Trademark Application in South Africa
|CAPETOWN, South Africa, April 19, 2004 - Application
to register the trademark "The Leading Hotels of the World" in South Africa
by The Leading Hotels of the World Ltd, has been refused by the Tribunal
of the Registrar of Trade Marks in Pretoria. The opponent Online Travel
Group, opposed the registration on the grounds that the mark is non-distinctive
and not suitable or adapted to be the subject of statutory trademark rights.
Judge Spoelstra referred to the Canadian case of The Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. of Canada Ltd. in the House of Lords, wherein Lord Russel states:
"A word or words to be really distinctive of a person's goods must generally speaking be incapable of application to the goods of anyone else. It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader."
Judge Spoelstra went on to state that the registrar, when considering whether or not a mark has acquired distinctive character through use, "must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings."
He concluded that the term "LEADING HOTELS OF THE WORLD" is purely descriptive and went as far as to state that counsel for the opposition, Mr Morley, had been kind to the applicant in his assessment. Spoelstra then added "To my mind it is extremely unlikely that anyone would associate that phrase with hotel reservations. The plaque the member hotels are allowed or obliged to display prominently at the premises certainly does not invite reservation business at all or particularly with the applicant."
In 2000, application to register the trademark in New Zealand was similarly refused. The Examiner did not accept the applications on the grounds that the words "THE LEADING HOTELS OF THE WORLD" were so likely to be used for general description that even if extensive evidence of use were supplied, it would be difficult to justify granting a monopoly in the mark.
Proceedings issued in April 2002 through WIPO (World Intellectual Property Organization) had a similar outcome. Leading Hotels of the World, Ltd. lost the proceedings when the WIPO panel ruled in favour of Online Travel Group, stating that "...the phrase "leading hotels" is highly descriptive, is not distinctive, thus on its own would not be capable of acting as a trademark".
Online Travel Group are now demanding that The Leading Hotels of the World voluntarily cancel trade mark no 97/17327 THE LEADING HOTELS OF THE WORLD Logo by May 13 2004.
|Also See:||Dispute Over Domain Name leadinghotels.com; South African Hotel Reservation Company Claims The Leading Hotels of the World Conducting Effort to Prevent Use of Their Domain Name leadinghotels.com / November 2003|