Q1 CTS 34498 Body Corporate v Q1 Management Pty Lt

[2014] ATMO 116

TRADE MARKS ACT 1995

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

Re:Opposition by Q1 CTS 34498 Body Corporate to registration of trade mark applications 1228706(36), 1228707(39), 1228708(35, 43) - Q1 and 1248464(36), 1248465(39), 1248468(43) - Q1 RESORT & SPA - in the name of Q1 Management Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: No representation nor submissions Applicant: John Swinson King & Wood Mallesons
Decision:	2014 ATMO 116 Section 52 opposition to registration – ss 41, 42, 43, 44, 58,59, 62,  and 62A grounds  - no ground of opposition established – applications to proceed to registration

1.     Trade mark applications 1228706, 1228707 and 1228708 were filed on 10 March 2008 by Mantra IP Pty Ltd (‘Mantra’). These applications were assigned to Q1 Management Pty Ltd (‘the Applicant’) in 2011. They are all in respect of the trade mark:

Q1 (‘Q1 mark’)

2.     Trade mark applications 1248464, 1248465 and 1248468 were filed on 26 June 2008 by Mantra. These applications were assigned to the Applicant in 2011. They are all in respect of the trade mark:

Q1 RESORT & SPA (‘SPA mark’)

3.     Trade mark numbers 1228706 and 1248464 were filed in class 36 of the International (Nice) Classification of Goods and Services. They cover the following services:

[1228706] Leasing of accommodation; rental of accommodation; accommodation letting agency; accommodation bureaux (apartments); apartment rental services; apartment letting agency; management and administration of buildings; real estate management; provision of long-term accommodation; apartment house management; management services including property management and administration; acquiring and managing real estate for investors; leasing of real estate; renting of apartments; real estate agency services; body corporate management services; insurance and financial services in relation to real estate and investment; financial management services for apartments, resorts and hotels; financial sponsorship of education, training, entertainment, sporting or cultural activities; and management, sale and financing of real estate

1248464] Leasing of accommodation; rental of accommodation; accommodation letting agency; accommodation bureaux (apartments); apartment rental services; apartment letting agency; management and administration of buildings; real estate management; provision of long-term accommodation; apartment house management; management services including property management and administration; leasing of real estate; renting of apartments; real estate agency services; management and sale of real estate; body corporate management services

4.     Trade mark numbers 1228707 and 1248465 were in class 39 and cover:

Holiday travel reservation services; advisory services relating to travel; agency services for arranging travel; arrangement of travel; booking agency services for travel; computerised reservation services for travel; consultancy for travel; information services relating to travel; provision of information relating to travel; provision of tourist travel information; provision of travel information; reservation services for travel; ticket booking services for travel; tourist travel reservation services; travel agents services for arranging travel; travel information services; travel reservation; computerised reservation services for travel; computerised transport information services; luggage storage services; organising of excursions; parking of cars; parking services for vehicles; provision of parking facilities; reservation services for tours; services for the arranging of excursions for tourists; tour organising; and arranging rental of cars

5.     Trade mark number 1228708 covers services in two classes as follows:

Class: 35 Advertising services for accommodation, including providing these services online

Class: 43 Hotel and resort services; accommodation reservations; provision of accommodation including hotel, motel, apartment and resort; provision of temporary accommodation; administration and booking services for accommodation; rental of temporary accommodation; accommodation reservations; accommodation management services; provision of food and drink; restaurant services; reservations (temporary accommodation); hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings; accommodation letting agency services (holiday apartments); arrangement of accommodation for holiday makers; arranging holiday accommodation; holiday home services (accommodation); holiday information (accommodation); holiday lodgings; holiday planning (accommodation); letting of holiday accommodation; provision of self catering holiday accommodation; reservation of places at holiday resorts; travel agencies for arranging accommodation; travel agency services for booking accommodation; travel agency services for making hotel reservations; accommodation finding services for tourists and travellers; accommodation letting agency services (holiday apartments and hotels); accommodation reservation services; arranging holiday and temporary accommodation; booking of accommodation for travellers; booking services for accommodation; hospitality services (accommodation); information services relating to the provision of temporary accommodation; letting of holiday and tourist accommodation; providing information, including online, about services for providing food and drink, and temporary accommodation; provision of self catering holiday or temporary accommodation; and resort accommodation

6.     Lastly, trade mark number 1248468 covers services in Class 43 as follows:

Hotel and resort services; accommodation reservations; provision of accommodation including hotel, motel, apartment and resort; provision of temporary accommodation; administration and booking services for accommodation; rental of temporary accommodation; accommodation reservations; accommodation management services; provision of food and drink; restaurant services; reservations (temporary accommodation); hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings; accommodation letting agency services (holiday apartments); arrangement of accommodation for holiday makers; arranging holiday accommodation; holiday home services (accommodation); holiday information (accommodation); holiday lodgings; holiday planning (accommodation); letting of holiday accommodation; provision of self catering holiday accommodation; reservation of places at holiday resorts; travel agencies for arranging accommodation; travel agency services for booking accommodation; travel agency services for making hotel reservations; accommodation finding services for tourists and travellers; accommodation letting agency services (holiday apartments and hotels); accommodation reservation services; arranging holiday and temporary accommodation; booking of accommodation for travellers; booking services for accommodation; hospitality services (accommodation); information services relating to the provision of temporary accommodation; letting of holiday and tourist accommodation; providing information, including online, about services for providing food and drink, and temporary accommodation; provision of self catering holiday or temporary accommodation; and resort accommodation

7.     Applications 1228706, 1228707 and 1228706 were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks (‘the Journal’) on 13 November 2008.

8.     These three applications were subject of the Federal Court decision Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769. I will refer to this decision later.

9.     Applications for the SPA mark were also accepted. Application 1248465 was advertised in the Journal on 23 October 2008, while applications 1248464 and 1248468 were advertised in the Journal on 27 November 2008.

10.     On 10 February 2009, Q1 CTS 34498 Body Corporate (‘the Opponent’) filed a notice of opposition (‘Notice’) to Trade Mark applications 1228706, 1228707 and 1228708.

11.     On 20 January 2009, the Opponent filed a Notice to application 1248465, and on 10 February 2009 Notices against applications 1248464 and 1248468.

12.     Each Notice specified identical grounds of opposition.

1. Evidence in support, answer and reply was served and filed, after which I heard all matters, as a delegate of the Registrar of Trade Marks, on 16 September 2014 in Brisbane. Mr John Swinson a partner of King & Wood Mallesons Lawyers, Brisbane, represented the Applicant. The Opponent did not appear at the hearing, and did not provide written submissions for my consideration.

2. I note that the Opponent does not appear to have participated in these proceedings to any extent since filing evidence in reply.

   Evidence

3. The evidence is the same for each of the oppositions. It comprises:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Joseph Johannes Emile Van Deurse	Secretary of Opponent	9.07.09 “Van Deurse 1”	A to X
Evidence in Answer
Carly Long	Solicitor for Applicant	8.10.09 “Long”	CL-1
Bryan Luke Jamieson	General Manager Distribution of Applicant	3.11.09 “Jamieson”	BLJ-1 to BLJ-10
Evidence in Answer
Joseph Johannes Emile Van Deurse	Secretary of Opponent	1.06.10 “Van Deurse 2”

1. The Opponent’s evidence was largely unhelpful in these proceedings. Van Deurse 1 related only to applications 1228706 and 1248464, and did little more than detail the Opponent’s duties as the Body Corporate for the Q1 building.

2. Van Deurse 2 purports to apply Van Deurse 1 to all of the opposed applications by including it as an exhibit. However, it suffers the same deficiencies as Van Deurse and contains little relevant material beyond the conduct of the Body Corporate regarding the residential accommodation in the Q1 building.

3. Long exhibits a useful independent legal opinion on the powers of a body corporate in Queensland. It cites the Body Corporate and Community Management Act (Qld) 1997, which states at Section 98 (1): A body corporate must not carry on a business. It provides as examples of proscribed businesses: a letting agent, a tour operator, a restaurant business, a real estate developer, and a land trader.

4. Useful background material was provided in Jamieson, which was succinctly summarised by Reeves J in Mantra IP Pty Ltd v Spagnuolo, supra:

   [3] “Q1” is the name of an “iconic” high rise apartment building situated on the Gold Coast in Queensland. It has 78 levels which contain, among other things, 526 residential apartments (the residential component of the Q1 building) and an observation deck on levels 77 and 78. On the ground floor, there is a separate retail area incorporating a number of shops and restaurants, a “public” area known as the Q1 Piazza and a “public” pathway that links the various areas. These so-called “public” areas are part of the common property of the body corporate covering the retail component of the Q1 building and are governed by a Building Management Statement providing rights of access, and the like, to the various owners within the whole Q1 complex.

   [4] The Q1 building was developed by Sunland Group Limited (Sunland). It was constructed between June 2002 and October 2005. Prior to the commencement of construction, Sunland adopted the name “Q1” for the building and successfully applied for the registration of a number of logo marks for Q1 in relation to a range of classes including property development, real estate management and leasing services; hotels; motels and restaurants.

   [5] When the Q1 building was opened in 2005, it was claimed to be the world’s tallest residential tower.

   [6] In September 2005, Sunleisure Hotels & Resorts Pty Ltd (Sunleisure) was appointed caretaker and letting agent by the body corporate [the Opponent in these proceedings] for the residential component of the Q1 building. Since then Sunleisure has operated a resort at the Q1 building called the “Q1 RESORT & SPA”. In February 2006, the Q1 logo marks were assigned by Sunland to Sunleisure Operations Pty Ltd, a related company to Sunleisure. Since then Sunleisure has promoted its resort under the stylised logo ‘Q1’ and under the sign “Ql RESORT & SPA”.

   [7] Sunleisure owns a lot (or lots) in the Q1 building which it uses to operate its resort business. The lot (or lots) includes the reception desk area, some office space, an apartment for the onsite caretaker, and a cafe called the “Q1 Beach Club”. It also conducts a function and conference business on the mezzanine level of the Q1 building. This area is a part of the common property of the body corporate for the residential component of the Q1 building, but Sunland has priority over the use of it.

   [8] In mid-2007, Sunleisure became a part of the Mantra Group of companies, which is one of Australia’s largest accommodation providers. As at May 2011, Sunleisure had letting agreements with the owners of approximately 193 apartments in the residential component of the Q1 building.

   [9] Mantra IP Pty Ltd (Mantra IP), the appellant, is also a member of the Mantra Group of companies. It was incorporated in March 2008 as Stella IP for the purpose of owning certain intellectual property rights on behalf of the Mantra Group and licensing other companies within the Mantra Group to use those rights. In that capacity, Mantra IP holds the domain name: ql.com.au. Prior to 2008 (and since 2005) that domain name was held by Sunleisure.

   [10] Stella IP changed its name to Mantra IP in October 2009.

   Grounds of Opposition

   20.     The Notice nominated the following grounds of opposition available under the Trade Marks Act 1995 (“the Act”):

   ·    Trade marks not capable of distinguishing the  Applicant’s goods or services (Section 41)

   ·    Use of the Trade Marks would be contrary to law (Section 42)

   ·    There has been no honest concurrent, prior continuous use and no other circumstances exist justifying acceptance under Section 44(3) or (4)

   ·    The Applicant is not owner of the Trade Marks (Section 58)

   ·    The applications were made in bad faith (Section 62A)

   ·    The Trade Marks are inherently likely to likely to deceive or cause confusion (Section 43)

   ·    The Registrar accepted the application on the basis of evidence or representations that were false in material particulars (Section 62)

   ·    The Applicant does not intend to use the Trade Marks (Section 59)

   21.      To succeed in its opposition the Opponent bears the onus of establishing at least one of these grounds. The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.

   Discussion

   22.     The Opponent has not provided any submissions in support of its oppositions, so it is unclear which grounds are relied upon and how the evidence supports any of them.

   23.     I do note that in Mantra IP Pty Ltd v Spagnuolo, supra, Reeves J found that Q1 was capable of distinguishing the Applicant’s services and was inherently adapted to do so, that the Applicant was the owner of both the Q1 mark and the SPA mark, there was no connotation under section 43 in the Q1 mark, and use of the Q1 mark would not be contrary to law.

   24.     I consider that the matters considered by the Court and conclusions drawn regarding Section 41 apply equally to the Q1 mark and SPA mark. In the absence of submissions or evidence on the point, I see no reason why the original acceptance should be overturned, particularly given the findings of Reeves J. The section 41 ground is not established.

   25.     Likewise, in the absence of any relevant evidence and any submissions, I find that Reeve J’s conclusions regarding sections 42, 43 and 58 apply to all applications in these proceedings. I find that these grounds have not been established.

   26.     The Opponent has not cited any prior Trade Mark registrations to enliven the operation of Section 44. I note that the searches of the register conducted during examination did not find any conflicting prior registrations that did not belong to the Applicant. I find that this ground has not been established.

   27.     The Opponent has not provided any evidence or submissions to support the Sections 62 and 62A grounds.

   28.  Jamieson demonstrates that the Applicant, and predecessors in title, has used the Trade Marks since 2005, which refutes the Section 59 ground. I find that this ground has not been established.

   Decision

   29. At the relevant dates section 55(1) of the Act provided:

   Unless the proceedings are discontinued or dismissed, 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.

   30.      I have found the Opponent has not established any of the grounds contained in the Notices. Therefore, trade mark applications 1228706, 1228707, 1228708, 1248464, 1248465 and 1248468 may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

   Costs

   31. In the event that the Applicant prevailed, Mr Swinson sought an award of costs in the Applicant’s favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995, with costs to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

   Jock McDonagh
   Hearings Officer
   Trade Marks Hearings
   9 December 2014