Re: Opposition by Mojosurf Pty Ltd to registration of trade mark application number 1886980 (class 43) – Mojo NOMAD (fancy) - in the name of Australia Hotels and Properties Limited

[2019] ATMO 176

TRADE MARKS ACT 1995

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

Re:     Opposition by Mojosurf Pty Ltd to registration of trade mark application number 1886980 (class 43) – Mojo NOMAD (fancy) - in the name of Australia Hotels and Properties Limited

Delegate:

Kate Doherty

Representation:

Opponent: E Thompson of Counsel, and Gorton IP

Applicant: Minter Ellison

Decision:

2019 ATMO 176

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 44, 58A, 60, 42 (Competition and Consumer Act 2010, ss 18, 29 as well as the tort of passing off) – s 60 is established, the mark will not proceed to Registration.

Background

This opposition is a proceeding on the written record in relation to the following trade mark under the Trade Marks Act 1995 (‘the Act’):

Trade Mark No:         1886980

Trade Mark:               (‘Trade Mark’)

Filing date:                21 November 2017

Applicant:                 Australia Hotels and Properties Limited

Specification of Goods: (at time of filing):

Class 43: Hotel accommodation reservation services; Hotel accommodation services; Hotel services; Hotels; Hostel services; Youth hostel services; Restaurant services; Restaurant services for the provision of fast food; Restaurants; Coffee bar and coffee house services (provision of food and drink); Preparation of food and drink; Providing food and drink; Snack bars (provision of food and drink); Provision of carry out foods and beverages; Take out food and beverage services

The Trade Mark was advertised accepted on 12 April 2018. A Notice of Opposition was filed on 9 May 2018 by Gorton IP on behalf of Mojosurf Pty Ltd (‘The Opponent’). Gorton IP also represented Nomads World Hotels Pty Ltd, who later withdrew from the Opposition. The Statement of Grounds and Particulars (‘SGP’) nominates grounds of opposition under ss 42, 43, 44, 58, 58A and 60.

Written submissions were received from the Applicant and the Opponent. The Opponent nominated that they were pressing the grounds ss 44, 58A, 60, 42 (Competition and Consumer Act 2010, ss 18, 29 as well as the tort of passing off).

Evidence

The evidence received includes Evidence In Support (‘EIS’ - declaration by M Gorton, Principal  of Gorton IP dated 6 December 2018), Evidence In Answer (‘EIA’ - declaration by D Singh Baswal, Chief Operating Officer and Chief Financial Officer of Ovolo Hotels Australia dated 19 March 2019) and Evidence in Reply (‘EIR’ - declaration by M Gorton, Principal of Gorton IP dated 4 June 2019). 

The Opponent’s evidence consists of the following marks (‘Mojosurf Marks’):

No.

Priority Date

Mark

Class

Reference

1024810

13 October 2004

39

Opp 1

1024815

13 October 2004

39

Opp 2

1481667

20 March 2012

MOJOBC

28, 35, 39, 41

Opp 3

1594999

5 December 2013

MOJOSURF

28, 35, 39, 41

Opp 4

1595330

5 December 2013

MOJOTRAVEL

39, 43

Opp 5

1683711 (Pending)

5 December 2013 (Divisional Priority Date)

MOJOSURF

25, 35

Opp 6

1944413 (Pending)

5 December 2013 (Divisional Priority Date)

MOJOBC

25

Opp 7

Onus and Standard of Proof

The relevant standard of proof is the civil standard, or “on the balance of probabilities”.0F 

The Opponent bears the onus of proof in an Opposition Hearing.1F  The application will succeed if one or more of the nominated grounds are established.  The rights of the parties are determined at the date of filing the application, the relevant date is 29 December 2016.2F

Grounds of Opposition

Section 60 – Trade mark is similar to a trade mark which has acquired a reputation in Australia

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

(b)     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.

Section 60 is discussed in McCormick & Company Inc v McCormick per Kenny J:3F

Reputation is “the recognition of the [trade] marks by the public generally”.

However, for highly specialised products or products directed at specific markets the relevant assessment of reputation is made in relation to those markets and not the public generally.4F Reputation is often proven by a high volume of sales, as well as substantial advertising and promotional expenditures.  Direct evidence for consumer appreciation of a mark is often not required.5F

For this ground to succeed the Opponent must show not only that the Mojosuf Marks were well recognised by the Australian public generally before 21 November 2017, but that the Trade Mark would be likely to cause public confusion with the Mojosurf Marks.  In ConAgra Inc v McCain Food (Aust) Pty Ltd it was stated that reputation cannot be assumed and must be established as a question of fact:6F

It is one thing to sell goods, it is quite another to show that they have amassed a reputation which is sufficient to lead consumers into deception or confusion and to satisfy the requirements of s 60.7F

Earlier use can result in an earlier priority date.8F  To establish a ground of opposition under s 60, the Opponent must demonstrate that at the priority date of 21 November 2017:

a)        there was another trade mark;

b)        which had acquired a reputation in Australia;

c)        amongst a significant section of the public;

d)        such that use of the opposed trade mark would be likely to deceive or cause confusion.

The trade marks relevant to the dispute are detailed above and all appear on the Trade Mark Register (‘the Register’) well before the priority date.9F  The evidence provided by the Opponent shows the company has been trading in Australia since 1998, has grossed in excess of $30 million dollars in sales since 2010, also spending an amount approaching $1 million dollars on advertising in that period.10F  The evidence is sufficient to show the Mojosurf Marks have acquired a reputation for surfing tours and holiday packages inclusive of accommodation in Australia. 

Amongst a significant section of the public

The requirement that the deception or confusion should be amongst “a substantial number of persons” must be “properly and sensibly applied”.11F  The degree of reputation necessary is dependent on the market in question.  In Le Cordon Bleu BV v Cordon Bleu International Ltee12F Heerey J observed:13F

What is “significant” or “substantial” will depend on the nature of the goods or services in question. 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.

The Applicant has submitted that ‘surfing is a very popular sport in Australia’, and that there are a ‘large number of service providers’ to meet this ‘popular demand’.14F  The Opponent’s evidence discloses fully inclusive surf lesson programs including meals and accommodation.15F  I find this distinguishes the market characterised by the Applicant which would include children’s lessons, school, or competitive tuition.  The Opponent has both a national and international market, there is no evidence of other businesses operating in a similar way.16F 

Surf schools could compete for business from market segments that include backpackers or tourists but there is no evidence that there are a large number of providers who offer a tour organised with tuition, meals, beverages and accommodation in one package.  Many backpackers hostels or low cost accommodation could have tourism partnerships with surfing lesson providers, there is no evidence before me to support this and I am unable conject as to whether those businesses exist or would be similar to the Opponent’s.

Although it is not necessary that goods or services are of the same type for consideration in relation to s 60, where goods and services are associated the threshold to establish a likelihood of deception or confusion will be lower.  The overlap of services offered by both parties enlivens this, namely food, drink, accommodation, Wifi, communal spaces.17F 

Likely to Deceive or Cause Confusion

There is no evidence before me of actual confusion, but there is no assertion that the Opponent’s marks are particularly well known.18F  There is no evidence of the use of ‘Spot-X’ as a trade mark or any use of the term in the absence of one of the Mojosurf marks and this term will therefore be disregarded.

The Opponent’s evidence contains screenshots of a website where the word ‘Mojosurf’ appears on the header and footer as well as throughout the text. The word ‘mojo’ is also often used by itself, or as a prefix to other words including ‘Mojo Social’ and ‘Mojo Style’. 19F I do not find the suffix ‘Nomad’ is particularly distinct in relation to travel or surf culture, particularly when compared to trade mark 1595330 ‘Mojotravel’ for the identical class of services. 

The businesses appear highly similar, both show accommodation buildings decorated with spray-painted mural type designs, both serve alcohol and Mexican style food, offer Wifi and communal spaces to encourage gathering with other guests.20F  Both businesses are designed for lower cost travelers and advertise to reach guests through similar channels including the web, social media and print publications.21F  The style of advertisements including social media posts are similar, with bright colours and prominent use of words containing the prefix ‘Mojo’.22F One has a neon sign featuring the word ‘mojo’ and the other has a swimming pool prominently branded with the same word.23F

The Applicant submits that some of the services in the Application are for the types of services for which there is ordinarily a close examination prior to purchase that would eliminate or reduce confusion.24F  The example that is given is for consumers writing reviews about a particular hotel or restaurant.  I do not find this persuasive, when allowing for the level of similarity between the marks any reviews are likely to be in the same types of publications or websites and accessed by the same types of consumers. 

The s 60 ground of opposition is established.

Decision

The Opponent has established a ground of opposition.  Pursuant to section 55(1), Trade Mark number 1886980 will not proceed to registration.

The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with Notice of Appeal, I direct that the Trade Mark shall not be removed from the Register until the appeal has been decided or discontinued.

Costs

The Opponent has sought an award of costs. Although costs ordinarily follow the event, due to the late cancellation notice given by the Opponent for the appearance at the scheduled hearing on 19 November 2019, I decline to make a costs order under s 221 of the Act in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Kate Doherty

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

11 December 2019