The Mosaic Company a Delaware Corporation v Wengfu Australia Pty Ltd

This matter concerned applications by CSI DANIŞMANLIK VE DESTEK HİZMETLERİ ANONİM ŞİRKETİ for the cessation of protection of two international trade marks registered in the name of Motel One GmbH, on the grounds of non-use. The applications were made under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth), and relied on grounds specified in sections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth). The delegate of the Registrar of Trade Marks was required to determine whether the trade marks had been used in Australia during the relevant three-year period preceding the applications.

The primary legal issue before the delegate was whether Motel One GmbH had demonstrated use of its trade marks in Australia in relation to the registered services during the period from 16 November 2019 to 16 November 2022. This involved assessing whether the evidence established use as a trade mark, meaning use as a badge of origin indicating a connection in the course of trade between the services and the owner. The delegate also considered whether any discretion should be exercised to avoid removal if non-use was established.

The delegate found that while there was evidence of Australian consumers accessing Motel One's website and generating revenue through bookings, and that Australians had stayed at Motel One hotels overseas and received invoices addressed to Australia, this did not sufficiently demonstrate use of the trade marks in Australia. Specifically, there was no evidence of use in relation to the class 35 business management and franchising services. For the class 42 and 43 accommodation services, the evidence did not establish a direct route for use in Australia, such as dated website materials unequivocally directed at Australian consumers or evidence of arrangements with Australian travel agents. The delegate noted that screen captures of websites were not dated or did not clearly show the trade marks, and that the mere fact of overseas services being booked by Australians did not equate to use in Australia.

Consequently, the delegate determined that use of the trade marks had not been demonstrated for any of the registered services in class 35, nor for the franchising services in class 42. While some use was established for accommodation services in classes 42 and 43, it was not sufficient to rebut the allegation of non-use for all registered services. Accordingly, the delegate exercised discretion to amend the specifications of each trade mark to reflect only those services for which use had been proven, rather than ordering complete removal.