Opposition by Viceroy Cayman Limited to registration of trade mark application number 1956269 (class 43) – Viceroy – in the name of Anthony Otto Syrowatka

[2021] ATMO 159

TRADE MARKS ACT 1995

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

Re:Opposition by Viceroy Cayman Limited to registration of trade mark application number 1956269 (class 43) – Viceroy – in the name of Anthony Otto Syrowatka

Delegate:	Katrina Brown
Representation:	Opponent: M Evetts of counsel Applicant: Shauna Ross of counsel
Decision:	2021 ATMO 159 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 58, 60 and 62A – s 58 considered and established – registration refused.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Viceroy Cayman Limited (‘Opponent’) to registration of the following trade mark:

   Trade Mark No:                  1956269

   Trade Mark:  Viceroy (‘Trade Mark’)

   Applicant:  Anthony Otto Syrowatka (‘Applicant’)

   Filing Date:  18 September 2018

   Specification:  Class 43: Hotel reservations; hotel services; hotels; resort hotel services (‘Applicant’s Services’)

2. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 1 April 2019.

3. The Opponent filed a Notice of Intention to Oppose on 31 May 2019, followed by a Statement of Grounds and Particulars (‘SGP’) on 28 June 2019. The SGP was later amended pursuant to reg 5.12 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. The Applicant filed a Notice of Intention to Defend on 20 August 2019.

5. The Opponent filed the following declarations as evidence in this opposition:

   • Declaration of William Walshe (CEO of Viceroy Hotel Group) made on 8 December 2019 with Annexures WW-1 to WW-28;
   • Declaration of William Walshe made on 12 February 2021 with Annexures WW-29 to WW-41;
   • Declaration of Andrew Yell (Excite Holidays) made on 5 December 2019;
   • Declaration of Sharyn Kitchener (Mosman Travel) made on 6 December 2019; and
   • Declaration of Francesca Colubriale (Principal of Spruson & Ferguson Patent & Trade Mark Attorneys) made on 12 February 2021 with Annexures FC-1 to FC-2.

6. The Applicant filed the following declarations as evidence in this opposition:

   ·Declaration of Anthony Otto Syrowatka (Applicant) made on 4 August 2020 with Exhibits AOS-1 to AOS-19 (‘Syrowatka Declaration’);

   ·Declaration of Margaret Janis Bainbridge (Director of PT Lembah Maharaja) made on 3 August 2020 with Exhibit MJB-1;

   ·Declaration of Peter Bloomfield (Publisher of Asian Paradises magazine) made on 10 July 2020;

   ·Declaration of Peter Bloomfield made on 2 September 2020 with Exhibits PB-1 to PB-3;

   ·Declaration of Russell John Waters (Principal of Phillips Ormonde Fitzpatrick) made on 4 August 2020 with Exhibits RJW-1 to RJW-3;

   ·Declaration of Andrea Spalletti (General Manager of Villa Spalletti Trivelli) made on 14 July 2020 with Exhibit AS-1; and

   ·Declaration of Anthony Gallagher (Regional Director Aust/PAC for Global Publishing Pty Ltd) made on 7 July 2020.

7. The matter was heard by me, a delegate of the Registrar of Trade Marks. The Opponent was represented by M. Evetts of counsel. The Applicant was represented by Shauna Ross of counsel.

   Grounds of opposition, onus and relevant date

8. In the SGP the Opponent nominated grounds under ss 58, 60 and 62A of the Act.

9. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] In the event that the Opponent establishes one of the grounds in relation to all the Applicant’s Services, there is no requirement for me to consider the other grounds of opposition.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).

10. The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

    [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

    The Opponent

11. The Opponent is under common ownership with Viceroy Hotels, LLC. Together they hold the intellectual property for the Viceroy Hotel Group (‘VHG’). VHG, and its predecessors, have been operating hotels and resorts under the name Viceroy since 2002. These hotels and resorts are in North America, South America, the Caribbean, and the Middle East.

12. It is declared that since 2002, VHG has extensively promoted these hotels to members of the Australian public through Australian travel agents, newspaper and magazine articles, trade exhibitions, the website ‘ via VHG’s social media pages and third-party travel sites such as Expedia, Agoda and Booking.com.

    The Applicant

13. The Applicant is a Director and General Manager of PT Lembah Maharaja (‘PLM’), an Indonesian company that is wholly owned by members of the Syrowatka family. The Applicant is a 22% shareholder in PLM.

14. It is declared that since 2004, PLM has operated a hotel and resort in Bali under the trade name Viceroy. The Applicant states that ‘the Viceroy mark was first used in relation to such services [hotel services] in Australia by the family company [PLM] in promoting the Viceroy Resort in Bali’.

15. The Viceroy resort had a soft opening in 2004 and has traded continuously since that date. It has been promoted in Australia directly via the website ‘ and also via travel agents, travel magazines, third party websites, trade shows and social media.

16. In relation to filing the trade mark application, the Applicant declares the following:

    I conducted a search of the IP Australia database and found that the Viceroy mark was available, since a previous registration in the name of Viceroy Cayman Limited had not been renewed when due almost two years earlier. I advised the Managing Director of this and it was decided that I should file an application in my name as trustee for the family Company [PLM]. This was because we did not want the Australia trade mark to be owned by the Indonesian company, but intended for it to be assigned to an as yet unincorporated Australian company, that would own and manage the Australian boutique hotel.

    Section 58

17. Section 58 of the Act provides:

    Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

18. It is well established that ownership of a trade mark is established either by authorship and prior use, or by the combination of authorship, the filing of the application and an intention to use or authorise use.[3] Authorship refers to an applicant’s adoption of a trade mark with the intention of using it in Australia.[4]

    [3] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 [29] (Greenwood, Jagot and Beach JJ) (‘Pham’).

    [4] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6 [48] (Nicholas, Yates and Beach JJ).

19. The requirement of ownership must be satisfied at the time the trade mark application was filed.[5] A flaw in the ownership cannot be cured at a later date.[6] The Applicant applied to register the Trade Mark on 18 September 2018 (‘Relevant Date’). By doing so, he claimed to be owner of the Trade Mark.[7]

    [5] Pham (n 3) [31].

    [6] Ibid [44].

    [7] Act s 27.

20. The Opponent asserts that the Applicant was not the owner of the Trade Mark at the Relevant Date by virtue of either of the following:

    ·The Applicant has never used the Trade Mark in Australia. The use claimed by the Applicant is use by PLM; or

    ·The Opponent (and its predecessors in title) were the first to use the Trade Mark in Australia in relation to hotel services.

21. In reply to these assertions, the Applicant submits the following:

    ·The Applicant had control over use of the Trade Mark by PLM. At all relevant times the Applicant was a member of the Syrowatka family which owned and controlled PLM. The Applicant, the Syrowatka family and PLM, have at all times acted with a ‘unity of purpose’ in relation to the Trade Mark.

    ·The Opponent’s evidence is vague and does not establish that it, or a predecessor in title, was the first to use the Trade Mark in Australia in relation to hotel services.

    Preliminary issue

22. The Applicant submits that the Opponent’s assertions in relation to PLM (set out at [20] of this decision) should not be considered as they were not included in the SGP. Admittedly, the SGP in relation to s 58 focusses on the Opponent being the first to use the Trade Mark in Australia. Nonetheless, the SGP contains the following statement in respect of s 58, ‘Further, the applicant has identified in its own published material that it has no right, title or interest in the opposed mark’. This is a broad statement and would include material which identifies that the Applicant has no right, title or interest by virtue of another entity (albeit related) being the author and prior user of the Trade Mark in Australia. As such, in this instance I will have regard to the Opponent’s assertions in relation to PLM.

    Discussion

23. The evidence in this matter demonstrates that before the Relevant Date, two unrelated entities had used the Trade Mark in Australia in relation to hotel services. Those entities being PLM and the Opponent (or a member of the Viceroy Hotel Group). However, there are deficiencies and inconsistencies in the evidence from both the Applicant and the Opponent, such that it is not clear to me which of those entities was the first to use ‘Viceroy’ as a trade mark in Australia. This is not fatal to the opposition. Contrary to the Applicant’s written submissions the Opponent does not need to establish that it was the first to use the Trade Mark in Australia. The Opponent need only satisfy me that the Applicant was not the first to use the Trade Mark in Australia.   

24. Given that two entities (neither of which is the Applicant) have used the Trade Mark in Australia before the Relevant Date, the question at the heart of this matter is whether the use by either of the two entities inures to the Applicant; in the sense that the Applicant is the author of the Trade Mark and that the use by either of the two entities was authorised by the Applicant. The Applicant and Opponent have both stressed that they are not connected in any way. Clearly, the use by the Opponent, or a member of the Viceroy Hotel Group, does not inure to the Applicant.

25. The Applicant submits that the use by PLM was under the control of the Applicant and should therefore inure to the Applicant. It contends that there was a ‘unity of purpose’[8] between the Applicant (a member of the Syrowatka family) and PLM (a company owned by members of the Syrowatka family including the Applicant). I do not find this contention of any assistance to the Applicant. In this respect, I refer to the following observation in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd:

    Nexus or “unity of purpose” is not an answer to identification of the owner of a mark at the time an application for registration is made and does not answer a ground of opposition under s 58 of the TM Act.[9]

    [8] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100 [45] (Reeves, Jagot and Rangiah JJ).

    [9] [2020] FCA 1078 [334] (Markovic J).

26. Furthermore, the acquiescence of PLM in directing the trade mark application to be made in the Applicant’s name does not constitute an exception to the principles of ownership set out at [18] to [19] of this decision. Those principles equally apply here.

27. The Applicant also contends that the trade mark application was made in his name as trustee for PLM. Notably, this is not reflected in the trade mark application, nor is there any documentary evidence demonstrating that the Applicant is a trustee for PLM.

28. I am satisfied that the Applicant is not the owner of the Trade Mark. On the basis of the evidence before me the owner is PLM or a member of VHG, whichever was first to use the Trade Mark in Australia.

29. The s 58 ground of opposition has been established.

    Decision

30. Section 55 of the Act relevantly provides:

    (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.

31. The Opponent has established the ground of opposition under s 58 of the Act. Accordingly, I refuse to register trade mark number 1956269.

    Costs

32. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant according to the official scale set out in Schedule 8 of the Regulations.

    Katrina Brown
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    21 December 2021