Leading Hotels Appeal Trademark Dismissal

• 
  SAVE
• 
  SHARE
• 
  TEXT SIZE
• 
  PRINT
• 
  COMMENT
• 
  PDF

. October 14, 2008

JOHANNESBURG, South Africa, August 10, 2005. In 1998, The Leading Hotels of the World Ltd. applied for registration of the trademark 'THE LEADING HOTELS OF THE WORLD' in respect of hotel services in South Africa. Online Travel Group, a South Africa based company, opposed the application on the basis that the trademark is not distinctive.

The application was dismissed in 2004 by the Registrar of Trade Marks. Judge Spoelstra concluded the term "LEADING HOTELS OF THE WORLD" is purely descriptive and stated that, "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."

The Leading Hotels of the World Ltd. appealed the Registrar's judgment and a hearing is set this month before the Full Bench of the Transvaal Provincial Division on 22nd August.

In 2000, application to register the trademark in New Zealand was similarly refused. The Examiner did not accept the applications on the ground that the marks were not eligible and 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.

Online Travel Group, who offers online hotel reservation services worldwide, registered the domain name leadinghotels.com in 1997. Legal proceedings instigated by The Leading Hotels of the World Ltd. in attempt to obtain the domain name have proven futile.

In April 2002 The Leading Hotels of the World Ltd. initiated proceedings through the World Intellectual Property Organization. They lost when the WIPO panel ruled in favour of Online Travel Group, stating that the company was not operating in bad faith and that use of the domain name by Online Travel Group had always been bona fide and used legitimately in connection with the development and expansion of the company's online hotel reservation services.

Last month The Leading Hotels of the World Ltd. advised Online Travel Group that they had obtained a judgement against the company for trading into the French internet market, although no writ has been officially served on the company. In fact, Online Travel Group was not even notified of the proceedings. They have also threatened to pursue a claim for civil damages against Online Travel Group, although a recent change in French law would make it difficult.

Online Travel Group have stated that in the event the South African appeal court supports their opposition and the application for registration of the trademark is again dismissed, they will demand that The Leading Hotels of the World Ltd. voluntarily cancel trademark no 98/10569 THE LEADING HOTELS OF THE WORLD logo.

Pending the outcome of the Appeal, Online Travel Group are preparing trademark expungement proceedings against The Leading Hotels of the World Ltd. in other Commonwealth jurisdictions, notably Bahamas, Bermuda, Australia, India, Singapore, Fiji and South Korea.