Australian Homestay Network Pty Ltd v Homestay Network Pty Ltd [2015] ATMO 28

Australian Homestay opposed the registration of the below trade mark filed by Homestay covering Class 43 accommodation services.

Click here to view the image.

The opponent led evidence of its use of the below trade mark dating back to 2007 and noted that the trade mark is also registered in relation to Class 9 and 41 educational goods and services.

Click here to view the image.

Before considering the grounds of opposition, the Hearing Officer, helpfully, states the case law in relation to the comparison of trade marks containing purely descriptive elements.  The point being that adopting and utilising, even registering, a trade mark that contains a pure discretion of the goods/services at issue renders that description very narrow protection that exists only in the overall context of the trade mark itself.

On section 41, the Hearing Officer quickly noted the stylisation of the trade mark and that this overall getup was sufficient to distinguish the trade mark.

On section 44, following from the summary of case law, the Hearing Officer found that the respective trade marks were not deceptively similar.  If there was any confusion it would not result from the trade marks overall, but from the adoption of the same descriptive term.  It would, in the Hearing Officer’s view, be artificial to confer a monopoly on the opponent in the descriptive words contained within its trade mark.  In any event, the Hearing Officer also noted that the services at issue were not similar.

The remaining grounds also failed, for lack of evidence led, or lack of similarity of trade marks.  The application is to proceed to registration.

To view the Office decision, click here.