Unico Trading Pty Ltd v Westin Hotel Company

[1994] ATMO 30

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by WESTIN HOTEL COMPANY to Trade Mark Application No 464856 in the Name of UNICO TRADING PTE LTD

Application No 464856 was lodged on 8 May 1987 in the name of UNICO TRADING PTE LTD, a Singapore company ("the applicant"). The application sought the registration of the word mark WESTINCAFÉ in plain block capital letters in respect of the goods "Coffee, coffee extracts, coffee beverages, coffee essences and coffee substitutes', which are goods included in International Class 30. It was duly advertised accepted in the Official Journal of 7 February 1991 and has been opposed pursuant to s49 of the Act by WESTIN HOTEL COMPANY, a United States company ("the opponent"), by notice of opposition lodged on 7 May 1991. The opponent completed service of its evidence in support of the opposition on the applicant on 13 March 1992. That evidence consists of a declaration of Catherine L. Walker, Senior Vice President of the opponent company, together with Exhibits CLW-1 to CLW-12, and a declaration of John Alderson, Managing director of Accommodation Marketing Services Australasia Pty Ltd together with Exhibit JA-1.
The applicant notified the Registrar that it did not intend to serve evidence in answer to the opponent's declarations and the matter was set down for hearing before me in Melbourne on 14 September 1993. Mr Cheng Voon of Phillips Ormonde & Fitzpatrick appeared for the opponent and Mr Frank Di Giantomasso of Griffith Hack & Co for the applicant.

Mr Voon opened his submissions by making it clear that, despite the breadth of the grounds set out in the notice of opposition, the opponent intended to rely on proprietorship, that the applicant was not the proprietor of the mark, and the deceptive similarity of the applicant's mark to certain marks owned by the opponent.

Mr Voon then referred to the Walker declaration where it is stated that the opponent is an international hotelier operating under the mark WESTIN. The business was founded in 1930 under the name "Western Hotels" which was later changed to "Western International Hotels" and then to "Westin Hotel Company" derived from WESTern INternational. At the date of the declaration the company operated some 62 hotels in North and Central America and Asia. Another 5 were under development. Ms Walker states that the opponent does not operate a hotel in Australia but maintains an active reservations and promotional department located in Sydney. It was planned to commence development of a WESTIN hotel in Australia "in the near future". She also states that the WESTIN mark appears also on a number of goods and services provided by the hotels such as note paper, laundry and dry cleaning order forms, envelopes and stationery. Examples of these are exhibited to the declaration. The opponent is the registered proprietor of the following trade marks in Australia:

B355298         Hotel services (in the nature of usual accommodation and   meal services)

B447739         Accommodation services in Class 42, hotel services, hotel   reservation services, serving beverages, bar services, serving   foods, restaurant services

A561629        Accommodation services in Class 42, hotel services, hotel   reservation services, serving beverages, bar services, serving   foods, restaurant services

The first and third of these marks consist of the word WESTIN alone. The second consists of the words WESTIN HOTELS & RESORTS together with a device element which is described in the Constituent Particulars Index of Trade Marks as "bird, lyrebird, grotesque in circle, formed by arabesques".

With regard to the question of proprietorship Mr Voon submitted that a claim to ownership of an unused trade mark, and there is no evidence of use by the applicant of its mark, depends on authorship of the mark, the intention to use it and the lodgment of an application for registration: Shell Co. (Aust.) Ltd v Rohm & Haas Co. (1947) 78 CLR 601. Since the opponent had adopted its trade mark in 1983 and it had a high recognition the applicant must have been aware of it. The applicant was a Singapore company where the opponent operated a hotel quite close to the famous Raffles hotel. The mark in suit was merely the opponent's trade mark WESTIN with the addition of the descriptive word CAFE with its well known meaning of "coffee". The applicant could not then be regarded as the author of its trade mark but rather had pirated the opponent's mark.

Mr Voon also relied on s33 of the Act citing the opponent's registered trade marks set out above. The marks were deceptively similar, he said, because the applicant's mark consisted simply of the opponent's mark with the addition of the descriptive word "café" : RHEINLIEBLING Trade Mark [1966] RPC 68. He also referred to the well known words of Parker J in Pianotist Co's Application  (1906) 23 RPC:

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.

As to the second leg of s33(1), "closely related goods and services", Mr Voon referred to a speech given in 1979 by the then Registrar of Trade Marks, Mr Frank Smith, to the Victorian Industrial Property Society (53 ALJ 118 at 120) in which he gave as an example of closely related goods and services "prepared foods and takeaway food services". He also referred to the judgment of Needham J, on appeal from a decision of the Registrar to the Federal Court, in Rowntree plc v Rollbits Pty Ltd and Another 10 IPR 539, in which His Honour held that the plaintiff's goods "confectionery including toffee, chocolate and chewing gum included in Class 30" were closely related to the defendant's services "...rendered or associated with restaurants, take-away food stores, and all other reatail food outlets which sell and promote food and drink for consumption; the preparation of carry out food". He referred also to a decision of the Registrar in which printed publications and travel agency services were held to be closely related goods and services: American Express v N V Amev 5 IPR 267. Furthermore, Mr Voon pointed out that hotels often provide to their guests sachets of tea or coffee and sugar bearing the trade mark of the hotel. Evidence of this practice was exhibited to the Walker declaration in the form of examples of coffee sachets of the Flag Inns and Best Western hotel chains and of The Diplomat International hotel in Canberra. Exhibit CLW-10 also consists of sugar sachets from these same hotels together with two bearing the opponent's trade mark.

In reliance on s28 of the Act Mr Voon submitted that, for the reasons already given in relation to s33, the mark was deceptively similar to the opponent's mark, and also that, as it was clear that the applicant had copied the opponent's mark, it was guilty of blameworthy conduct and that therefore both paragraphs (a) and (d) of that section were satisfied.

At the hearing Mr Voon sought to tender a copy of a decision of Mr M W Fox acting for the Registrar of Trade Marks of Hong Kong, in which he refused to register the applicant's trade mark following opposition by the present opponent. I required Mr Voon to make formal application for special leave to adduce further evidence. In a further submission Mr Voon argued that I should consider the decision on the same footing as any other precedent which had been drawn to my attention and that it was not necessary that it be submitted as evidence. I now accept that submission as correct and therefore withdraw the requirement for leave to adduce further evidence.

Mr Voon also relied on the fact that an application by the same applicant in Singapore , its home jurisdiction, was abandoned following lodgment of notice of opposition by the present opponent. Evidence of that fact was exhibited to the Walker declaration.

Mr Di Giantomasso pointed out that the evidence showed that the opponent's mark always appeared as WESTIN HOTEL or WESTIN HOTELS AND RESORTS and not WESTIN alone so that it was clear to anyone seeing the mark what the services provided by the opponent were. While there were in evidence coffee sachets bearing the trade marks of other hotel chains, to support the proposition that it was a common practice for hotels to place their trade marks on such things as coffee, tea and sugar supplied to guests, there was no evidence at all that the opponent had ever done so. Use on such goods was in any case not a trade mark use in relation to such goods since they were merely supplied as ancillary to the provision of accommodation services in which hotels traded. Hotels did not trade in coffee. As the opponent had no hotel in Australia there was considerable doubt whether the opponent had used the mark in Australia in respect of any of the services for which its marks were registered and some doubt also as to whether it actually intended to do so. Moreover, there was no evidence at all as to the reputation of the opponent in Australia, no evidence as to the extent of sales of overseas accommodation to Australian travellers nor of the extent of promotion of the opponent's services here. There was a heavy onus on a party relying on a reputation to be inferred from use of a mark overseas where the mark had not been used in Australia: Conagra Inc v McCain Foods (Aust) Pty Ltd 23 IPR 193; Chase Manhattan Overseas Corp and Others v Chase Corp Ltd and Another 8 IPR 69. The only evidence of the extent of the opponent's reputation overseas was the number of hotels it operated.

Mr Di Giantomasso submitted that I was not entitled to draw any inferences from the fact of the applicant's abandonment of its application for registration in Singapore since the circumstances surrounding that event were unknown. Also, he argued that I should not give great weight to the decision of the Hong Kong Registrar because of the differing facts and circumstances. The opponent's registration in that case had been for goods in Class 16. Moreover, the opponent operated a hotel in Hong Kong, whereas it had no such establishment in Australia. That decision could not therefore be transferred to Australia's very different conditions. He was also critical of the Alderson declaration as being the only evidence of a third party who was , moreover, a business associate of the opponent, being managing director of the opponent's general sales agent in Australia, and thus a member of the relevant industry and not representative of persons who would use the services provided by the opponent. There was, therefore, no independent testimony to support the opponent's case. Furthermore, as to the question of the possibility of confusion with the opponent it was no more than personal opinion and speculation. It was of little probative value in the absence of any objective evidence of the opponent's reputation in Australia. Mr Di Giantomasso objected to the use of the word "piracy" in reference to the adoption by the applicant of its mark and stated that it was in fact derived from the words "west Indonesia". Many cases showed that parties could independently adopt similar marks without lack of good faith.

Mr Di Giantomasso submitted that as the two marks in suit were quite different, the one consisting of the two-syllable word WESTIN and the other of the four-syllable word WESTINCAFE, the question of proprietorship did not arise in this case, since for that to occur the marks in suit had to be the same mark or substantially the same mark.

On the question whether the services of the opponent's registered marks and the goods of the application are "closely related" for the purposes of s33(2) Mr Di Giantomasso referred to a decision of a delegate of the Registrar in Sizzler Restaurants v Sabra 20 IPR 331. In that case the opponent's mark was registered in respect of : "Coffee, tea, cocoa, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; pepper, vinegar, sauces, spices and ice." The applicant sought registration in respect of the following services: "Restaurants, services relating to preparation and provision of food or drink, reception centres, none of the foregoing providing takeaway food or drink services." After a thorough analysis of the respective goods and services in the light of the tests set out in Jellinek's Application (1946) 63 RPC 59 and Beck Koller & Co Ltd's Application (1947) 64 RPC 76 the Hearing Officer found that they were not closely related and dismissed the opposition in as far as it was based on s33.

Decision

I will deal with each of the grounds of opposition in turn, that is, the issue of proprietorship under s40, s33 and s28.

proprietorship

In an as yet unreported decision of the Federal Court Gummow J, in Carnival Cruise Lines v Sitmar Cruises Limited, in considering the disputed claims to proprietorship of the marks FUNSHIP or FUN SHIP, posed the following questions:

Will substantial identity suffice? Or may questions of deceptive similarity           be considered? Or is visual identity essential?

Then, having considered a submission based on The Shell Company of Australia Limited v Rohm and Haas Company (1949) 78 CLR 601, His Honour continued:

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 s62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (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.

...

In the present case there would, in my view, be no material distinction to be drawn between "Fun Ship" and "Funship" or between the addition of the definite article or the use of the plural. However, "Fun Ship" is for this purpose a substantially different trade mark to "Sitmar's Funship" and "Fairstar The Funship".

For the same reasons I find that, for the purposes of s40, WESTINCAFE is a substantially different trade mark to WESTIN since the two marks, on a side by side comparison, do not create a total impression of similarity. There are obvious differences between the marks despite the fact that one is included in the other.

Section 33

The relevant provision is subsection 33(1) which reads:

33(1) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

The question for decision is whether the goods in respect of which the applicant seeks registration are "closely related" to the services for which the opponent's marks are registered. As Mr Voon pointed out, in the Rollbits case (supra) it was held that "confectionery including toffee, chocolate and chewing gum" were closely related to the applicant's proposed services, namely, "Services rendered or associated with restaurants, take-away food stores, and all other retail food outlets which sell and promote prepared food and drink for consumption; the preparation of carry out food." This conclusion seemed to the judge to follow from his finding that the applicant's and the opponent's respective goods were goods of the same description  He said, at 546:

...the conclusion that the goods are goods of the same description requires a conclusion that the services contemplated by the defendant, which would feature the goods already held to be goods of the same description as those of the plaintiff, are services closely related to the plaintiff's goods.

On the other hand in the Sizzler decision the Hearing Officer, after a thorough analysis of the relevant precedents, came to the conclusion that coffee and coffee substitutes, amongst other goods in Class 30, were not closely related to restaurant services. I set out at some length below her reasons for so deciding:

CONFLICT WITH REGISTERED TRADE MARK NUMBER A239948(30): SECTION 33:

The grounds based on section 33 raise issues previously considered by the Registrar in ex parte proceedings.  As pointed out to me by Mr Chrysiliou, however, I must now consider the matter anew and in the light of the evidence.

The trade mark of which the opponent complains, is registration A239948(30), the bovine family mark illustrated at the commencement of this decision.  Under the device of the three animals, is the word SIZZLER.  Sizzler Restaurants International claims that this mark and the mark SIZZLER are substantially identical or deceptively similar and that the goods of A239948(30) are closely related to the services of the subject application.  I agree at once, that while the two marks are not substantially identical, they are deceptively similar.  The word SIZZLER is one of the principal elements in the registered mark, and clearly both marks would be referred to by use of this word.  The question of whether or not a section 33 objection obtains depends therefore on whether or not the goods of the bovine family mark are closely related to the services nominated in the present application.

A239948(30), the bovine family mark is registered in respect of:

Coffee, tea, cocoa, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals; bread, biscuits, cakes, pastry and confectionary, ices; honey, treacle; yeast, baking powder; salt, mustard; pepper, vinegar, sauces, spices and ice.

The services of the subject application are:

Restaurants, services relating to preparation and provision of food or drink, reception centres, none of the foregoing providing take‑away food or drink services.

The tests to determine this matter are specified in the Trade Mark Examiners Manual.  They are based on the famous test set down by Justice Romer in Jellinek's Application, 63 RPC 59 as enlarged upon in Beck Koller & Company's Application, 64 RPC 76. For the sake of convenience I shall refer to the goods of the bovine family mark as 'the class 30 food products' and to the services of the subject application as 'restaurant services (excluding any take away services)'.

The nature of the class 30 food products is that they are edible commodities, either fresh, frozen, dried, or otherwise preserved.  The nature of a restaurant service (excluding any take away services) is that it is a catering service whereby food is prepared and made available to be eaten on the premises.

The class 30 food products are purchased for domestic need or restaurant use.  They may be processed or not; ready to eat or not.  Restaurant services, excluding take‑away services, provide the purchasers with food in its finally prepared state, the premises in which to partake of that food, and the various ancillary functions needed to present and enjoy the service.

The trade channels through which the goods, as opposed to the services, pass are the primary producer, the manufacturer, the wholesaler, (perhaps an importer) and then the various retail outlets.  Restaurant services excluding take away restaurant services, are not available through these outlets.  They are available at establishments dedicated to the services of preparing and serving meals.  Conversely, the restaurant services specified in the subject application are not available from food outlets.  They are available only at establishments whose sole business is the preparation and serving of meals in situ.   Such restaurants are not outlets where class 30 food products may be purchased.

Considering the surrounding circumstances of trade, it is a matter of fact that numerous restaurants do provide ancillary catering services and in addition, sell goods, often indeed the restaurant specialities, from the premises.  However, all those activities are excluded from the present application.  Here there is simply a restaurant service, and it is not normal trade practice for restaurants to manufacture class 30 food products and then sell them through the normal food retail outlets.  Taking this circumstance into account, together with the inherent differences between the nature of the goods on the one hand and the nominated services on the other, the difference in the presumptions of the purchasers of the class 30 food products from the preusmptions of those intent in partaking restaurant services; and the difference in the final stages of the respective trade channels supplying either, the goods or the services, but not both; I come to the final conclusion that the services nominated in the present application are not closely related to the goods of trade mark number A239948(30).

The opposition based on section 33 and the registered trade mark number A239948(30), is therefore dismissed.

Adopting the same reasoning I also find that the applicant's nominated goods are not closely related to the services, including restaurant services , of the opponent.

section 28

The test to be applied under s28 may be stated as follows, paraphrasing the words of Evershed J. in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97, in which he compared the tests under ss.11 and 12 of the Trade Marks Act 1938 (UK), which correspond to ss.28 and 33 of the Trade Marks Act 1955 (Cth):

The questions for my decision ... have been formulated, and I think accurately formulated, as follows:

(a) (Under s.28) "Having regard to the reputation acquired by the name WESTIN, is the Registrar satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registrtion proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?"

In her declaration Ms Walker states that the opponent's services are "promoted extensively" in Australia and that by virtue of such promotional activities the opponent now has "substantial reservations" through its Sydney office for accommodation in WESTIN Hotels and Resorts worldwide. There is evidence of the promotion of the opponent's advertising efforts exhibited to the Walker declaration in the form of newsletters circulated to travel agents, copies of articles in the monthly American Australian Business magazine and illustrated brochures. There is no evidence, however, of the extent of either the promotional activities or the "substantial reservations" said to be a result of them. The opponent does not provide any of the services relied on in Australia and, as Mr Di Giantomasso submitted, a party which relies on overseas reputation bears a heavy burden of establishing that that reputation has carried over to Australia. The only evidence of the opponent's reputation overseas is the fact that it operates some 62 hotels worldwide. Clearly an inference can be drawn from that fact in itself that the opponent enjoys some reputation but there is no evidence of the extent of that reputation or of any "spillover" of that reputation in Australia. As to the decision of the delegate of the Hong Kong Registrar, Mr Fox refers in that decision to the extent of the reputation of WESTIN in Hong Kong. There is no evidence as to the extent of the reputation of WESTIN in Australia. In my opinion the opponent has not discharged the onus upon it of demonstrating that it enjoys such a reputation in Australia that a substantial number of persons would be led to believe that the use by the applicant on the goods proposed for registrationn would lead to deception or confusion as to the origin of those goods.

conclusion

In the result I have found that the opponent has failed on all of the grounds of opposition on which it has relied. The opposition is therefore dismissed. The applicant having been successful in defending its right to registration of its mark is entitled to its costs in the matter and I so award them.

Michael Homann

Hearing Officer

15 April 1994