The Mosaic Company a Delaware Corporation v Wengfu Australia Pty Ltd

TRADE MARKS ACT 1995

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

Re:Opposition by Motel One GmbH to applications under regulation 17A.48C of the Trade Marks Regulations 1995 by CSI DANIŞMANLIK VE DESTEK HİZMETLERİ ANONİM ŞİRKETİ for cessation of protection of Protected International Trade Mark number 935676 (International Registration number 739344) (classes 35 and 42) Motel One (composite) and Protected International Trade Mark number 1545053 (International Registration number 1150554) (classes 35 and 43) - motel one (composite) - both in the name of Motel One GmbH

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Alex Dunlop and Nicholas Mason from Corrs Chambers Westgarth

Applicant: Davies Collison Cave

Decision:

2025 ATMO 16

Trade Marks Regulations 1995 (Cth) – applications under reg 17A.48C – ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth) – some use of the trade marks demonstrated in relation to specific services on the balance of probabilities – no use demonstrated for any other services – discretion not exercised – removals partially established for both trade marks under s 92(4)(b) – amendment to specification of each trade mark.

Background

This matter concerns two applications under reg 17A.48C of the Trade Marks Regulations 1995 (Cth) (‘Regulations’)[1] seeking cessation of protection of two protected international trade marks on the Australian Register of Trade Marks (‘Register’) for non-use. I extract the details of the trade marks (‘Trade Marks’) below:[2]
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
[2] I refer collectively to the services of each of the Trade Marks as the ‘Registered Services’.
Trade mark number:               935676
International registration number: 739344
Trade mark:
(‘935676’)
Owners:  Motel One GmbH
Filing date:  15 October 2002
Services:  Class 35: Professional business consulting services for catering and accommodation enterprises, including technical advice for projects and for the management of such enterprises; consulting services for the management, monitoring and overseeing of catering and accommodation enterprises; franchising of catering enterprises, namely transmission of economic know-how to catering and accommodation enterprises
Class 42: Accommodation and catering services; reservation of temporary lodging; franchising of catering enterprises, namely licencing agencies and transmission of technical know-how to catering and accommodation enterprises
---
Trade mark number:               1545053
International registration number: 1150554
Trade mark:
(‘1545053’)
Filing date:  5 November 2012
Services:  Class 35: Business management consultancy; professional business consultancy for service enterprises providing food and drink, or temporary accommodation; professional business consultancy and organizational consultancy for the management, supervision and control of service enterprises providing food and drink, or temporary accommodation; professional business consultancy for franchising concepts
Class 43: Services for providing food and drink; temporary accommodation; motel and hotel services; accommodation reservation services
Endorsements:   Colour Claimed: TURQUOISE and ANTHRACITE.
Convention details:                Date: 14 September 2012 Number: 30 2012 049 359.9/43 Country: GERMANY
On 16 December 2022, CSI DANIŞMANLIK VE DESTEK HİZMETLERİ ANONİM ŞİRKETİ (‘Removal Applicant’) filed applications for cessation of protection of the Trade Marks. On 21 February 2023, Motel One GmbH (‘Removal Opponent’) filed its Notices of Intention to Oppose the applications for cessation of protection and on 21 March 2023 filed its Statements of Grounds and Particulars. The Removal Applicant filed its Notices of Intention to Defend the applications on 26 May 2023.
On 30 August 2023, the Removal Opponent filed its Evidence in Support (‘EIS’). The Removal Applicant did not file Evidence in Answer.
The Removal Opponent requested to be heard and filed written submissions prepared by Alex Dunlop and Jürgen Bebber of Corrs Chambers Westgarth. On 17 October 2024, the Removal Applicant informed the Trade Marks Office by letter that it would not be attending the hearing. I heard the matter on 18 October 2024. The Removal Opponent was represented by Alex Dunlop and Nicholas Mason from Corrs Chambers Westgarth. I am to decide this matter as a delegate of the Registrar of Trade Marks (‘Registrar’).

Relevant period and onus

Section 92 relevantly provides:
92 Application for removal of trade mark from Register etc.
(1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.
(3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note: For prescribed court see section 190.
(4) An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non‑use application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 1: For file and month see section 6.
Note 2: If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
Note 3: For when the registration of a trade mark is taken to have effect, see sections 72 and 239A.
(5) If the right or interest on which a person relied to make a non‑use application becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first‑mentioned person as the applicant.
The non-use applications were filed on 16 December 2022 and comply with s 93 of the Act. The applications nominated grounds under ss 92(4)(a) and (b) of the Act.[3] However, given the way that s 92(4)(a) is drafted, this provision in summary merges with s 92(4)(b) once a trade mark has been registered for 5 years.[4] Accordingly, it is only necessary to consider the s 92(4)(b) ground.
[3] Regarding the s 92(4)(b) ground, see Act s 93(2) prior to amendments to s 93(2) by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3. Section 93(2) in its amended form applies to trade mark applications filed from 24 February 2019 onwards.
[4] Moores MDP Pty Ltd v Moore Stephens International Licensing [2023] ATMO 86, [23] (Hearing Officer Wilson).
By ss 92(4)(b), 100(1)(c) and 100(3) the Removal Opponent must establish use of the Trade Marks in Australia in the three year period ending on 16 November 2022 (‘Relevant Period’) or that the Trade Marks were not used in relation to the Registered Services because of circumstances that were an obstacle to the use of the Trade Marks during the Relevant Period. The Removal Applicant alleges that there has been no use of the Trade Marks in relation to any of the Registered Services in the Relevant Period. It is the Removal Opponent who must rebut the allegation of non-use.[5] Any findings of fact are based on the civil standard of the balance of probabilities.[6] The allegation can be rebutted by establishing use by the owner of the Trade Marks or by an ‘authorised user’.
[5] Section 100(1)(c).
[6] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J).
‘Use as a trade mark’ is use of a trade mark as a badge of origin in the sense that it indicates a connection in the course of trade between the services and the person who applies the sign to those services.[7] This does not require the actual sale or purchase of the services.[8] The Full Court of the Federal Court in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd Capital found in relation to financial services that, ‘a finding of trade mark use may be open if the foreign supplier uses the mark so as to indicate his or her willingness to supply the relevant services conditionally or on terms to be agreed.’[9] A commercial dealing in relation to the services under, or by reference to, the sign is sufficient to constitute ‘use as a trade mark’. A single bona fide use during the Relevant Period is sufficient for the Removal Opponent to discharge the onus,[10] although if only a single instance of use is alleged it should be established by, ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[11]
[7] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
[8] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105, [29] (Drummond J).
[9] Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6, [112] (Nicholas, Yates and Beach JJ).
[10] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[11] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).
If the requisite use is not established, in accordance with s 101 I may decide to remove the Trade Marks, or if satisfied it is reasonable to do so, decide to not the remove them. I explain this discretion in more detail further below.

Evidence

The EIS consists of a declaration of Ina Hoeck, Legal Counsel at the Opponent, dated 29 August 2023 (‘Hoeck’), with Annexures IH-1 to IH-15.
The Removal Opponent is a German based operator of hotels, trading under the Trade Marks. It currently operates 90 hotels and Hoeck notes intentions to expand this number. The hotels operate across numerous countries in Europe, the United States, the United Kingdom and Ireland. Notably the Removal Opponent does not appear to operate any hotels situated in Australia which trade under the Trade Marks.
Annexure IH-1 consists of a brochure which lists hotels operated by the Removal Opponent and shows images of the entrance of some of the hotels, displaying 1545053. The locations listed include Berlin-Upper West and Bonn-Hauptbahnhof. Also listed with images of the hotel entrance are London-Tower Hill, Berlin – Potsdamer Platz, Paris – Porte Doree and Zurich. Annexure IH-1 appears to be dated January 2022.
The Removal Opponent operates a website at (‘Removal Opponent’s Website’). Annexure IH-5 consists of undated screen captures of the Removal Opponent’s Website. Annexure IH-6 shows the booking process for booking a hotel room with the Removal Opponent’s hotels via the Removal Opponent’s Website. An analytics report shows moderate amounts of users accessing the Removal Opponent’s Website from Australian IP addresses during the Relevant Period.[12] However, the exact appearance of the Removal Opponent’s Website is not shown in any evidence which is dated in the Relevant Period. Annexure IH-7 shows analytics dated in the period 22 November 2019 to 22 November 2022 for visits to the Removal Opponent’s Website from persons with IP addresses in Australia. The analytics also show a substantial amount of revenue generated by transactions on the Removal Opponent’s Website by users with IP addresses in Australia in that period.
[12] Confidential Annexure IH-7.
At Annexure IH-8 to Hoeck is an undated screen capture of a page titled ‘contact us’ from the Removal Opponent’s Website. The page appears to allow for the entry of an Australian phone number with the leading ‘+61’ country code shown prefilled, as well as the country codes for many other countries. Hoeck declares that the screenshot is, ‘reflective of the way the pages looked during the Relevant Period’.[13]
[13] Hoeck, [21].
Hoeck also declares that bookings are also able to be made on third-party websites which target
Australian consumers, such as TripAdvisor, Hotels.com, LastMinute and Trivago. Whilst there are also examples of a Google search result showing that it is likely entries occurred on these websites during the Relevant Period, the trade mark(s) appearing in the Relevant Period on the third-party websites is not shown and only the text ‘Motel One’ is visible. The Google search results mention, for example, ‘Motel One Manchester-Piccadilly’ and ‘Motel One Wien Hauptbahnhof’ as listed on TripAdvistor.com.au. Hotels.com Australia lists ‘Motel One Barcelona’. Lastminute.com.au lists ‘Motel One London – Tower Hill’. Trip.com Australia lists ‘Motel One London-Tower Hill’ and ‘Motel One Manchester – St. Peter’s Square’.
Annexure IH-9 to Hoeck shows screen captures from the website (‘TripAdvisor’) for hotels listed under the titles ‘Motel One Manchester Piccadilly’ dated 24 February 2020 and ‘Motel One Wien-Hauptbahnfhof’ dated 20 November 2021. However, the Trade Marks do not appear in the screen captures. Some of the screen captures do contain the plain words ‘Motel One’ in relation to hotel services. The photographs in the screen capture dated 20 November 2021 do not appear to have loaded or the images as part of that listing do not appear to have been captured by the WayBack Machine evidence.
Hoeck declares that Australians stayed at hotels run by the Removal Opponent during the Relevant Period. Confidential Annexure IH-10 lists various of the Removal Opponent’s global hotel locations, the number of guests residing in Australia that have stayed in each location and the net revenue that those stays have generated for the Removal Opponent in the period 22 November 2019 to 22 November 2022. To this end, Hoeck submits that its hotels in the cites of Manchester, Piccadilly and Edinburgh were of particular note.
Hoeck declares that at the end of their stay at the Removal Opponent’s hotels, guests are issued with a tax invoice. Copies of 40 invoices for accommodation services appear at Confidential Annexure IH-11. At the top of each of the invoices is a space for an address, each of which contains the word ‘Australia’ at the bottom with the address details above redacted. The Removal Opponent declares that each of the redacted addresses is in located in Australia. I note that all these invoices are dated within the Relevant Period.
Annexure IH-12 to Hoeck consists of a spreadsheet with a ‘list of reviews left by guests from Australia that have stayed at the Removal Opponent’s hotels from December 2021 to November 2022’.[14]
[14] Hoeck, [26].
Hoeck declares that the Removal Opponent operates a membership program called ‘BeOne’. At the start of the Relevant Period and at the end of the Relevant Period there appear to have been moderately sizeable numbers of Australian members of BeOne.[15] Members are declared to have received various promotional material from time to time. Annexure IH-15 consists of examples of promotional material said to have been received by members. The example emails were sent to members within the Relevant Period. All of the exhibited marketing emails for the BeOne program display 1545053.
[15] Hoeck, [29].
I otherwise refer to the EIS where relevant throughout these written reasons.

Consideration

It is useful to note at the outset that the EIS contains no example of the use of the Trade Marks in relation to any of the class 35 Registered Services. The Registered Services in class 35 are business type services in the area of management and/or franchising. There is nothing in the EIS showing the provision of various types of franchise services or business management consultancy. Accordingly, no use of the Trade Marks is shown for any Registered Services in class 35. Also, there is no evidence of the use of the Trade Marks in relation to class 42 franchising of catering enterprises, namely licencing agencies and transmission of technical know-how to catering and accommodation enterprises. At its highest the evidence shows the offer and delivery of hotel accommodation services.
Regarding the remaining services in classes 43 and 42, I should acknowledge that there is a fine line here as to whether the evidence demonstrates use of the Trade Marks in Australia in the Relevant Period. What the Removal Opponent must show is something more than just that it operates hotels at some place outside of Australia which happen to have hosted Australian customers.[16] A direct route for the Removal Opponent to show its use in Australia would have been dated images of a website it operated which has been unequivocally and specifically directed at Australian consumers, or materials showing websites and/or travel agents shown to target Australian consumers as offering the Registered Services. The problems with the EIS include that the screen captures of the Removal Opponent’s Website are not dated and the screen captures of third-party websites do not demonstrate the use of the Trade Marks or a substantially identical trade mark. It is not specified whether any of the invoices at Annexure IH-11 have resulted from, for example, specifically directed marketing or advertising on an Australian website. Furthermore, there is no evidence, for example, of any arrangements between the Removal Opponent and travel agents targeting Australian consumers.
[16] See, for example, Kerten Unlimited Company v Motel One GmbH [2024] ATMO 208 (Hearing Officer Makrigiorgos) (‘Kerten’).
The Removal Opponent submits that Carnival Cruise Lines Inc v Sitmar Cruises Ltd (‘Sitmar’)[17] is instructive in this matter. In Sitmar there were services delivered overseas though offered and booked from Australia. The Court in Sitmar appears to have relied on evidence of arrangements between travel agents for bookings, in finding that there was use of the trade mark.
[17] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936 (‘Sitmar’).
In Sitmar Gummow J stated that whilst earlier decisions had found that use of a trade mark must occur within Australia:
… that is not to say that the whole of the course of trade, with which there is a connection in Australia between the goods or services and the proprietor of a registered user, must be confined to Australia.[18]
[18] Ibid [48].
Justice Gummow also noted that the applicant in Sitmar had accepted bookings for its cruises through a network of travel agents in Australia. His Honour then concluded that the combination of the use of the trade mark FUN SHIP on brochures provided to Australian travel agencies, and the booking of cruises through Australian agents, was sufficient to constitute use of the trade mark FUN SHIP in Australia, notwithstanding the contracted services (the cruise itself) took place outside of Australia.[19]
[19] Ibid [56].

The Removal Opponent also referred me to the decision in Hilton Hospitality Inc v Waldorf Australia Group Ltd (‘Hilton Hospitality’).[20] In Hilton Hospitality the delegate, referring to the evidence, noted:
[The witness] states that, in 2007, 848 Australian guests stayed in either the Waldorf=Astoria hotel or The Waldorf Towers in New York for an average of approximately 4 nights each. And, in 2008, 1227 Australian guests stayed in either the Waldorf=Astoria hotel or The Waldorf Towers for an average of about 4 nights each. Further, between 14 April 2006 and 29 October 2008 a total of 618 rooms were booked by large Australian groups. In my consideration it is likely that most of these bookings were made from within Australia via travel agents or online booking facilities on the internet and that such use of the Waldorf trade marks qualifies as Australian use: [Sitmar]….[21]
[20] [2013] ATMO 20 (Hearing Officer Thompson).
[21] Ibid [22] (citations omitted).
In Kerten Unlimited Company v Motel One GmbH (‘Kerten’)[22] the delegate noted the following in relation to submissions made by the Removal Opponent in relation to an application for cessation of another trade mark which referred to Sitmar:
It is not in dispute that the Opponent does not offer accommodation in Australia and the Opponent’s Accommodation is all overseas. The Applicant submits that an Australian guest staying in a hotel overseas does not equate to use in Australia. The Applicant further submits that there is no evidence that any guest booking was made in or from Australia e.g. through a travel agent in Australia, online from an Australian website etc. or that the Opponent advertised or promoted the Opponent’s Accommodation in Australia.
Again, I agree with the Applicant that an Australian… guest staying in a hotel overseas does indeed not equate to use in Australia. Further, while the Opponent states that the 348 and 16 hotel guests referred to in O’Shea were ‘Australian residents’, firstly there is no proof of this assertion and secondly, being an Australian resident or having a nationality stated as Australian, does not provide any information as to when, where and how the Opponent’s Accommodation was booked.
…
I consider that [Sitmar] does not assist the Opponent. In the present case, there is no evidence of distribution of advertising brochures or indeed any type of advertising of the Services in Australia. Further there is no evidence that any guest booking was made in or from Australia. All the Opponent has provided is evidence which contains unsupported assertions, is undated or outside the Relevant Date and lacks specificity. I consider there is no corroboration of the Opponent’s claims that there was use of the Trade Mark for any of the Services in the Relevant Period in Australia.[23]
[22] Kerten (n 16) [28].
[23] Kerten (n 16) [28]-[31].
The evidence demonstrates that hotel services for some of the Removal Opponent’s hotels are arranged and booked through travel agents, hotel and resort websites (such as TripAdvisor) or directly with the Removal Opponent via the Removal Opponent’s Website.[24] However, the Removal Opponent has also marketed its services by the BeOne membership scheme, which in turn directs members to the Removal Opponent’s website for bookings. The Removal Opponent has provided evidence which is more than a basic assertion that it has had Australian guests at its hotels and appears to go beyond that summarised by the delegate in Kerten.[25] There is dated evidence of activities involving offers to persons with likely Australian addresses and sizeable numbers of actual bookings, as well as invoices.
[24] Renaissance Hotel Holdings Inc v Ravida Properties Pty Ltd [2014] ATMO 105, [25] (Hearing Officer Worth).
[25] Cf Kerten (n 16) [31].
The BeOne membership program also assists the Removal Opponent to some extent. There is evidence that Members of BeOne regularly receive promotional materials and newsletters which have contained 1545053 with mention of hotel and the related provision of food and drink. Hoeck declares that the items contained in Annexure IH-15 have been sent to Australian BeOne Membership accounts. There has been a moderate number of Australian members of BeOne at the start and end of the Relevant Period. I am satisfied that on the balance of probabilities Australian members of BeOne during the Relevant Period would have received the promotional materials.
Annexure IH-15 to Hoeck shows, for example, a newsletter, dated 6 December 2022, featuring 1545053 at the top with reference to hotel services alongside another sign consisting of or including the words ‘The Cloud One Hotels’. Another newsletter, dated 25 November 2022, shows 1545053 alongside another sign consisting of or including the words, ‘Cloud One Bar’, with apparent mention of bar services. Overall, I consider the promotional materials at Annexure IH-15 to show the Removal Opponent using 1545053 in relation to hotel accommodation in the Relevant Period. The material there also mentions booking services available on the Removal Opponent’s Website alongside 1545053. Therefore, this amounts to evidence of the use of 1545053 in relation to the Registered Services ‘reservation of temporary lodging’.
Also at issue is whether the offers of the Registered Services, as shown in the evidence, are specifically targeted or directed at, or specifically intended to be acted upon by, consumers in Australia.[26]
[26] [2005] FCA 471, [37] (Merkel J).
In Ward Group Pty Ltd v Brodie & Stone Plc, Merkel J stated:
In summary, the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.[27]
[27] Ibid [43].
A problem with the evidence, is that the examples of the advertising appear to target potential purchasers anywhere in the world at large. However, I accept that the various third-party websites, such as TripAdvisor, would be targeted at Australian consumers, especially considering that they have a ‘.com.au’ domain extension or otherwise mention Australia in their name. Furthermore, there is evidence of the Removal Opponent having had accepted the purchases of a moderately sizeable number of guests with Australian addresses for hotel services. I also note the nature of hotel services generally seems to be a relevant point in this matter. Hotel services are by their nature directed to guests from out of town, such as international travelers. International travelers are a significant part of a hotel’s business.[28] Hotel services usually involve significant transactions. The manner in which overseas hotel services are offered in Australia and booked has likely shifted at least somewhat since the time Sitmar was decided in 1994. Whilst travel agents nowadays certainly still exist, direct online consumer marketing or bookings via online intermediaries, such as TripAdvisor are now also commonly used. The evidence establishes that the Removal Opponent has been using either a direct to consumer marketing approach by the Removal Opponent’s Website or the BeOne program, or marketing via third-party websites directed to Australians.
[28] Major Intellectual LLC [2022] ATMO 87, [27] (Hearing Officer Knowles) (‘Major Intellectual’).
In Sitmar the Court appeared to refer to specific evidence of agreements and contracts between travel agents and the tourist services delivered overseas. As in Hilton Hospitality, a combination of evidence may be sufficient for me to conclude that it is more probable than not that at least some bookings made in the Relevant Period by Australian consumers have been made from within Australia either directly via travel agents or online booking facilities on the internet which are directed to Australian consumers. I draw the inference from the EIS that, for example, the marketing material for members of the BeOne program was sent to members for the purposes of attracting potential guests, including Australian consumers, at the Removal Opponent’s hotels trading under the Trade Marks. In my mind the Removal Opponent operated hotels under the Trade Marks, and the services were offered and available to guests being Australian consumers of hotel services. Unlike in Kerten, in the present case there is some evidence of the advertising of the Registered Services in Australia bearing the Trade Marks in relation to hotel services. Also unlike in Kerten, there are numerous examples of actual guest bookings and moderately sizeable numbers of bookings, as well as persons likely in Australia accessing the Opponent’s Website.[29] It is likely that at least some of these bookings were made in or from Australia via the Removal Opponent’s Website or a third party website. The evidence corroborates the Removal Opponent’s claims that there was use of the Trade Mark for Registered Services in the Relevant Period in Australia. There is no evidence from the Removal Applicant that contradicts any of the assertions in Hoeck in combination with its corroborating exhibits. I have no reason to doubt the assertions in Hoeck and there is nothing which I consider to be contradictory in the EIS.
[29] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [76] (Yates, Stewart and Rofe JJ).
I am satisfied that on the balance of probabilities, the Removal Opponent has used 1545053 in relation to hotel accommodation services and the reservation of temporary lodging in the Relevant Period in Australia. The Removal Opponent submits that I should I consider the Trade Marks to be substantially identical.[30] Both trade marks consist of the stylised words ‘motel one’ in proximity to an identical logo device. On a side by side comparison, I consider there to be a total impression of similarity between the Trade Marks. The use of one of the Trade Marks, is the use of the other without additions of alterations which substantially affect its identity. Therefore, the Removal Opponent has also used 935676 in relation to hotel accommodation services and the reservation of temporary lodging in the Relevant Period in Australia.
[30] Removal Opponent’s Submissions [27]-[37].
I note that there is some evidence where guests have commented on food, drink and bar services in the reviews at Annexure IH-2 to Hoeck and some reference to such services in the BeOne advertising at Annexure IH-15.
In Major International, LLC the delegate noted that:
Many restaurants facilitate online reservations, either through their own website or through specialised booking providers. Such reservations are generally easy to make and do not requirement any tangible commitment (such as the payment of a deposit). Without more, the use of a Trade Mark on a foreign restaurant website with a booking facility is nothing more than an offer to the world at large. I consider, from the perspective of an Australian consumer, that the crucial integers in the provision of services from a restaurant located in a foreign country either take place at the restaurant itself or when food is ordered for delivery to a location in the foreign country. This is to be contrasted with the purchase of cruise services (as in [Sitmar]) and booking of accommodation (as in [Hilton Hospitality]), which are more significant transactions. The booking of cruise and accommodation services often occurs a significant time in advance of travel and may often require payment up front (either in full or a deposit). Even when up front payment is not required, there is usually a deadline by which cancellation must be made before a cost is incurred. Providers of hotel accommodation (particularly in famous hotels) and cruise services are also more likely to focus on international customers when compared to providers of restaurant services, as such international customers would form a significant part of their target market.[31]
[31] Major Intellectual (n 28) (citations omitted).
The provision of food and drink in a hotel setting will often be provided under a different trade mark to that under which the hotel services are offered and in the present matter it is unclear what trade mark the services connected with the provision of food and drink were provided under. I also have similar concerns to those expressed by the delegate in Major Intellectual, LLC. Accordingly, I am not satisfied that there has been use in Australia of the Trade Marks in relation to the services for the provision of food and drink in class 43 or catering services in class 42.
For completeness I note that there is no obstacle to use of the Trade Marks in relation to any of the Registered Services of which no use been demonstrated in the evidence.

Registrar’s discretion

Section 101(3) provides me with a broad discretion to not remove the Trade Marks from the Register even where s 92 grounds have been established, provided I am satisfied it is reasonable to do so. I must consider whether this discretion should be exercised in relation to the Registered Services. However, the Removal Opponent need not establish ‘exceptional circumstances’.[32]
[32] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, [198] (Flick J) citing Kowa Co Ltd v Organon [2005] FCA 1282, [98] (Lander J).
Various factors are to be considered in applying s 101. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (‘PDP Capital’) the Federal Court observed of s 101(3) and the relevant factors:
[t]he following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. ...
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. ...
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[33]
[33] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).
I note that the Removal Opponent has not demonstrated any use of the Trade Marks for a franchising service or, for example, the transmission of economic knowhow. I note that there is also no offer of any kind for business consultancy or quality control services, especially to any Australian business consumers.
Otherwise, there is little information or evidence that speak to the factors mentioned in PDD Capital and I am conscious of the public interest in the Register reflecting what is being used by traders. The Removal Opponent provides little reason for the Trade Mark to remain on the Register for the Registered Services. I am not satisfied, for example, that confusion would likely follow if I was to refuse to exercise the discretion in relation to the Registered Services.
Balancing the relevant considerations and noting all of the evidence, I am not satisfied that it is reasonable to exercise the discretion not to remove the Trade Mark for any of the Registered Services.

Decision and costs

The Removal Opponent has established use of the Trade Marks in Australia in relation to some though not all of the Registered Services during the Relevant Period. I have not been satisfied that it is appropriate to exercise discretion to allow the Trade Marks to remain protected for those services for which use is not shown. As such, protection of the Trade Marks should cease in relation to some of the Registered Services.
The following amendments are to be made to the specification of the Trade Marks (strikethrough indicating deletion):

935676

~~Class 35:~~ Business management consultancy; professional business consultancy for service enterprises providing food and drink, or temporary accommodation; professional business consultancy and organizational consultancy for the management, supervision and control of service enterprises providing food and drink, or temporary accommodation; professional business consultancy for franchising concepts
Class 43: ~~Services for providing food and drink~~; temporary accommodation; motel and hotel services; accommodation reservation services

1545053

~~Class 35:~~ Professional business consulting services for catering and accommodation enterprises, including technical advice for projects and for the management of such enterprises; consulting services for the management, monitoring and overseeing of catering and accommodation enterprises; franchising of catering enterprises, namely transmission of economic know-how to catering and accommodation enterprises
Class 42: Accommodation ~~and catering~~ services; reservation of temporary lodging; ~~franchising of catering enterprises, namely licencing agencies and transmission of technical know-how to catering and accommodation enterprises~~

Noting that there is an appeal period, the amendment of the specifications shall not take place until at least one month from today. If the Registrar is served with a notice of appeal before then, protection of the Trade Marks shall not cease until the appeal has either been discontinued or the applications for cessation of protection have been otherwise dealt with as the Court sees fit.
Ordinarily costs will follow the event. However, there has been some measure of success for each party here. Accordingly, I decline to make an award of costs.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

16 January 2025

[2025] ATMO 24

3 February 2025