaurant, bar, lounge, cafe and cocktail services; temporary accommodation including hotel services, motel services, motor inn services, resort services;
1248780	Class 43: Hotel, motel and resort hotel accommodation services; restaurant, bar and catering services; … hotel services for preferred quests
1458839	Class 43: Services for providing food and drink; temporary accommodation
1505413	THE W	Class 43: Services for providing food and drink; temporary accommodation; hotel services, motel services, motor inn services, resort services; restaurant, bar, lounge, cocktail lounge, cafe and cocktail services; … the operation of hotels and resorts, restaurants and bars

1577175

Class 43: Services for providing food and drink; temporary accommodation; hotel services, motel services, motor inn services, resort services; restaurant, bar, lounge, cocktail lounge, cafe and cocktail services; … the operation of hotels and

resorts, restaurants and bars

1645668

Class 43: Services for providing food and drink; temporary accommodation; hotel services, motel services, motor inn services, resort services; restaurant, bar, lounge, cocktail lounge, cafe and cocktail services; … the operation of hotels and resorts, restaurants and bars

1. I note that the opponent’s trade marks have an earlier priority date than the Trade Mark and are registered for similar services to those of the Trade Mark. Now I need to determine whether or not any of the opponent’s trade marks are substantially identical or deceptively similar to the Trade Mark.

1. It is clear that the Trade Mark is not substantially identical with any of the opponent’s trade marks according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd4.

Trade Mark Opponent’s trade marks

4 (1963) 109 CLR 407 at 414

THE W

1. The respective trade marks may both contain the letter ‘W’ but both of the applicant’s Trade Marks also contains an additional word WYLARAH which is a clear visual aural difference between the respective trade marks and is sufficient to preclude a finding of substantial identity. Trade Mark Application no. 1778474 also contains the device of the map of Australia. All of these factors serve to create a clear distinction between the respective trade marks.

1. Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark, to the impression that they would form from the opposed trade mark.5 The likelihood of deception must be finite and non-trivial.6

2. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell at 415:

The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark

5 The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 [415] (‘Shell’)

6 Registrar of Trade Marks v Woolworths Limited 45 IPR 411 [43]

that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]

1. The Court added at 416, that:

[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

1. The principles laid out in these tests have not been challenged by the parties.

1. The applicant has argued that the Trade Mark is not deceptively similar to the opponent’s trade mark because while they both contain the letter ‘W’ the applicant’s Trade  Mark contains a very stylized letter ‘W’ which is not automatically apparent by a casual visual assessment to be the letter ‘W’. This stylized ‘W’ is also in combination with the additional and striking word WYLARAH. In the applicant’s opinion, this sufficiently differentiates the trade marks from each other.

1. In considering the trade marks is it clear that they share the word ‘W’ which is the entirety of some of the opponent’s trade marks. However, there are marked differences between the respective trade marks. The letter ‘W’ contained within the Trade Mark is highly stylized and it is not necessarily clear on first inspection that it is the letter ‘W’. The same cannot be said for the opponent’s trade marks where the letter ‘W’ is very clearly the letter ‘W’. In addition to the considerable stylization of the Trade Mark letter ‘W’ there is the additional word WYLARA which is striking and unusual as well as the map of Australia in Trade Mark no. 1778474. Taking into account the whole of the Trade Mark, as I must, the differences between the respective trade marks are sufficient to preclude a finding a deceptive similarity with any of the opponent’s trade marks. Therefore, the opponent has not established its section 44 ground of opposition.

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

   60 Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

a.another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

a.because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

1. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in the trade marks listed in paragraph 10 above.

2. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: 7

   ii.   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   ii.     In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

ii.The rights of the parties are to be determined as at the date of the application.

iii.   The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:8

“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

7 [1999] FCA 1020 [50]

8 [1973] HCA 43; (1973) 129 CLR 353, 362

1. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick9 by Kenny J:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being,  having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing  a business connection between the two or attributing her product to the company?

1. Mr Donat avers that the opponent is one of the world’s largest hotel and leisure companies with over 5500 properties in over 125 countries of the world. Mr Donat declares that W Hotel is a premier brand within the Marriott portfolio. According to Mr Donat each hotel is inspired by its destination which means that while every hotel is unmistakably a W hotel, each has its own personality. The W Hotel brand was launched in December of 1998. The first hotel was in Manhattan and now there are over 75 W hotels and resorts throughout the world with over 25 hotels and resorts in the process of development. However, I do note that from May 2000 until February 2006 there was W hotel in Woolloomooloo, Sydney, Australia and that on 1 June 2018 a W Hotel opened in Brisbane and that the opponent is intending to open hotels in Melbourne and Sydney in 2020.

2. According to Mr Donat the hotels, resorts and residences and related services, provided under or by reference to its W marks are also advertised and promoted through the “Starwood Preferred Guest” loyalty program. Guests can earn reward points by staying at hotels and residences under the Marriott International brand and the Ritz Carlton brand. As of 12 June 2018 there were in excess of 610,000 active members of the loyalty program in Australia.

3. The opponent also uses its W marks (‘the opponent’s marks’) in conjunction with its other well-established brands on stationary and in respect of an in-room television channel which

9 [2000] FCA 1335 [81]

are both seen or used by guests who visit the opponent’s various hotels and resorts around the world. The opponent’s W marks are also used on its press releases, brochures, banner and hotel displays10.

1. Mr Donat advises that Australian consumers can book accommodation in W hotels throughout the world through its website as well as third party providers such as Expedia®11. The opponent also uses social media platforms to advertise its W marks12 and has won numerous awards around the world13. Additional articles were written about the opponent’s W Hotel in Sydney and it was featured in publications such as Yahoo Travel (online), The Sun-Herald, The Age and GQ14. The worldwide revenue and advertising expenditure the opponent has generated under its W Marks is considerable15.

2. I am satisfied that the opponent has a reputation in its W marks overseas, although how much of that reputation transfers across into Australia is debatable. While there has been a W branded hotel in Sydney and now exist another two hotels is this, coupled with the  opponent’s overseas reputation, sufficient that it is likely to cause confusion and confusion in the Australian marketplace when a consumer is faced with the applicant’s Trade Mark? I am not satisfied that it would.

3. While I do not doubt that the opponent does have a reputation in its W marks, I am not satisfied that a consumer faced with the highly stylized Trade Mark incorporating the word WYLARAH would be deceived or confused into believing that there was somehow a connection between the opponent’s services and those of the applicant. The differences between the respective trade marks are simply too great.

4. The opponent has argued that due to the individualistic style of its W hotels that a consumer faced with the Trade Mark would be persuaded that services and goods offered under the Trade Mark were an extension or a new and individualistic take on the opponent’s W branded services. However, I am not persuaded by this reasoning. The opponent deals in  hotel services which incorporate its restaurants which may be individually styled to suit the hotel. However, as far as brand extension goes, there is nothing before me in the evidence to  suggest that a consumer walking into any restaurant with a highly stylized letter ‘W’ present

   10 Annexure J accompanying Donat

   11 Confidential annexure K accompanying Donat

   12 Annexure N accompanying Donat 13 Annexure O accompanying Donat 14 Annexure P accompanying Donat

   15 Confidential Annexures R and S accompanying Donat.

   in a stylized and composite trade mark which is unattached to a hotel or resort would be caused to wonder whether or not that restaurant or those goods are somehow related to the opponent.

1. I am not satisfied that the applicant’s use of its Trade Mark will result in any significant degree of confusion or deception. The opponent has not established the section 60 ground of opposition.

Section 42(b) - Contrary to Law

1. Section 42 of the Act provides:

   An application for the registration of a trade mark must be rejected if:

   a.   the trade mark contains or consists of scandalous matter; or

   b.   its use would be contrary to law.

1. Ms Mannion, the opponent’s representative, submitted that the use of the applicant’s Trade Mark for its services would breach sections 18 and 29 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribe misleading or deceptive conduct or the making of false or misleading representations. Ms Mannion stated that the threshold for establishing misleading or deceptive conduct under the Australian Consumer Law was higher than that required by section 60 of the Act.

1. As I have found that the use of the opposed trade mark is not, at a minimum, likely to “deceive or confuse” under section 60, it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 29. I thus find that the opponent has not established the ground of opposition under section 42(b).

Decision

1. Section 55 of the Act 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.

1. The opponent has not established any grounds of opposition. The trade mark applications  may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Marks shall not occur until the appeal has been decided or discontinued.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

Bianca Irgang Hearing Officer

Oppositions and Hearings 21 October 2019