Renaissance Hotel Holdings Inc v Ravida Properties Pty Ltd

[2014] ATMO 105

TRADE MARKS ACT 1995

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

Re:Opposition by Renaissance Hotel Holdings Inc to registration of trade mark application 1284935 (43) - RENAISSANCE LIVING - filed in the name of Ravida Properties Pty Ltd.

Delegate:	Nicole Worth
Representation:	Opponent: Written submissions prepared by Odette Gourley of Corrs Chambers Westgarth Applicant: Written submissions prepared by Noelene Treloar of Mills Oakley Lawyers
Decision:	2014 ATMO 105 Section 52 opposition – ss 44 and 60 pursued – no grounds established – application may proceed to registration.

Background

1. This is an opposition pursuant to section 52 of the Trade Marks Act 1995 (‘the Act). Renaissance Hotel Holdings Inc (‘the Opponent’) has opposed registration of the trade mark detailed below, filed in the name of Ravida Properties Pty Ltd (‘the Applicant’).

   Trade Mark: RENAISSANCE LIVING (‘the Trade Mark’)

   Filing Date: 12 February 2009

   Priority Date: 23 December 2008 (based on the filing date of the parent application).

   Services (Class 43): Retirement home services; retirement village services; provision of aged care services in retirement homes and retirement villages, including provision of aged care accommodation services, provision of temporary accommodation in retirement homes and retirement villages, rental of temporary accommodation in aged care facilities, retirement homes and retirement villages.

2. The Trade Mark was the subject of a parent application, number 1279683, and in the course of examination of the parent the above services were divided out of the parent and into the subject application (‘the divisional application’). During examination of the divisional application grounds for rejection under section 44 were raised on the basis of four prior conflicting registrations, numbered 1224552, 1224554, 1246197 and 1246204, all being trade marks comprised or containing RENAISSANCE RETIREMENT LIVING owned by a third party. The Applicant provided evidence of prior continuous use of the Trade Mark and the divisional application was accepted for possible registration under the provisions of subsection 44(4).

3. The acceptance was advertised in the Australian Official Journal of Trade Marks on 21 June 2012. Thereafter the Opponent filed a notice of opposition to registration, citing grounds under sections 44 and 60. Evidence in support, answer and reply was served and filed, as were documents (‘produced documents’) pursuant to a Notice Requiring Production of a Document or Article issued by the Registrar to the Applicant. The evidence is described below. Beyond their being filed, the produced documents do not appear to have bearing on the grounds at issue here and are not mentioned by either party in submissions or evidence. To that end I will not discuss them further.

Evidence

1. The declarations filed in this matter are:

   Evidence in support

   ·Affidavit[1] of Kevin M. Kimball, Vice President of the Opponent, dated 25 April 2013 with Annexure 1;

   ·Statutory declaration of Odette Margaret Gourley, solicitor for the Opponent, dated 29 May 2013 with Annexure OMG-1.

   Evidence in answer

   ·Statutory declaration of Donato Ravida, Director and Secretary of the Applicant, dated 6 November 2013 with Exhibits DR-1 to DR-3, one of the exhibits being a previous statutory declaration of Donato Ravida (filed during examination of the application), dated 30 May 2012 with Exhibits DR-1 to DR-23.

   Evidence in reply

   ·Statutory declaration of Odette Margaret Gourley with Annexure OMG-1 dated 26 February 2014.

   [1] The affidavit complies substantially with the requirements in the Trade Marks Regulations 1995 regarding declarations.

The Opponent’s evidence

1. In summary the Opponent’s business is an international chain of hotels. The Opponent is owned by Marriott International Inc (‘Marriott’) and it declares that the Trade Mark was first adopted by the predecessor in title, Ramada Inns Inc, in 1981. The Opponent acquired “the RENAISSANCE brand” in 1997 and since then has expanded the hotel business globally. At the time of the Kimball declaration there were more than 162 “RENAISSANCE branded hotels and resorts” open in at least 31 countries around the world, although not apparently in Australia.

2. Information pertaining to the Marriott brand is also provided, including that “Marriott has more than 3,800 hotels in 74 countries and territories around the world”, and that “the Marriott received in excess of 462 million visits to its website at Marriott operates a rewards program and the numbers of members in Australia for the years 2000 to 2012 are provided, and it is declared that those members receive emails and mailings relating to hotels including the RENAISSANCE brand.

3. Figures for the years 2008 to 2012 are given for the “number of online visits to Marriott Websites specifically targeting the RENAISSANCE brand from IP addresses in Australia”, “number of online visits to Marriott Websites from IP addresses in Australia” and “number of online visits to Marriott websites from IP addresses worldwide”. The latter two are in the order of millions and the first is a good deal smaller. Figures are also supplied for the years 2001 to 2012 for “total number of room-nights reserved by Australian residents at RENAISSANCE hotels worldwide”. The numbers are not insignificant, although I note that on average they represent less than a percent of total room-nights reserved at RENAISSANCE hotels worldwide. Additionally, I bear in mind that “room-nights reserved” is not an accurate indication of the number of Australians who may have reserved a room because a single reservation may cover multiple nights, multiple rooms, or be made by a travel agent who reserves rooms for multiple parties. “Total Commission Room Nights”, which is declared to be an indication as to how many bookings were made worldwide by Australian travel agents, are given for the years 2005 to 2012 (although figures for the years 2008 and 2009 are not available). Finally, total global sales and worldwide advertising and promotional expenditure in respect of “the RENAISSANCE trade mark” are provided, both of which are very substantial.

4. A list of “RENAISSANCE hotels” owned by the Opponent is exhibited, including the dates upon which those hotels either opened, are scheduled to open or closed (as relevant). It is declared that this list indicates the number of RENAISSANCE branded hotels has grown significantly since the Opponent acquired the brand, including 10 hotels that opened in China, Egypt, Europe and Turkey in the 2 years prior to the second Gourley declaration, and 10 hotels in the USA, Canada, Europe, China, Chile and Bahrain scheduled to open in the 12 months following the second Gourley declaration.

5. The Opponent declares it is the owner of approximately 289 trade mark registrations around the world that comprise or contain the word RENAISSANCE. They are summarised in Annexure 1 to the Kimball declaration and I note that many of the trade marks are referred to by names which do not comprise or contain the word RENAISSANCE, such as “R (SCRIPT DESIGN III)”, “RLIFE”, “BAR ROQUE”, “CYBER CAFÉ & Computer Design”, “LIVE LIFE TO DISCOVER”, “CLUB SPORT”, “PLUM PERFECT” and numerous others. Included in the Annexure 1 is reference to five Australian registrations in the name of the Opponent for the following trade marks:

Registration No. 536910

Registration No. 536911

Registration No. 536918

Registration No. 652333

Registration No.1337921

1. Numerous Australian newspaper articles which refer to RENAISSANCE branded hotels are exhibited. They range in date from 30 April 2011 to 9 March 2013.

The Applicant’s evidence

1. The Applicant is part of a group of companies that operate in the areas of property development, building construction, and management and operation of retirement villages. For ease of reference, and because it does not affect the outcome of this decision, I will refer to that group as ‘the Applicant’ and associate the activities of that group with the Applicant.

2. The Applicant first commenced trading under “the trade mark RENAISSANCE” in 1998, in respect of a display home in Camberwell, Victoria. Between 1998 and 2005 the Applicant built approximately 50 properties based on that display home.

3. In 2003 the Applicant commenced planning a retirement village. The Applicant declares that it liked the name ‘Renaissance’ and found it had been successful in respect of the display home, so it decided to call the proposed retirement village RENAISSANCE LIVING. A number of documents are provided and declared to show the preparatory activities conducted over a number of years for the creation of the retirement village. Examples include registration of the business name ‘Renaissance Living’ in Victoria in 2006 the company ‘Renaissance Living Australia Pty Ltd’ in 2007, details of job costings from 2003 to 2008 (including purchase of the property at which the retirement village is located and fees for, inter alia, architect, designer and lawyers’ services), minutes from a meeting held on 9 October 2007 regarding actions to be taken in respect of the property, and registration of the domain name ‘>

   A number of promotional activities are declared to have taken place, and exhibited are a number of documents pertaining to those activities. They include, during 2007 and 2008, engaging the services of various graphic and visual designers; lease of a display suite; creation of brochures, business cards, signage, images, and a display model; design of a website; and participation in “The Melbourne Retirement & Lifestyle Expo”. Further documentation is provided in respect of the booking of advertisements in various newspapers during 2008 and 2009. A number of third party news articles referring to the Trade Mark, ranging in dates from September 2008 to January 2012, are also exhibited.

4. The “Renaissance Living Property” was opened in March 2011 and at the time of declaration provided services to 24 residents, with 18 of the 43 apartments occupied (once fully sold it would have an estimated occupancy of 60 residents). As well as accommodation the property provides various facilities including an onsite restaurant, library, health and leisure centre, common room and 24 hour security. It is declared that promotion of the property continues by way of brochure distribution four times per year, monthly advertisement in local newspapers and advertisement in the Yellow Pages®, and sponsorship of local groups such as the “Zelman Orchestra”.

5. Lastly, advertising expenditure for the years 2006/2007 to 2010/2011 and average turnover for the years 1998 to 2011 are provided.

Grounds and priority date

1. The Opponent bears the onus of establishing a ground of opposition, and the relevant standard of proof is the civil standard of the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.

2. The date at which the rights of the parties are to be determined is generally the date the application was filed,[3] although in the case of divisional applications the filing date is taken to be the filing date of the parent application,[4] which in this case is 23 December 2008 (‘the priority date’).

   [3] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

   [4] See the definition of “filing date” in section 6 of the Act.

3. It is convenient to first determine the notional rights of the parties, and so I turn first to the ground of opposition under section 44.

Section 44

1. Section 44 of the Act relevantly provides:

   44. …
   (2) 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

   (b) 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.

   Note 1: For deceptively similar see section 10.

   Note 2:  For similar services see subsection 14(2).
   Note 3:  For priority date see section 12.

2. To establish an opposition under this ground, the Opponent must demonstrate the existence of a trade mark with an earlier priority date than that of the Trade Mark, which is in respect of similar services or closely related goods and which is deceptively similar or substantially identical to the Trade Mark, in the name of a person other than the Applicant. For this purpose the Opponent appears to rely upon its registration 536918.[5] For ease of reference the details of that registration and the Trade Mark are reproduced below:

   [5] If I am wrong then I would consider the Opponent’s registrations 536910 and 536911 to be in respect of goods not closely related to the Applicant’s services, the Opponent’s registration 652333 to be in respect of a trade mark not substantially identical or deceptively similar to the Trade Mark, and the Opponent’s registrations 1335921 and 1337921 to have later priority dates than the divisional application (all of the preceding trade marks being the total of the Australian registrations referred to in either the evidence or written submissions).

Registration 536918

The Trade Mark

Services: Class 42: Hotels, motels, resorts and other types of accommodation; booking agents included in this class, restaurant services in hotels and resorts and other services for providing food and drinks to customers but not including the sale of prepared foods intended for consumption outside hotel or resort premises.

Priority date: 26 June 1990

RENAISSANCE LIVING

Services: Class 43: Retirement home services; retirement village services; provision of aged care services in retirement homes and retirement villages, including provision of aged care accommodation services, provision of temporary accommodation in retirement homes and retirement villages, rental of temporary accommodation in aged care facilities, retirement homes and retirement villages.

Priority date: 23 December 2008

1. The priority date of the Opponent’s registration is clearly earlier than that of the Trade Mark.

2. Similar services are defined in subsection 14(2) of the Act as those that are the same or those that are of the same description. The phrase “of the same description” does not have a statutory meaning but has a relatively long history of enquiry in respect of decisions relating to goods. Principles for determining whether goods are of the same description were set out in Jellineck’s application[6] and have been expanded upon.[7] They may be summarized as an assessment of the nature of the goods, their use and purpose, and the trade channels through which they are provided. The Full Court in MID Sydney Pty Ltd v Australian Tourism Co Limited (‘MID Sydney’)[8] accepted that these principles, subject to any necessary modification, apply in relation to services.

   [6] Jellineck’s application (1946) 63 RPC 59, at 70-72.

   [7] See for example John Crowther & Sons (Milnsbridge) Limited'sApplication (1948) 65 RPC 369; Reckitt & Colman (Australia) Limited v Boden [1945] HCA 12; (1945) 70 CLR 84 and Southern Cross Refrigerating Co v Toowoomba Foundry PtyLimited [1953] HCA 73; (1954) 91 CLR 592.

   [8] [1998] FCA 1616; (1998) 90 FCR 236.

3. In respect of the similarity of services the Opponent submits that its registration covers the activities “provision of short and long term accommodation services to occupants in consideration of payment of a fee or rent” and “other facilities such as restaurants, cafes, food and leisure facilities”, and therefore that:

   Retirement homes and villages, and more particularly provision of temporary accommodation in retirement homes and villages, involves exactly those services as those covered by the earlier mark No. 536918, namely [the services quoted above].

4. I am not satisfied that this is the case. The essential characteristic of the parties’ services differ in that the Opponent claims services relating to accommodation for tourists, visitors and business travelers (which is generally on a short term basis, as reflected in the Opponent’s own record keeping of nights reserved), and the Applicant claims services relating to accommodation in retirement homes and villages (which is generally permanent or long term accommodation obtained by way of purchase or rent of an apartment). Additionally, the trade channels through which the parties’ services are procured differ markedly: the Opponent’s being through travel agents, hotel and resort websites (such as ‘Wotif’, ‘booking.com’ or ‘Expedia’) or directly with the Opponent; the Applicant’s being through real estate agents, retirement advisory bodies or directly with the Applicant.

5. I note the comments of the Full Court in MID Sydney, a matter wherein the services of managing a hotel were compared with property management services:

   Certainly it is true that a provider of property management services is no less such a provider because it provides, in the course of its business, other services as well. But where, in this case, services are performed which are incidental to the conduct of the hotel business, it is not correct, in our view, to conclude that [the respondent] is using [the trade mark] (or a sign incorporating it) in relation to property management services…

   Nor, we think, does it help to identify a number of discrete aspects of the hotel business which, if carried on in other circumstances, might be characterised as the provision of property management services. In this context, each will take its character from the overall nature of the business which [the respondent] intends to conduct.[9]

Here, the fact that purchasers of the Opponent’s services may include retirees, or that the Opponent might offer “executive apartments and lodging”[10], does not alter the essential characteristics of the Opponent’s services. Nor does the fact that both parties provide similar on-site facilities such as restaurants, gyms or pools. Such facilities are incidental to the business conducted by each.

[9] Supra.

[10] Which I take to be longer term accommodation, usually provided to business travellers but which may also be provided to other temporary visitors.

1. A further consideration that I bear in mind is the nature of the word ‘Renaissance’. It is a familiar word in the English language and although it is relatively distinctive in respect of the parties’ services (and bearing in mind that the Trade Mark is actually RENAISSANCE LIVING), it is not in the same order of distinctiveness as an invented word or a word with a meaning utterly disparate to the nature of the services involved. That being the case, I consider the degree of similarity between services would need to be closer than is the case here for purchasers to be caused to wonder whether the different usages of ‘Renaissance’ originated from the same source.

2. Taking account of all of the above factors, I am not satisfied that the Trade Mark is applied to services similar to those of the Opponent’s registration 536918 nor that the respective trade marks, in those contexts, would be deceptively similar. Accordingly the ground under section 44 fails.

Section 60

1. Section 60 of the Act provides:

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.

1. Therefore to establish the ground of opposition under section 60 the Opponent must demonstrate that its trade mark had acquired a reputation in Australia such that by 23 December 2008 the use of RENAISSANCE LIVING by the Applicant in respect of the nominated services would be likely to deceive or cause confusion. In this regard I take the Opponent’s trade mark to be the plain word RENAISSANCE (it refers to both “the RENAISSANCE name” and “the RENAISSANCE mark”).

2. Reputation in this context refers to the recognition of the Opponent’s mark by the public generally,[11] although the size and nature of the relevant market must be taken into account.[12] I note further the observations that confusion cannot arise solely from reputation but also from some level of similarity between the trade marks (be it deceptive similarity or something less, no matter how small),[13] and that confusion or deception may be likely where very little, if any, nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the trade marks.[14]

   [11] McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102.

   [12] “Bali” Trade Mark [1969] RPC 472 at 496 (HL); Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; (2001) 50 IPR 1.

   [13] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5.

   [14] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.

3. As cited by the Opponent, Kenny J in McCormick & Co v McCormick[15] observed that:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

Her Honour also cited Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd:[16]

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner...

[15] [2000] FCA 1335; (2000) 51 IPR 102; at [86].

[16] [1992] FCA 159; (1992) 33 FCR 302.

1. The Opponent concedes in its written submissions that it does not currently operate any hotels under the RENAISSANCE trade mark in Australia. It appears that a hotel in Sydney previously provided services under the RENAISSANCE trade mark (by either or both of the Opponent and its predecessor in title), but that it was rebranded as a ‘Marriott’ hotel in 2002.

2. The declared number of RENAISSANCE branded hotels worldwide is significant, being 162 in at least 31 countries. Annual global sales and advertising expenditure are also significant, but neither of these figures are specific to Australia. Similarly, a significant number of Australians participate in the ‘Marriott Rewards Program’ however there is no indication of the extent to which that program promotes RENAISSANCE branded hotels.

3. There are the previously mentioned “number of online visits to Marriott websites specifically targeting the RENAISSANCE brand from IP addresses in Australia” (as well as the number of visits to Marriott websites from IP addresses both in Australia and worldwide), however the earliest of these is 2008 and I consider the number to be relatively modest given the size of the market for websites relating to hotel reservations.

4. The figures supplied for “total number of room-nights reserved by Australian residents at RENAISSANCE hotels worldwide” are not insignificant, however as previously explained it does not provide a sufficiently accurate illustration of the number of Australians who made reservations. Given that some of those reservations are likely to be for greater than one night or one room, the actual number of Australian residents reserving rooms in RENAISSANCE hotels is likely to be to some degree smaller, and potentially a great deal smaller (for example, should the average number of nights reserved be two nights then the number of Australians represented be would be approximately half of the total room-nights reserved). “Total Commission Room Nights” (being reservations made by Australian travel agents) suffers a similar fate.

5. The articles from Australian sources referring to the Opponent’s RENIASSANCE branded hotels are all dated after the priority date. Although it is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date,[17] I find that these articles do not assist in showing the extent of reputation in the Opponent’s mark in Australia between two and three years earlier.

   [17] Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505 (at 509).

6. In any event, even if I were satisfied that the evidence established a reputation in Australia for the Opponent’s trade mark (and I do not say that I am so satisfied), I do not consider that confusion would be likely because of it. The reasons for that are essentially those discussed in respect of the ground of opposition under section 44. The essential characteristics and trade channels of the parties’ services differ markedly and the parties’ trade marks are not so unusual that they would necessarily be thought to originate from the same source. (The establishing of a reputation in a trade mark might conceivably overcome such differences, however I consider that the magnitude of the reputation would need to be of an order not suggested at here).

7. Taking into account all of the above considerations, I am not satisfied that deception or confusion is likely to arise by virtue of the Applicant’s use of the Trade Mark in the face of the reputation of the Opponent’s trade mark. Accordingly, the ground of opposition under section 60 fails.

Decision

1. Section 55 provided, at the date the application was filed:

   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.

   Note: For limitations see section 6.

2. The Opponent has not established any of the grounds of opposition and the opposition fails. Accordingly, I direct that trade mark application 1284935 may proceed to registration after one month from the date of this decision.

3. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.

4. The Applicant sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Opponent as per Schedule 8 of the Trade Mark Regulations 1995.

Nicole Worth
Hearing Officer
Trade Marks Hearings
24 October 2014