The Ritz Hotel Limited v Institut Hotelier Cesar Ritz SA

[2003] ATMO 28

TRADE MARKS ACT 1995

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

Re:Opposition by The Ritz Hotel Limited to registration of trade marks 670149 (41), 670150 (41) and 671418 (41) – Cesar Ritz (word) and Cesar Ritz Hotel Consult (Logo) – filed in the name of Institut Hotelier Cesar Ritz SA.

Background

Institut Hotelier Cesar Ritz SA, (‘the applicant’), of Port Valais, Switzerland, has filed three trade mark applications under the Trade Marks Act 1995 (‘the Act’), each of which is opposed.  Details of these applications are:

Appn Number  670149
Priority date:  21 August 1995
Acceptance date:                   29 January 1998
Services:  Class: 41  Education and training in hospitality and hotel services
Trade Mark:  CESAR RITZ (typed words)
Endorsements:  Provisions of paragraph 44(3)(a) applied.

Appn Number:  670150
Priority date:  21 August 1995
Acceptance date:                   29 January 1998
Services:  Class: 41  Education and training in hospitality and hotel services
Trade Mark:  

Endorsements:  Provisions of paragraph 44(3)(a) applied

Appn Number:  671418
Priority date:  4 September 1995
Acceptance date:                   29 January 1998
Services:  Class: 41  Education and training in hospitality and hotel services
Trade Mark:  

 

Endorsements:  Provisions of paragraph 44(3)(a) applied.

The endorsements refer to subsection 44(3)(a) of the Act whereby a trade mark may be accepted because of its honest concurrent use with a trade mark which conflicts under the provisions of subsections 44(1) or (2), notwithstanding its substantial identity or deceptive similarity to that trade mark.

The Ritz Hotel Limited (‘the opponent’), of Paris, has filed Notices of Opposition (‘the Notices’) to the registration of the abovementioned trade marks.  The Notices recite several grounds of opposition; however, at the hearing of the matters in Melbourne, on 20 February 2003, Ms Elspeth Strong, counsel for the opponent, relied on grounds under sections 60, 62(b), 42(b), 43, 44 and 58.  Mr Ben Fitzpatrick, also of counsel, appeared for the applicant.  I heard these matters as a delegate of the Registrar of Trade Marks.

The evidence in these matters is voluminous – for reasons which will become obvious, I do not intend to discuss it at very great length except where is necessary in my reasons, below.

The evidence comprises:

Declarant	Referred to as	Date Made
Evidence in Support
Frank Klein	Klein 1	27 October 1999
John Patrick Humphrys Barker	Barker	29 July 1999
Evidence in Answer
Martin Kisseleff	Kisseleff	1 September 2000
Monique Ritz	Ritz	4 September 2000
Marika Regina Pongracz	Pongracz	20 October 2000
Martin Kisseleff	Kisselheff 2	5 January 2001
Adam Matthew Sears	Sears 1	24 January 2001
Evidence in Reply
Jean-Pierre Brizay	Brizay 1	22 October 2001
Jean-Pierre Brizay	Brizay 2	27 November 2001
Kathryn Louise McEvoy	McEvoy 1	30 November 2001
Kathryn Louise McEvoy	McEvoy 2	30 November 2001
Kathryn Louise McEvoy	McEvoy 3	4 January 2001
Kathryn Louise McEvoy	McEvoy 4	10 January 2001
Kathryn Louise McEvoy	McEvoy 5	16 January 2001
Further Evidence (Applicant)
Lucas M David	David	28 March 2002
Adam Matthew Sears	Sears 2	5 April 2002
Helen Fanning	Fanning	5 April 2002
Francis Loughran	Loughran	6 April 2002
Erik Bruce Hopkinson	Hopkinson	7 April 2002
Marcus Pettinato	Pettinato	8 April 2002
Geoffrey Conaghan	Conaghan	8 April 2002
Response to Further Evidence (opponent)
Guy Werner	Werner	24 June 2002
Additional Evidence (opponent)
Katherine Lake	Lake	20 September 2002
Frank Klein	Klein 2	27 November 2002 (remade) 17 February 2003
Further Additional Evidence (applicant)
Andrew Parick Leary	Leary	6 February 2003
Adam Matthew Sears	Sears 3	13 February 2003

The Evidence

Something of the history of the opponent is summarised by McLelland J in The Ritz Hotel Ltd v Charles of The Ritz Ltd and another - 12 IPR 417 12 IPR 417 at 442:

The plaintiff was incorporated in the United Kingdom in 1896. It is, and has been since its opening in 1898, the proprietor of a hotel in the place Vendòme, Paris called the "Ritz" (to which I will refer as "the Paris Ritz").

It was named after César Ritz, an original shareholder and director of the plaintiff, who is reputed to have been a well known, innovative and influential European hotelier of the time. César Ritz remained a director of the plaintiff until about 1910. The Paris Ritz was extended in 1912 to include two adjoining properties in the Place Vendòme and the Rue Cambon. It is situated in an historic and architecturally beautiful square in central Paris and is an establishment of considerable luxury and elegance.

In or about 1970 the plaintiff commenced displaying for sale in the hotel articles (ties and blazer buttons) bearing the hotel crest which incorporated the words "Hotel Ritz Paris", and commenced selling in the hotel's bars, restaurants and saloons, bottles of champagne bearing the hotel crest on the label.

By 1979 the plaintiff was supplying in guests' bathrooms for their use, soap, shampoo and bathrobes also bearing the hotel crest. Bathrobes were also available for purchase by guests. Also displayed for sale in the hotel were several books relating to the hotel. In 1979 there was a change in the ownership and management of the plaintiff, following which the range of articles displayed and available for sale in the hotel bearing the hotel crest or the words "Hotel Ritz Paris" without the crest was increased. By 1984 the range of such articles included bathrobes, scarves, playing cards, chocolates, buttons, ashtrays, vases, key chains, ties, slippers, face cloths, sewing kits, clocks, pen stands, soap, bath foam and shampoo. The range presently includes, as well as the foregoing, articles of leather, silver and crystal as well as comestibles, toiletries, clothing and linen.

After the change of control of the plaintiff in 1979, consideration was given by its management to the possibility of exploiting the name of the hotel and the word "Ritz" in relation to the marketing of goods generally, and particularly in other countries of the world. Two different methods were ultimately adopted. One was the export by the plaintiff for sale of articles of the kind displayed for sale in the Paris Ritz bearing the word "Ritz" with or without elaboration (to which I will refer as "the plaintiff's Ritz products"). The other was the licensing of other merchants, particularly in other countries, who were prepared to pay royalties to the plaintiff for permission to use the word "Ritz", with or without elaboration, on their own products.

Although the plaintiff made isolated shipments of Ritz champagne to the United States in 1980 and 1982, no further overt steps to give effect to either method of exploitation appear to have been taken by the plaintiff until March 1984 when it established as its "merchandising department" a company called The Ritz Paris Enterprises Ltd (RPE) with an office in the United States. It appears from its memorandum of association that the primary object for which RPE was established was: "To provide marketing and administrative services in respect of all types of business and in particular, but without limitation to the foregoing, to licensors of intangible property and to provide such services in all parts of the world."

From August 1984 onwards the plaintiff exported, although in a fairly haphazard and discontinuous fashion, certain of its own Ritz products to destinations in various parts of the world, including as from about September 1985 quantities of cigarettes manufactured for the plaintiff and bearing the words "Ritz Paris". Shipments to the United States, and on occasions to other places, were arranged through RPE. Many of the consignees were department stores controlled by the controllers of the plaintiff. Some evidence about these export shipments was given by Mr J Olsen, the officer of the plaintiff in charge of trade marks and intellectual property. Mr Olsen was prepared to concede in the case of some of these shipments that they were effected for "trade mark purposes" rather than as commercial sales. Such a concession was made in respect of the only sale of goods made by the plaintiff to a purchaser in Australia, which comprised 5000 Ritz Paris cigarettes sent in August 1986 to a Mr F Gaffney of Gaffney international Licensing Pty Ltd in Melbourne. Mr Gaffney was not a distributor of goods, but was a trade mark licensing agent, and in the words of mr Olsen this shipment was "to establish a leading use in Australia ... for a trade mark purpose". That the plaintiff did not intend these cigarettes to be put on the market in Australia is corroborated by the fact that in the previous month, as will be later described, the plaintiff had purported to grant to a West German company the exclusive right to use the mark RITZ in relation to cigarettes "worldwide except the United States and its possessions and territories". It seems likely that a similar "trade mark purpose" characterised many more of the plaintiff's export shipments, judging from their lack of continuity, the small quantities involved and some of the documentation associated with them. Mr Olsen's evidence to the contrary was not to my mind convincing. He was not a witness on whom I felt I could safely rely. In several instances evidence which he gave was shown to be inaccurate and misleading.

This is not to say that there were not some genuine commercial shipments by the plaintiff from its Ritz products range. For example there is no reason to doubt the genuine commercial nature of a number of shipments between July 1986 and January 1987 of the plaintiff's Ritz products to Imperial Enterprises Inc, a Japanese mail order company which had, with the plaintiff's approval, produced a catalogue of many of the plaintiff's Ritz products.

There is evidence, which I accept, that the plaintiff contemplates the future expansion of its Ritz products range to include such products as perfume, sportswear, soap, bath lotion, food products (including frozen food), cognac, leather goods (including luggage items), umbrellas, table top items (eg china, glassware, silverware) and jewellery. To date, however, little has been done to this end although there is evidence of preliminary discussions with a perfume supplier in October 1986, resumed during or shortly before the hearing.  From time to time Mr Klein, the president of the plaintiff, has had discussions with representatives of Australian department stores with a view to the introduction of a range of the plaintiff's Ritz products to those stores. The stores involved are Grace Bros (which showed little interest), David Jones and Myer. In or about October 1987 the plaintiff forwarded to representatives of David Jones in Sydney and Myer in Melbourne samples of a number of its Ritz products. I have the distinct impression that approaches by the plaintiff to prospective dealers in the plaintiff's Ritz products, both in Australia and elsewhere, have been, to say the least, desultory.

I will add that the evidence shows that, as well as a Ritz Hotel in Paris, there are, or have been, Ritz Hotels in London, Madrid, Paris, Budapest and Cairo which were directly associated with Cesar Ritz and Cesar Ritz lent his name to hotels in at least New York, Boston and Philadelphia in the United States.

The applicant, for its part, was founded in Switzerland in 1982 under the name Hotelconsult SHCC Colleges and in 1986 added the words CESAR RITZ to its name: the applicant runs two facilities in Switzerland which educate people in skills necessary to the hospitality trade – I will call these ‘the Swiss schools’ although I acknowledge that at least one of them is run as a university.  In 1992, the applicant expanded its operations to the United States of America to the International College of Hospitality Management in Washington - Connecticut, and subsequently, in 1996, to the International College of Tourism & Hotel Management in Manly, New South Wales.

The evidence shows that Cesar Ritz had a wife, Marie-Louise Ritz, who, after the death of Cesar, established an educational foundation, the Cesar Ritz Foundation, (‘CRF’) the registered address of which is in Niederwald/Goms, Switzerland.  The son of Marie-Louise and Cesar, Charles Ritz, and his wife Monique, ran the Ritz hotel in Paris.  On 2 October 1986, Ms Monique Ritz, President of the Board of Trustees of CRF gave permission to the applicant to use the words ‘Institut Cãsar Ritz’ in relation to its hotel school in Bouveret, Switzerland.  This permission was later supplemented by a contract in June 1993 – the contract, between the applicant’s founder, Dr Petri, and CRF states in part:

The foundation authorises Dr Petri and his enterprises to use irrevocably and worldwide the designation ‘Cãsar Ritz’/’César Ritz’ for high quality hotel schools and educational facilities.  Extension to other areas is expressly prohibited.

My understanding from the evidence is that Ms Monique Ritz is now a member of the applicant’s board of directors.

Australian bookings for the Swiss schools have been possible since 1987 – the applicant has an Australian agent, Mrs Margaret Pongracz of Canterbury in Victoria, who has acted as an agent for it since that time.  Mrs Pongracz states that she has arranged advertising for the applicant in Australia, taken bookings and acted as a liaison between the applicant and actual or potential clients.  The operations of the applicant then included some form of accreditation/affiliation with the Footscray Institute of Technology and the Royal Melbourne Institute of Technology.  Tellingly, perhaps, and I will return to this later, Mrs Pongracz includes examples of advertising in Australia subsequent to her appointment as the opponent’s agent 1987 – these include one which appears in an issue of Inside Dining, May 1991, p 23, which prominently uses the words CESAR RITZ on a banner which incorporates the Swiss and United States flags.  What is interesting is that it appears alongside an advertisement for Ecole de Gastronomique Francaise Ritz-Escoffier – an advertisement for a cookery course at the opponent’s hotel in Paris.  The words CESAR RITZ do not appear in the opponent’s advertisement. 

The applicant claims to have had, between 1984 to 1996, about four million dollars worth of turnover under the trade mark from the provision of its services originating from bookings made in Australia.

The opponent, The Ritz Hotel Limited, here founds its opposition (in part) on its alleged use of the words CESAR RITZ as a trade mark and the effects of the reputation arising from that alleged use.  The words CESAR RITZ are prominent in the applicant’s opposed trade marks and, so the argument goes, deception and confusion will arise as a result.  I will, accordingly, next look to the opponent’s evidence of its use of the words CESAR RITZ.

Ms Strong submits that exhibit FK-1 to Klein 2 declaration, an article from the Australian magazine Epicurean No 135 –Autumn 1989, ‘advertises the Ritz-Escoffier School and the Cesar Ritz course by name’.  I am not convinced that this is so:  this usage of the words CESAR RITZ occurs within an article about various different French cooking schools – Le Cordon Bleu and Princess Ere are also mentioned – the whole of the article is not appended so reference to other schools, such as La Varenne or Le Comptoir Corrèzien, mentioned elsewhere in evidence, is omitted.  It is not obvious from the article that the courses were offered in Australia at that time, the use of the words CESAR RITZ is not apparently used as a trade mark but as the name of a sub-course offered by the opponent – another name it uses for such a sub-course title is ‘patisserie’ which is generic in relation to pastry chef courses.  Similar articles from the International Herald Tribune and The Age are also evidenced.  Accordingly, if, which is not apparent, the opponent was using the words CESAR RITZ as a trade mark at that time, that use was singularly cavalier.  While the opponent may answer this by stating that this is merely errant use in a journalistic article, in fact this qualification throws the provenance of any potential trade mark usage further in doubt - journalistic use of trade marks is, in my experience, notoriously unreliable as demonstrating use in Australia.  Another article appended to Klein 2 is a Christian Science Monitor piece, reprinted in the Los Angeles Times on 8 June 1989.  It mentions cooking lessons in connection with the École Gastronomie Ritz-Escoffier and the fact that a few Australians have attended – this is to an extent corroborated by some hearsay evidence in Klein 2 – Mr Klein reports a conversation that he recalls with the Director and chef of École Gastronomie Ritz-Escoffier, Mr Gregory Usher (who died in 1994) who stated that several Australians had attended his school.  However, it is not obvious from the Los Angeles Times article (or indeed, the other mentioned ones) that any Australian attendees actually booked the training from within Australia.  Neither is it obvious to me how the name CESAR RITZ should be connected in the minds of Australians with the École Gastronomie Ritz-Escoffier in Paris on the basis of an article or articles which appeared in the United States (the Age article, of course, did appear in Australia) in which the name CESAR RITZ is not mentioned.

There are two more strands of the evidence to be mentioned. The first is the registrations on which the opponent relies in terms of section 44. This list is extensive, but the opponent chiefly relies on the core represented by the following:

Reg No:  413672
Priority Date:  17 August 1984

Goods/Services:  (Class 42) Accommodation services, including hotels, hotel management, and hotel reservation services

Trade Mark:  RITZ
Endorsements:  The provisions of Section 24(2) applied

Reg No:  421447
Priority Date:  30 January 1985

Goods/Services:  (Class 16) Paper and articles of paper; cardboard and articles of cardboard; stationery and office requisites; pens, pencils, felt pens, propelling pencils, ballpoint pens, paperweights, blotters, memorandum and engagement books, diaries, letter racks, files, index files, writing paper, envelopes, maps and cards; printed matter; playing cards.

Trade Mark:  RITZ
Endorsements:  The provisions of Section 24(2) applied

Reg No:  503562
Priority Date:  25 January 1989

Goods/Services:  (Class 42) Restaurant and cafe services; restaurant reservation services; and services provided in the course of obtaining and providing prepared foodstuffs or drinks

Trade Mark:  RITZ

Reg No:  422861
Priority Date:  26 February 1985

Goods/Services:  Hotel and restaurant services, hotel and restaurant reservation services, services provided in the course of obtaining and providing prepared foodstuffs or drinks; being services included in Class No. 42.

Trade Mark:  

The other portion of the evidence that I will mention now relates to the dealings between the trade mark examiner and the applicant which led to the acceptance of the applications for registration.

During examination, the examiner raised objections based on the first three of the opponent’s registrations which I have listed, above.  In response, the applicant wrote to the examiner on 24 November 1997, enclosing, “… for the purpose of overcoming the objections”, a statutory declaration dated 30 October 1997 by Martin Kisseleff, Vice President of the applicant.  In this declaration, appended to McEvoy 3, he states, inter alia:

My company first commenced operation in Australia in 1984 under the name Hotelconsult SHCC.  In 1987 however, my company changed its name to Institut Hotelier Cesar Ritz, SA and commenced use of the trade marks in Australia.  Since 1987, the trade marks have been used in Australia continuously in relation to the education, tuition and training of students in the hospitality and hotel industries.

Mr Kisseleff went on to give the value of services provided in Australia, examples of advertisements placed in Australian magazines, and stated that the services are provided through the International College of Hotel Tourism and Hotel Management in Sydney, Royal Melbourne Institute of Technology and Bond University. 

At paragraph 10 of the declaration, Mr Kisseleff stated:

My company engaged the services of an Australian representative, Mrs Marika Pongracz, who trades under the name Swiss Ed and has incorporated the company Swiss Hospitality Institute “Cesar Ritz” Pty Ltd.

It is clear from notes appended to the application files that the examiner believed on the basis of the representations that the origin of the services was physically located within Australia.

Submissions

Submissions focussed on the following areas.

·The verity of the applicant’s pre-examination claims – these go to both sections 44(3) and 62(b) of the Act

·The purported reputations of the opponent, The Ritz Hotel Limited in Paris, its trade mark RITZ, the opponent’s cooking school, Ecole Gastronomie Ritz-Escoffier and the inferred connection in the public minds of the founder of the hotel, Cesar Ritz, with these institutions and trade mark – these submissions go to section 60, to a limited extent to section 44, to the Trade Practices Act 1974 and a ‘passing off’ via section 42(b); and, to section 43.

·The use of the opponent’s trade marks in Australia – this goes to section 58 of the Act.

·The validity of Monique Ritz’s consent to the use of the name CESAR RITZ – this goes to sections 42(b) and 44(3) of the Act.

·Submissions based on the opponent’s Australian trade mark registrations which go to section 44 of the Act.

For simplicity, I will deal with each of the above areas, with the exception of the last above ‘dot-point’, and then give my decisions in relation to each of the sections under which the opponent pursues this opposition, commencing with those under section 44.

Pre-Acceptance Verity

I do not accept that the applicant’s pre-acceptance statements which led to the examiner withdrawing the objection under section 44 and led to acceptance of the trade marks for registration amounted to mis-statement; or, that the Registrar or his delegate accepted the application for registration on the basis of evidence or representations that were false in material particulars. Mr Kisseleff stated in his declaration:

My company first commenced operation in Australia in 1984 under the name Hotelconsult SHCC.  In 1987 however, my company changed its name to Institut Hotelier Cesar Ritz, SA and commenced use of the trade marks in Australia.  Since 1987, the trade marks have been used in Australia continuously in relation to the education, tuition and training of students in the hospitality and hotel industries.

It is true that the applicant’s representations and statements are ambiguous – it is possible to gain the impression that the services performed all physically originated in Australia.  However, it is not expressly stated where the services originated and the statement is quite literally true if looked at in the light of the judgment of Gummow J in Carnival Cruise Lines Inc. v. Sitmar Cruises Limited 31 IPR 375 at 389. He said:

The effect of the procedures was that the general agent brought about a contract made by it on behalf of its principal, Carnival, with the local agent on behalf of the passengers. The evidence indicates that in many cases, in the interval between the initial inquiry and the conclusion of the contract, there might be a number of communications on such matters as the location of available cabins. Thus, while the course of trade involved the provision of the services contracted for by steps taken outside Australia (ie the cruise itself) crucial integers in that course of trade took place in Australia. The trade commenced with the various steps taken to encourage inquiries from prospective customers and advanced with the placing and acceptance of bookings. In relation to that course of trade, the marks FUN SHIP and FUN SHIPS were used so as to indicate the connection between Carnival and the services to be provided by means of its cruises, and to distinguish Carnival Cruises from those operated by other traders: Mark Foy's Ltd v Davies Cook and Co Ltd (1956) 95 CLR 190 at 205. Accordingly, in my view, before the dates of the relevant applications by Sitmar, there had been public use in Australia of FUN SHIP and FUN SHIPS as trade marks so as to confer upon Carnival the statutory status of "proprietor" of those trade marks, within the sense of the High Court authorities to which I have referred.

Thus, to obviously fall within the ambit of the principle in Sitmar, the services should be offered via an Australian agent who uses the trade mark with the applicant's authority in a course of dealings with the customer or client.  The applicant had Mrs Pongracz, its Australian agent, who took bookings for its overseas courses.  Mrs Pongracz liaised with clients and brought about the contracts on behalf of the applicant, and with reference to the trade marks, with those who wished to attend its Swiss schools.  To this extent, the statement by Mr Kisseleff is quite literally correct.  The similar associated statements and representations by the applicant's legal representative are therefore also true.

Reputations

The opponent claims a reputation for the following trade marks in Australia: RITZ, CESAR RITZ, RITZ HOTEL, RITZ ESCOFFIER and RITZ-ESCOFFIER.  I note that the opponent does not claim a reputation for its trade mark RITZ PARIS which also appears in the evidence.

The opponent has led its affidavit evidence filed in relation to Charles of the Ritz case, above, to establish reputation of the trade mark RITZ in Australia.  This evidence is subject to the reservations of McLelland J which he expressed at 474:

Two major questions arise in relation to this evidence, namely (1) how reliable is it to prove what the respective witnesses would have actually thought in an ordinary market place environment, and (2) to what extent can evidence of the states of mind of these witnesses be extrapolated to represent the likely states of mind of the class comprising members of the Australian public likely to be concerned in the purchasing of goods of the kinds in question, or a significant section of that class?

As to question (1), there are several important matters to be borne in mind. Nearly all of these witnesses were dealing with a hypothetical situation in circumstances remote from the context in which they might be expected to encounter the marks in question and were introduced to the subject in an interview with representatives of the plaintiff's solicitors. A person's response as to his or her actual mental impressions, or likely mental impressions in nominated circumstances, is likely to be acutely sensitive to cues and suggestions, conscious or otherwise, not only as to what response might be appropriate, but as to whether an affirmative response of any kind is appropriate at all. Two things follow: one is that any evidence of a witness' spontaneous or initial response before any conditioning process can operate is of particular significance; the other is that great importance attaches to the precise form of questioning and any preamble thereto. The following comment by Whitford J made in relation to evidence of public surveys is equally pertinent to the interview components of the evidence of the "public" witnesses in the present case:

"Great importance inevitably attaches to the way in which the questions are cast. It is very difficult in connection with an exercise such as this to think of questions which, even if they are free from the objection of being leading, are not in fact going to direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put. (Imperial Group v Philip Morris & Co [1984] RPC 293 at 303.) "

The pattern of initial interviews with the "public" witnesses in the present case was not uniform. However in the cases of nearly all the 101 witnesses approached in a public place, the opening substantive question took one or other of the following general forms:

(a)     "What does the word 'Ritz' mean to you?"

(b)     "What does the use of the word 'Ritz' on this product [or in this advertisement] mean to you?"

(c)     "What does the use of the words 'Charles of the Ritz' on this product [or in this advertisement] mean to you?"

Speaking generally, a question in any one of these three forms would have a tendency to suggest to the interviewee that the word or words should mean something to him or her inducing the interviewee to search his or her mind for a meaning or association, a mental procedure which would not necessarily have been carried out if a relevant product had been encountered in the market place.

Again, speaking generally, having regard to the way in which the great bulk of these interviews were carried out, the further an interview proceeded, the less confident one could be that responses to questions reflected likely mental processes if a relevant product had been encountered in the market place.

Many of these witnesses did not in fact convey that they thought that there was a commercial connection between a relevant product marked RITZ or CHARLES OF THE RITZ and the Paris Ritz or other "Ritz" hotels during the initial interviews (indeed in some 36 cases they were not asked about products in the initial interviews). Opinions to that effect were often expressed only after a subsequent interview with the plaintiff's representatives (in some cases with counsel) of which no record is in evidence, some details of which were, in most instances, explored in cross-examination and in several cases were shown to have involved leading questions by the interviewer. Many of them by that time were aware that they were being interviewed by representatives of the Paris Ritz in the context of a court case involving the use by others of the word "Ritz". Nearly all the selected "foreign origin" witnesses were informed prior to the initial interview that the prospective interviewer represented a firm of solicitors acting for a client involved in a dispute about the use of the name "Ritz".

With a few exceptions, I have strong reservations about accepting the evidence of the "public" witnesses as indicative of what their spontaneous impressions would be likely to be or to have been in the market place.

As to question (2) identified above, it has not been, and could not possibly be, suggested that the witnesses called or any sub-group of them represent a random sample of any wider class of persons. There is no evidence as to how many people were approached or interviewed, or as to the responses of these who were not called as witnesses, or as to the criteria by reference to which any particular person approached or interviewed was selected to be called as a witness, except by inference that it was considered that he or she would be likely to give evidence favourable to the plaintiff's case. There is accordingly no ground in the evidence for any extrapolation on a statistical basis, or on the basis of any mathematical or logical probability, of the views of the "public" witnesses (or any selection from them) as representing the views of the relevant class of the Australian public or a significant section of that class. It does not of course follow that the evidence of these witnesses is necessarily irrelevant or unimportant. They are persons within the relevant class and their evidence forms part of the data upon which the court must approach the question whether use of the subject marks in relation to the relevant goods is likely to deceive or cause confusion to persons comprising a significant section of the public in Australia likely to be concerned in the purchase of such goods. Nevertheless, the relevant class is a very wide one, and according to the plaintiff's submissions "includes men and women of every type of occupation and age group above, say, 16 or 17 (perhaps younger in the case of women) ". The circumstances that the number of public witnesses is relatively large and that they come from a wide variety of different places, age groups and occupations, do not of themselves justify a conclusion that they are "representative" of a wider class, or, in particular, of a significant section of the relevant Australian public, and the evidence as a whole does not persuade me that they are representative of any such wider class.

Ultimately, the question of likelihood of the use of a mark to deceive or cause confusion is one of fact for the court, which "must not surrender in favour of any witness its own independent judgment" (per Lord Morris in Parker-Knoll Ltd v Knoll International Ltd [1962] RPC 265 at 279). In General Electric Co (of USA) v General Electric Co Ltd [1972] 1 WLR 729 at 738, Lord Diplock said that in cases where the relevant goods are of a kind sold to the general public for consumption or domestic use, judges, who would themselves be potential purchasers of the goods, while being alert to the danger of allowing their own idiosyncratic knowledge or temperament to influence their decision, "are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial" (and see Pioneer Hi-Bred Corn Co v Hy-Line Chics Pty Ltd [1978] 2 NZLR 50 at 62). Nevertheless, the question is not whether use of a subject mark would be likely to deceive or confuse the judge but whether such use would be likely to deceive or confuse a significant section of the Australian public likely to be concerned in the purchase of goods in respect of which the mark is registered.

Judicial exegesis as to the meaning of an expression cognate to "likely to deceive or cause confusion" is to be found in the judgments of the High Court in Radio Corp PtyLtd v Disney (1937) 57 CLR 448; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 and Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300 at 305 (in each of which, it may be noted, the onus was on the applicant for a trade mark to prove that the mark in question did not offend against the relevant statutory provision (s 114 of the Trade Marks Act 1905), whereas in the present case the onus rests on the plaintiff to prove that the subject marks do offend against s 28 (a)). The matter is also usefully discussed in Pioneer Hi-Bred Corn.

The question may be framed as follows: has it been proved that a significant number or section of the class comprising persons likely to be concerned in the purchase of cosmetic toiletry or fragrance products in Australia would be led, by seeing the words "Charles of the Ritz" or "Ritz" on products of that kind, to believe that, or to wonder whether, the Paris Ritz, the London Ritz, the New York Ritz-Carlton, or other "Ritz" hotels, was or were connected with the placing of those products on the market.

Having considered the whole of the evidence, I am far from persuaded that this question should be answered in the affirmative, or that the use of any of the subject marks would be, or would at any material time have been, likely to deceive or cause confusion to a significant section of the public in Australia likely to be concerned in the purchase of any of the goods in respect of which they are registered.

While much of the affidavit evidence is directed to the question of whether there would be confusion or deception, I consider that the same reservations expressed by McLelland J, above, apply to this evidence in so far as it addresses reputation.  Accordingly, inasmuch as the affidavit evidence addresses the reputation of the opponent’s trade mark RITZ, it is of slight weight.

There is little doubt that the word RITZ (as opposed to the opponent’s trade mark RITZ) is quite well known in Australia.  The task that the opponent has, (as well as establishing that the trade marks involved are substantially identical or deceptively similar), is that of satisfying me that its trade mark RITZ has a reputation in Australia and that the applicant’s use of its trade marks would deceive or confuse.  The problem for the opponent, as I see it, is that the evidence (other than the affidavit evidence) strongly suggests that to the bulk of Australians, the word RITZ most likely suggests the concept of ‘posh’ goods or services and expensive hotels in general, rather than any immediate and specific connection with the opponent’s hotel.  McLelland J may have alluded to this problem in Charles of the Ritz at 471 where he observed

So far as the evidence reveals, the first commercial use of the name "Ritz" was for the Paris Ritz which opened in 1898 and has since then been operated by the plaintiff.

The next hotel to use the name "Ritz" was the London Ritz which opened in 1906 and has since then been operated by RHL. This is a luxury hotel located in a conspicuous building on a prominent site in Piccadilly, London. The London Ritz also took its name from César Ritz. Under an agreement of 28 April 1906 with RHL (then called The Building and Vendor Co Ltd) he agreed to serve RHL for three years as an "advisory and consulting manager", although with no executive responsibilities. Although the plaintiff and RHL had one or more directors in common for most (although not all) of the period from about 1906 until 1975, each company and its business was independent of the other.

A hotel in Madison Avenue, New York called the "Ritz-Carlton" (to which I will refer as "the New York Ritz-Carlton") opened in 1910 under the proprietorship of the Ritz-Carlton Restaurant & Hotel Co of New York, and operated until its demolition in or about 1951. It was in this hotel that Charles Jundt carried on his Charles of the Ritz hairdressing salon in the 1920s as earlier described (in section 6).

A hotel in Madrid called the "Ritz" has been operating since some time before 1955. A hotel of that name probably opened in Madrid in or about 1909.

A hotel in Budapest called the "Ritz" opened in 1913 under the proprietorship of a Hungarian company, with Marie Ritz, the wife of César Ritz, as managing director. This hotel was apparently still in existence in 1944.

At least from 1927 to 1950 there existed a "Ritz-Carlton" hotel in Boston, and commercial establishments in New York known as the "Ritz Tower" and in Boca Raton Florida known as the "Ritz-Carlton Cloisters". In 1927-8 there was also a "Ritz-Carlton" hotel in Atlantic City.

The evidence shows that there are presently in existence, apart from the Paris Ritz, the London Ritz, and the Madrid Ritz, hotels called "Ritz" in Barcelona, Rome, Lisbon and Taipei, hotels called "Ritz-Carlton" in New York (not the original New York Ritz-Carlton), Washington, Boston, Chicago, Laguna Niguel California, Atlanta Georgia, Buckhead Georgia, Naples Florida, Toronto and Montreal, a "Ritz Tower" hotel in New York and a "Ritz Plaza" hotel in Capetown. Many of these hotels are of a very high standard. There have also been hotels called "Ritz" in Cairo and Florence.

There is in evidence a large volume of material comprising copies of, or extracts from, books, newspapers and journals in which appear references to the Paris Ritz, the London Ritz, the New York Ritz-Carlton, and in one instance the Budapest Ritz. Most of the references in this material are to the Paris Ritz. The references range from passing mention to detailed description. This material falls into several categories. There are approximately 165 books or extracts from books (approximately 147 in English), including works of fiction, biography and reference, of which 20 were published before 1947, a further 9 before 1955, a further 46 before 1971, and a further 58 before 1984, in respect of all of which there is evidence either that a copy is to be found in one or more public or institutional libraries in Australia or that copies have been sold in Australia. There are approximately 351 newspaper or journal articles (approximately 328 in English) in respect of which there is evidence either that a copy is to be found in one or more public or institutional libraries in Australia or that copies have been sold in Australia. Of these, approximately 50 were Australian publications of which none were published before 1955, 3 before 1971, and a further 11 before 1984. The dates of the overseas publications range from 1910 to 1987. There are also numerous extracts from other publications in the United States, United Kingdom, France, Italy and Germany, as to which there is no evidence of their circulation or availability in Australia.

There are in evidence video cassettes of four films which have been broadcast on Australian television. In one of these, "Love in the Afternoon" (broadcast three times in Sydney between 1973 and 1975) much of the action is shown as taking place in the Paris Ritz. In another, "The Young Frankenstein" (broadcast twice in Sydney between 1982 and 1984) there is a garbled rendition of a song (which apparently dates from the 1930s) called "Puttin' on the Ritz" by Irving Berlin. In each of the other two, "The Last Time I Saw Paris" (broadcast seven times in Sydney between 1973 and 1986) and "An American in Paris" (broadcast five times in Sydney between 1976 and 1987), there is a passing reference to the Paris Ritz. The last two mentioned films are available on video cassette for purchase or rental by the public in Australia.

There are in evidence video cassettes of (a) a report about the Paris Ritz broadcast on television in the United States as part of the current affairs programme called "60 Minutes" in 1971, repeated in 1980, (b) two programmes featuring the London Ritz broadcast on television in the United Kingdom in or about 1985 and (c) two segments including descriptions of the Paris Ritz broadcast on Australian television in June 1986 in each case as part of a programme called "Good Morning Australia".

McLelland J continued at page 477:

I accept that there are in Australia numerous people who have heard of the Paris Ritz, numerous people who have heard of the London Ritz, and numerous people who have heard of one or more other Ritz hotels. Undoubtedly these groups overlap to some extent. Whether any of these groups, or any combination of them, comprises a significant section of the relevant public is not of direct relevance. Within any such group or combination of groups there will be a great variety of experience in relation to (a) the relevant hotel or hotels (ranging from observing a passing reference in a magazine to being a regular guest) and (b) the use of the word "Ritz" in other contexts, and a great variety of individual differences in relation to (c) the likelihood of spontaneous recall of associations of the word "Ritz", (d) the nature of the cues likely to trigger any such recall, and (e) impressions likely to be formed in consequence of any such recall.

I am not satisfied that enough of these people to constitute a significant section of the relevant public would regard the mark RITZ on any relevant goods as indicating a connection in the course of trade with the Paris Ritz, or would believe that, or wonder whether, those goods were manufactured or put on the market by a person who has, or had, or whose predecessor in business had, a commercial or physical association with the Paris Ritz, the London Ritz, the New York Ritz-Carlton or any other Ritz hotels. I should add that even if I had been satisfied of the latter proposition, I would not have considered such a belief or state of wonder as indicating deception or confusion, having regard to the historical connection between the business of the group of which the first defendant has formed part, and the New York Ritz-Carlton (as described in section 6).

Furthermore, I am unable to conclude that to a significant section of the relevant public the word "Ritz" has such a specific association as to render it possible to conclude that its use by the defendants constituted an "unauthorised diversion" of anyone else's celebrity, fame or reputation as alleged in para 5 (4) (A) (e) of the statement of claim. That subparagraph is based on a passage in the judgment of Dixon J in Radio Corporation at 459. Whatever may be the precise ambit of the principle applied in that passage, I can find no real similarity between what the court found to be the associations of the characters "Mickey Mouse" and "Minnie Mouse" in that case and associations of the word "Ritz".

Apparently, of the several RITZ hotels mentioned, above, only the RITZ PARIS is now directly connected with the opponent.

I will add that similar observations apply to the name CESAR RITZ.  While Cesar Ritz opened and owned the Paris Ritz, he similarly opened, managed, was associated with, or lent his name to, several other hotels – as many as three in London alone, including the London Ritz.  Cesar Ritz appears to have lent his name to several hotels within the United States of America.  And, indeed, his wife Marie-Louise went on to open the Budapest Ritz after his death or incapacity.  I do not think that the name CESAR RITZ is so associated with the Paris Ritz, as opposed to the other RITZ hotels, that most ordinary Australians will think of the Paris Ritz when they see or hear his name.  The evidence thus does not satisfy me that the name CESAR RITZ is only associated with the Paris RITZ or that most Australians know of this name and what it might signify.  For similar reasons, I do not consider that the expression RITZ HOTEL is well known by Australians as immediately signifying the Paris Ritz.   Moreover, while I accept that the evidence establishes that the words RITZ ESCOFFIER and RITZ-ESCOFFIER are exclusively associated with the Paris Ritz and the opponent, the evidence does not support the proposition that most, or even many, Australians might know of this.  There is a little evidence that some Australians (how many is not clear) have studied at the Ecole de Gastronomique Francais Ritz-Escoffier and that a larger number have stayed in the Paris Ritz.  While the students at the opponent’s cooking school might be presumed to know of both RITZ ESCOFFIER and RITZ-ESCOFFIER, it is not clear that the Paris Ritz hotel guests (which average about 4.5 Australians a week, some of which may be repeat bookings) also know of this.  There is no mention of this in the evidence.  However, as is broadly acknowledged in the affidavit evidence, the numbers of Australians who book for the Paris Ritz are very low as the people who stay there are the very wealthy.

Use of the Opponent’s Trade Marks in Australia

I focus here on the use of the opponent’s trade marks in relation to services.  It is pertinent to observe in relation to the trade marks RITZ ESCOFFIER and RITZ-ESCOFFIER and CESAR RITZ that, in terms of Gummow J’s analysis, in Sitmar, above, it is not obvious in relation to the opponent’s services (which it will be recalled were advertised in Inside Dining, May 1991, p 23 alongside the applicant’s, as well as in other evidence) that advertisement of these services constitutes use in Australia.  What is apparent from the opponent’s advertisement is that its services were at that time booked direct with the Ecole de Gastronomique Francais Ritz-Escoffier in Paris rather than through an agent with the associated dealings in the course of trade, with reference to a trade mark, mentioned by Gummow J.  The evidence is silent on whether bookings for the Ecole de Gastronomique Francais Ritz-Escoffier can now been taken through an agent in Australia.  The evidence is also silent on whether the Australians who attended the cooking school did so as a result of the advertisements in Australia or were Australians who were resident elsewhere in the world who attended the school.  In terms of Nodoz Trade Mark (1962) RPC 1, if a party is to rely on slight use of a trade mark, that usage should be of high provenance – accordingly, on the evidence before me, I cannot find that the applicant has used its Ecole de Gastronomique Francais Ritz-Escoffier trade mark (if it be such), or the trade marks CESAR RITZ, RITZ ESCOFFIER and RITZ-ESCOFFIER in relation to its Paris cooking school in Australia. The use by a reporter of any of the opponent’s trade marks in articles which may have circulated in Australia does not constitute use by the opponent of its trade mark in Australia – absent evidence that these articles were, in fact, advertisements placed by the opponent, I do not concur with Ms Strong that these amount to advertisements on the part of the opponent. Further, if the articles were advertisements, it has not been shown that these actually resulted in a use in trade of the trade marks in Australia.

The opponent’s trade marks RITZ and RITZ PARIS have been used in Australia in relation to services in the hotel, accommodation and hospitality trade offered at the Ritz Paris – bookings for the Ritz Paris have very obviously occurred via travel agents located in Australia.  There is evidence that this use is continuous but very slight.  There is no evidence that Australians have booked restaurant services in advance from Australia and I find that the opponent has not used its trade marks in relation to restaurant services in Australia.

The Validity of the Consent

There are in evidence two diametrically opposing views from counsel in Europe as to the validity of the consent given by Mrs Monique Ritz, President of the Board of Trustees of CRF for the applicant to use the words ‘Institut Cãsar Ritz’ in relation to its hotel school in Bouveret, Switzerland.  In the face of such divergence of opinion from such qualified practitioners in jurisdictions so far removed from this one, I find myself inexpert in this area and can only observe that the onus is on the opponent to establish this plank of its opposition: this, in the presence of such divergent opinion, it obviously has not done.  However, I suspect that if there were any great merit in the opponent’s position, it would have afforded itself of the opportunity to litigate on this basis in the appropriate jurisdiction in Europe – this has seemingly not occurred. 

Moreover, I consider that it should be of no concern in this matter whether the consent was validly given or not.  Whatever the position may be in Europe, vis-à-vis the question of whether a personal name is also personal property, this is not the case in Australia: 10th Cantanae Pty Ltd and Others v Shoshana Pty Ltd and Another - 10 IPR 289. The approach is rather to view issues of appropriation under the law of passing-off or in terms section 52 and 53 of the Trade Practices Act 1995.  See also Radio Corp Pty Ltd v Disney (1937) 57 CLR 448.

Neither is it is not obvious to me that the name Cesar Ritz could be properly argued to have been ‘appropriated’: it is a name that the ‘owner’ readily lent to others to use in the United States, there is no evidence that this use was controlled or licensed and Marie-Louise Ritz, who the opponent would argue has no right to her husband’s name, went on to use it in relation to the Ritz Hotel in Budapest after her husband’s death or incapacity.  Moreover, at this remove from the death of Cesar Ritz, on 23 October 1918, and in the light of the foregoing, ‘rights’ to his name might be properly seen as being problematical.

I turn now to the specific heads of opposition under which these oppositions are pursued.

Section 44

The opposed applications are made in respect of services – section 44 therefore relevantly reads:

44  Identical etc. trade marks

(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.

(3)     If the Registrar in either case is satisfied:

(a)       that there has been honest concurrent use of the 2 trade marks; or

(b)       that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:   For limitations see section 6.

Section 10 provides:

10  Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

Section 14(2) provides:

14  Definition of similar goods and similar services

….

(2)       For the purposes of this Act, services are similar to other services:

(a)       if they are the same as the other services; or

(b)       if they are of the same description as that of the other services.

By the language of section 14(2), the same sort of evaluative process as that enunciated in In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372, applied in Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592, should be applied to the question of whether services are ‘of the same description’.

To establish this ground, the opponent is required to satisfy me that the registrations on which it relies have earlier priority dates and are registered in respect of similar services or closely related goods and that the trade mark on which it relies are either substantially identical with, or are deceptively similar to, the opposed applications

In Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), at paragraph 39, Wilcox J stated that:

The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

Accordingly, I will first discuss whether the services of the parties are the same or of the same description.

Services of the Same Description

The only cases in which ‘services of the same description’ have received judicial consideration are the CHIFLEY TOWER cases.  In the appeal, reported at Australian Tourism Company Ltd and Others v Mid Sydney Pty Ltd 42 IPR 561 at 567, Burchett, Sackville and Lehane JJ said:

Are, then, services to be provided by Touraust services of the same description as that of services in respect of which MID's mark is registered: s 120 (2) (c) ? That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, "The Trade Marks Amendment Act 1978" (1979) 53 ALJ 118. It is also a consequence of the fact that s 120 (2) (c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) (TM Act 1955), although the expression "services of the same description as [services in respect of which the trade mark is registered]'' was used in the earlier legislation: see TM Act 1955 ss 33 (2), 36 (1A). The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; at 606; 1A IPR 465 the High Court said this:

There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek's Application (1946) 63 RPC 59; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case the assistant-comptroller elaborated on the observations of Romer J in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ..."

Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227; at 240; 26 IPR 246) Lord Evershed MR said in Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128:

In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... "in a business sense"; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the trade marks legislation parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase "goods of the same description" ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.

We accept that these principles, subject to any necessary modification, apply in relation to services. But they do not advance MID's argument.

For reasons that have already been given, the services involved in managing an hotel have different characteristics than property management services. If, as we have held, particular incidental services take their character from the whole, the position is not altered by the fact that managing an hotel may involve the performance of incidental services akin to those carried out by property managers.

This conclusion is reinforced if, as Southern Cross suggests, the proper approach is that attention should be directed to the "trade channels" through which the services are provided. It is not difficult to infer that hotel management is a specialised undertaking, ordinarily carried out by different entities than those involved in providing property management services, such as real estate agents or shopping centre managers. Partly for this reason, it is difficult to regard hotel managers as being engaged in the same trade or industry as those providing property management services.

In the penultimate paragraph, above, reference is made to a passage at 567 of the judgment where the Full Bench stated:

It was suggested that, if a manager provided services falling within the description "property management services", those services did not lose that character because they formed part of an overall business having features other than the provision of 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 Touraust is using the word "Chifley" (or a sign incorporating it) in relation to property management services. If Touraust arranges tenancies for retail shops within an hotel and collects rent, it does not thereby provide property management services: those activities are not to be characterised as the provision of a separate service in relation to the property but simply as an integral, if relatively minor, part of operating the hotel. 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 Touraust intends to conduct.

Thus, what I am to consider is the intrinsic nature of the services and the trade channels through which they are delivered, and I am not to be distracted by the fact that the services of the parties might have some features in common which are incidental to their essential nature.  For example, pertinent to these oppositions, both plumbers and boilermakers might have, and train, apprentices but this circumstance does not make plumbing or boilermaking in their intrinsic natures 'education services'. 

Turning to the services stipulated on the opponent’s registrations, these are, “Accommodation services, including hotels, hotel management, and hotel reservation services”, “Restaurant and cafe services; restaurant reservation services; and services provided in the course of obtaining and providing prepared foodstuffs or drinks”, “Hotel and restaurant services, hotel and restaurant reservation services, services provided in the course of obtaining and providing prepared foodstuffs or drinks; being services included in Class No. 42.”  For its part, the applicant’s services are “Education and training in hospitality and hotel services”, being services in Class 41.

The services of the parties are patently not ‘the same’ services.  Neither do I consider that the services involved are services ‘of the same description’.  It is true that many establishments that train people in the hospitality trade will run restaurants where the trainee chefs, waiters and bar-people might gain experience; however, this service, if it is offered, is incidental to the educational service which is being provided – the purpose of a hospitality college is not to run a café or restaurant, it is to educate students in skills necessary to the hospitality trade.  I note that it is also true that the opponent runs a cookery school within the Paris Ritz – however, this is scarcely typical of either cookery schools or hotels – it is a service which is incidental to the restaurant and hotel services which the opponent offers and in respect of which its trade marks are registered.  Both of these circumstances might be compared with the judicial example of the hotel that leases retail space in the building it occupies, given in MID Sydney, above.  The fact that a hotel might lease out retail space, maintain and manage that space, does not makes the running of a hotel a property management service.

In essence, educating a person in all aspects of the hospitality trade on the one hand and running a hotel or restaurant on the other are quite different services.  The trade channels evidenced by the parties are quite different and the services come onto the market in different ways.  On the one side, the educational services are offered to students who will sit in classrooms at a facility which has accredited courses, curricula, examinations, codes of conduct, teachers and lecturers - it is a formal and on-going relationship over a period of time which extends over months or years.  On the other side, the opponent’s hospitality service is offered to the public at large, the ‘client’ is a guest - not a student, the client is free to come and go as he or she likes, there is no formal structure imposed on the stay in the hotel, or meal at the restaurant, the duration of which is likely to be of relatively short duration and of a completely different flavour.  A stay at a hotel is typically booked through a brochure and travel agent whereas a course at a college of education is typically arranged via a prospectus and enrolment form.  While a hotel might have trainees and apprentices, these people do not pay the hotel for their training - rather the hotel pays its employees while it trains them - the course of trade involved is quite different to that of the hospitality school which is paid by its students for the training it provides.  Both hotels and educational institutions in the hospitality trade advertise themselves in different ways, to different clienteles and for different purposes.

Accordingly, the services of the parties are not of the same description and the opponent cannot establish its ground under section 44 of the Act.

Deceptive Similarity

Should I be wrong in my conclusion that the services of the parties are not of the same description, I will also consider whether the trade marks are deceptively similar.

As stated by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances".

Other factors which are to be taken into consideration were stated by Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), where he said:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

I will initially note that the word ‘Ritz’ is a word in the English language.  Many people would be aware of the expression “Putting on the Ritz”, the title of a song by Mr Irving Berlin.  The song seemingly refers to the New York Ritz.

The Macquarie Concise Dictionary, on-line at gives:

ritzy

adjective Colloquial luxurious, elegant. [after the Ritz Hotel, London, a luxurious hotel. See -Y¹]

In Charles of the Ritz, at 468, McLelland J looked at whether, historically, ordinary Australians have perceived the word RITZ as being a surname.  He said:

So far as the word "Ritz" is concerned, it may be accepted as a matter of history that when it was first used in a commercial context in the late nineteenth century it was in fact and was, at least in the United Kingdom and Europe, understood by numbers of people to be a surname and in particular the surname of César Ritz. To what extent, if at all, that understanding extended at that time to the public in Australia is a matter of conjecture. However I am not satisfied that as at 1947 the word "Ritz" signified to the public in Australia, except to an extremely limited number of people who had by one means or another come to know of César Ritz, or had, or knew of someone with, that surname, anything except the name of one or more business establishments, or a word associated with the adjective "ritzy". The only evidence of actual use of the word "Ritz" as a surname in Australia is of one person in South Australia in 1946-47, and three persons in South Australia and two persons in Western Australia in 1970.

I also note that the word RITZ is a word in the German language, meaning ‘cranny’, although this is not of great relevance here.

What is important to note, I consider, is that to the majority of Australians it is probable that the word RITZ is not obviously a surname until a word which is a forename is used in front of it.

Applying that idea to the most similar of the two trade marks of the parties, the trade marks RITZ and CESAR RITZ (which are here placed side by side for the purposes of discussion and not comparison), the ideas of the trade marks are, I believe, not obviously similar.  The opponent’s trade mark is a word with connotations of glitz and glamour.  However, the word RITZ does not obviously become a surname until the forename CESAR is placed before it.  The ideas of the parties' trade marks thus appear to be separate and distinct and are likely to be remembered and recalled in different ways and with reference to different things.

Balanced against this, must be the obvious similarities between the trade marks RITZ and CESAR RITZ.

Looked at in this light, the question of whether the trade marks CESAR RITZ and RITZ are deceptively similar to one another is one which is moot.  And, the opposed composite trade marks obviously show a yet greater dissimilarity to the opponent’s trade marks.

At the hearing of the issues, Mr Fitzpatrick referred me to the judgment in Registrar of Trade Marks v. Woolworths [1999] FCA 1020 (29 July, 1999) where French J said:

… the question for the Registrar and the Court is not whether consumers might be confused (in the sense of wondering about common origin or connection) but whether there is a reasonable likelihood that they will be confused.

At paragraph 45 of Woolworths, French J said:

It was put in his written submission that the test be applied in considering likely deception or confusion may be stated as in Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8:

"Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration."

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

And in Blount Inc v Registrar of Trade Marks 40 IPR 498 at 504, Branson J observed:

Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

It therefore appears to me that, if the question of whether trade marks are deceptively similar is one which I believe is moot, or on-balance, I should find that the trade marks are not deceptively similar.

Accordingly, the opponent has not established its ground in terms of section 44(2) of the Act as the trade marks are not deceptively similar and the services involved are not services of the same description.

Similar observations to the above also apply to the opponent’s registration 422861 in Class 16.

While there is no requirement that I go on and consider whether the opposition would have succeeded under section 44(3), I will briefly give my reasons why I believe the opponent would not have established that ground, in case I be wrong in my reasons in relation to the above.

In McCormick & Company Inc v McCormick [2000] FCA 1335 (15 September 2000), Branson J said at paragraph 30:

Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

(1) the honesty of the concurrent use;

(2) the extent of the use in terms of time, geographic area and volume of sales;

(3) the degree of confusion likely to ensue between the marks in question;

(4) whether any instances of confusion have been proved; and

(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

See In Re Alex Pirie & Sons Ltd's Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd's Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd's Application [1957] RPC 369 at 379.

I note that the opponent’s opposition under section 44(3) was pursued with reference to both the validity of the consent given by Monique Ritz and to the representations made to the examiner which led to the acceptance of the opposed applications for registration. As I have discussed, above, I am not in a position to access the validity of the consent and I doubt whether the validity of the consent is relevant to these proceedings in view of the law surrounding 'appropriation' of personal names in Australia. I have further discussed how, in the light of Sitmar, above, the applicant is quite literally correct in its claims to have used its trade mark in Australia since 1987.  The evidence does, I believe, demonstrate that the applicant has honestly adopted its trade marks.

I note the fact that there have been no instances of confusion or deception reported by either party which is unsurprising: the reason for this is that the applicant’s services are specialised and pitched at a market, those in or entering the hospitality trade, which might be expected to know something of the major hotels of the world as well as the hospitality trade educational bodies.  The opponent’s services are pitched at travellers – in particular, wealthy travellers to Paris.

The relative convenience to the parties swings in favour of the applicant who has used its trade marks in Australia for some sixteen years in a manner which has grown to an extent where the applicant now has a major educational facility physically located in Sydney.  The applicant has had enduring sales of its services at moderate rates.  It would obviously be of considerable inconvenience to the applicant if its trade marks were not to be registered.

For these reasons, which I have given here in brief, I do not consider that the opponent would have established its grounds in terms of section 44(3) of the Act.

The ‘reputation’ grounds

These grounds are under sections 60, via section 42(b) of the Act to the Trade Practices Act 1974 and a ‘passing off’ and, also, section 43. 

As discussed above, if the word RITZ has a connotation in terms of section 43, it is not with the opponent’s hotel – it is more with glitz and glamour or luxury hotels in general.  If the words CESAR RITZ have a connotation in Australia, it is with the individual Cesar Ritz, who opened a number of hotels including that of the opponent – however, the name of the individual does not connote any particular hotel with which he was associated.  If there be some connotation in the words CESAR RITZ as connecting the applicant’s services with the hospitality trade, the use of the words by the applicant is consistent with that connotation.

As discussed above, the opponent has not evidenced a reputation for any of its trade marks in Australia sufficient to found an opposition under the headings of sections 60 or 42(b).

Section 58

Section 58 of the Act provides:

58  Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note: For applicant see section 6.

For the purposes of the Trade Marks Act 1995, the meaning of the word 'owner' is identical to the meaning of the word 'proprietor' contained in the Trade Marks Act 1955.  As observed in re Hicks' Case (1897) 22 VLR 636, by Holroyd J:

A person cannot be properly registered unless he is the proprietor. Proprietor is the person who at the moment he makes application to be registered is entitled to the exclusive use of the name, whether he then or before publicly adopted it. A man cannot be said to have adopted a name if someone else has done so before him. Section 19 merely says that the act of applying is to be deemed equivalent to public user. No one could otherwise be entitled to registration as proprietor unless he had publicly used the trade name before. The section does not affect the fact that another person used the name first. The difficulty here is that although Hicks may have by virtue of his application publicly used the name, someone else publicly used it before him.

For the reasons given by us in the course of the argument, we think this application to expunge Hicks’s name from the register of trade marks as the proprietor of the word “Empress” as a trade mark applied to stoves ought to be granted. In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word “Empress” in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.

The first user of a trade mark in Australia thus becomes the owner of the mark at common law, and may become the owner of the registered trade mark: Shell Co. of Australia Ltd. v. Rohm and Haas Co (1949) 78 CLR 601 at 627.

In Sitmar, above, at 391, Gummow J stated of the minimum similarity of the trade marks under consideration:

In The Shell Co of Australia Ltd v Rohm and Haas Co, supra, at 629, Dixon J approached the matter as follows:

"The marks DITHANE and DITRENE cannot, by concession, both be placed or remain upon the register in respect of the same description of goods. Sections 114 and 25 combine to insure that marks deceptively similar shall not both be on the register in respect of the same description of goods. It follows in my opinion that the question in the present case is whether at the time the appellants made their application to register DITRENE, the respondents possessed a better title to the proprietorship of DITHANE and a better right to be registered as proprietors of that mark. A contrary view of such a case as the present makes the rights of the parties depend entirely on the accidental circumstance of the expedition with which actual registration can be or is in fact obtained. If a better right to the registration of DITHANE existed in the respondent, then it appears to me to be clear, on the assumption of course that both marks should not be on the register, that the registration of the appellants as proprietors of DITRENE was wrongly made and the entry ought to be expunged. To the question whether the respondents' title to the proprietorship of DITHANE and their right to register it as their mark is superior to the appellants' claim to use and register the conflicting mark DITRENE, I give an affirmative answer... [W]hat is of importance is that the word "Dithane" had been long since designed or adopted by the respondents Rohm & Haas Co, that they had formed a definite intention of using it in Australia upon or in connection with their goods and had applied for the mark before the appellants lodged their application for "Ditrene". These facts give a prima facie right to the respondents to register DITHANE which the application of the appellants to register DITRENE could not defeat or displace."

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical" as it appears in s 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible. There is, as Mr Shanahan points out in his work (p 158) real difficulty in assessing the broader notion of deceptive similarity in the absence of some notional user in Australia of the prior mark (something postulated by s 33) or prior public recognition built up by user: s 28 (a).

None of the trade marks relied on by the opponent approach a substantial identity to the opposed trade marks.  The services in respect of which the opponents uses its trade marks RITZ, RITZ HOTEL, and RITZ PARIS are not the same kind of thing as the services in respect of which the applicant uses or proposes to use its CESAR RITZ trade mark.  While the services in respect of which the opponent uses its RITZ ESCOFFIER trade marks are arguably the same kind of thing as those of the applicant, the trade marks are obviously non-identical and, as I have stated above, the opponent has not clearly demonstrated in its evidence that it has used these trade marks in Australia.  I have also found, above, that the opponent has not established that it has used the words CESAR RITZ as a trade mark in Australia.

The opponent has not, therefore, established this ground of opposition.

Section 62

As discussed above, the opposed applications were not accepted on the basis of representations that were false in a material particular.  The representations, while true, were generally put and capable of two alternative interpretations, either of which should have led to the acceptance of the applications for registration. That the examiner and the Registrar's delegate misinterpreted, misunderstood or took an alternate meaning of the import of the totality of the representations when the applications should have been accepted if the generality of the representations had been fully understood is obviously not caught by the operation of section 62 of the Act.

The opponent has not established this ground.

Conclusion

Section 55 of the Act provides:

55  Decision

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.

The opponent has not established any of the grounds of opposition on which it relied.

The opposed trade mark applications may proceed to registration one month from the date of this decision.  If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

In view of my finding in relation to section 44 of the Act, the endorsements to the effect that the application were accepted under the provisions of subsection 44(3) may be viewed as being inappropriate. I direct that, if no appeal is filed, and prior to registration, these endorsements be removed. If appeal is filed, the disposition of the endorsements should be in accordance with the outcome of the appeal.

Costs

The opponent has not established any of its grounds of opposition and I therefore order costs against it.  At the hearing, I noted that the three oppositions had been dealt with as a unity; therefore, in the applicant's claim for its costs, it may have one set of costs in relation receiving and considering the Notices, preparation of its evidence and to to its representation and preparation for the hearing.

Ian Thompson
Hearings Officer
Trade Marks Hearings

8 May 2003