SPG Investments Pty Ltd v Preferred Guest, Inc

This matter concerned an opposition by SPG Investments Pty Ltd (the Opponent) to the registration of a trade mark by Preferred Guest, Inc (the Applicant). The Opponent, part of the Spotlight Property Group, argued that its own trade mark, which also incorporated the initials SPG, was identical or deceptively similar to the Applicant's mark and registered for the same or similar services. The Applicant, which operates hotels under brands such as Sheraton and Le Meridien as part of the Starwood Hotel Group, contended that its loyalty program, known as Starwood Preferred Guest, had been in use globally and in Australia since the late 1990s.

The primary legal issue before the Hearings Officer was whether the Opponent had established a ground of opposition under section 44 of the relevant Act. Specifically, the Opponent needed to demonstrate that it owned a trade mark registration with an earlier priority date than the opposed trade mark, which was registered for the same or similar services and was substantially identical with or deceptively similar to the opposed trade mark. The Opponent relied on its registered mark, which the parties agreed was identical to the Applicant's mark, and the key question became whether this mark was registered for services that overlapped with those claimed by the Applicant.

The Hearings Officer found that while the Opponent's mark was identical to the Applicant's mark and had an earlier priority date, the exclusions made to the specifications of services in the Opponent's mark and the limitations included in the Applicant's trade mark specifications effectively avoided an overlap of conflicting services for the purposes of section 44. Consequently, the Hearings Officer was not satisfied that this ground of opposition had been established.

As the Opponent had not established any of its grounds of opposition, the Hearings Officer directed that the Applicant's trade mark application could proceed to registration one month from the date of the decision, unless an appeal was filed. The Hearings Officer also awarded costs to the Applicant, as it was the successful party.