But is it IN the Land Down Under? The Continuing Importance of the Location of Trade Mark Use
As IP professionals we are all aware of the “use it or lose it” adage with respect to the maintenance of trade marks. However, with the increasing internationalisation of many brands, attorneys and brand owners must be careful to continually remind themselves that the actual location of the trade mark use is equally important.
In Australian removal for non-use actions, a trade mark owner that intends to defend their trade mark with evidence of use is required to establish that they have used their trade mark in respect of the relevant goods or services in Australia. If you are selling prawns from your trawler on Queensland’s beautiful Gold Coast beaches, or marching tourists up and down the arches of the Sydney Harbour Bridge for epic views, this is a fairly easy criteria to meet. However, what happens if you are in the tourism industry and the beaches where the hotels you are operating are located outside of the Land Down Under; what criteria do you need to meet to prove that you have used your hotel trade mark in Australia?
Whilst the fundamental standards have not changed since the decision in Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936 (Sitmar case) some thirty plus years ago, the recent Trade Marks Office Hearing decision CSI DANIŞMANLIK VE DESTEK HİZMETLERİ ANONİM ŞİRKETİ v Motel One GmbH [2025] ATMO 16 (Motel One decision) shows there is a continued evolution in tourism business methods and an increasing reliance on internet booking platforms and transactions. This means there is room for a modern view regarding the reality of how consumers interact with tourism providers. Let’s take a nostalgic cruise through the cases to remind ourselves that it is important where you use it to not lose it.
The Motel One Decision – Background
In the Motel One decision, Motel One’s trade marks for various business, food and drink and accommodation services were being challenged for non-use. It is the hotel and food and drink services which are of interest to us here. It was not in dispute that Motel One operated hotels and that those hotels offered food services; however, all the hotels were located outside of Australia.
Motel One’s defence put forward evidence showing that:
- its hotel rooms were booked via its direct website which had a .com URL;
- analytic reports showing “moderate” amounts of users from Australian IP addresses accessed the website;
- analytic reports showing a substantial amount of revenue was generated by transactions on the website by users with Australian IP addresses;
- bookings could be made via sites such as TripAdvisor, Hotels.com, LastMinute and Trivago;
- Australian residents stayed at the hotels during the relevant non-use period;
- guests from Australia left reviews of their stays at the hotels;
- a number of Australians were members of the hotel’s membership program; and
- promotional material was sent to such members which directed them to book from Motel One’s direct website.
There was criticism directed toward the evidence, particularly due to parts of it being undated and a lack of evidence of arrangements existing between Motel One and travel agents that target Australian consumers. It was also clearly stated that the fact that an Australian resident or national stays at an overseas accommodation service does not prove that the trade mark had been used in Australia. However, the Motel One membership program did appear to send regular newsletters to Australian members which promoted the hotel accommodation services under the trade mark.
Past Ruling on Tourism Trade Mark Use – The Sitmar Case
The Sitmar case from 1994 related to the removal for non-use of the FUN SHIP trade mark in respect of cruise services, where the cruises were operated outside Australia. The services which were physically delivered or provided outside Australia were offered and booked from within Australia. This booking pathway was particularly proven by evidence of arrangements between Australian travel agents and the trade mark owner for booking such services. In that decision it was stated that for there to be trade mark use, the whole of the course of trade in the services did not need to be confined to Australia. The provision of brochures to Australian customers bearing the FUN SHIP trade mark by Australian travel agents and the booking and payment of the cruises through the Australian travel agents was sufficient to constitute use of the trade mark FUN SHIP in Australia even though the cruise occurred outside Australia.
Tourism Trade Mark Use in the Present
Rolling forward some 30 years from the Sitmar decision, tourism consumers are more willing and able to book their own travel and accommodation requirements directly with the relevant service providers, without the need for an intermediary such as an Australian based travel agent. Accordingly, the question of whether the use of the mark on those internet booking sites amounts to use of the mark in Australia is becoming more relevant.
The Australian position regarding whether using a trade mark on the internet constitutes use in Australia is found in Ward Group Pty Ltd v Brodie & Stone Plc, [2005] FCA 471. Justice Merkel stated:
the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, … if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.
In Motel One, apart from the newsletters which were promoting the hotel services under the trade mark directly to a handful of Australian hotel club members, there were also promotion of the services and booking of the services possible through at least the TripAdvisor website, which had a .com.au URL. These were considered relevant and sufficient uses of the trade mark in Australia to maintain the hotel accommodation services. The Hearing officer recognised that there has been a shift since the Sitmar case in the manner in which consumers book international hotel services; “whilst travel agents still exist, direct online consumer marketing or bookings via online intermediaries, such as TripAdvisor are now also commonly used”.
Food and Drink Trade Mark Use
Motel One was not able to rely on the same uses for the purpose of retaining the trade mark in respect of its various food and drink services. The Hearing Officer commented that food and drink provided in a hotel is often under a different trade mark than the hotel trade mark. Whilst this position seems to disregard the fact that the usual operation of a hotel may include providing room service meals or food and drink services for events on the property, Motel One had not provided convincing evidence of use of the challenged mark in respect of the food and drink services.
In respect of food and drink services, an earlier Trade Marks Office decision (Major International, LLC [2022] ATMO 87) found that restaurant bookings made via websites for restaurants outside of Australia usually do not require any tangible commitment such as payment of a deposit and that the booking facility on the restaurant websites were nothing more than an offer to the world at large and not specifically to an Australian consumer. For the consumer, the crucial aspect in the food and drink services being provided to them occurred once they were at the restaurant rather than at the time of the booking. Therefore, even if the restaurant service was booked whilst the customer was present in Australia, the act of the booking in itself was not enough to prove use in Australia. The booking of cruises and hotel accommodation was differentiated from the booking of restaurants, as securing accommodation and cruises outside of Australia required a more significant part of the transaction to occur within Australia, such as the booking process, the payment of deposits and the payment of the remainder of the booking.
It has increasingly become the case since the COVID-19 pandemic that restaurants do require significant deposits and, in some cases, even payment for the entire multi-course meal at the time of restaurant booking. In these circumstances, perhaps there would be room to argue that a more substantive part of the transaction that leads to the provision of the services occurs within Australia. However, there was not evidence of this in the Motel One case. As a result, Motel One retained its trade mark for use in relation to accommodation services, but its food and drink related services were removed.
Tourism Trade Mark Use in Australia – Take Aways
In maintaining your Australian trade marks for your tourism services which are offered outside of Australia, it may be beneficial for evidence showing use of the trade mark such as the following being available:
- A booking website or the use of booking platforms which are unequivocally and specifically directed to Australian consumers;
- Travel agents that target Australian consumers offering or promoting the tourism services;
- Proof of arrangements between the trade mark owner and travel agents or booking intermediaries to specifically target Australian consumers;
- Intentional distribution of marketing materials specifically to Australian consumers; and
- Completion within Australia of a substantial part of the transaction that leads to the provision of the overseas tourism service.
Ensuring that you are taking care to continually and specifically target your consumers in the Land Down Under*, will ensure that the man in Brussels is still smiling when he hands over the Vegemite sandwich.
Contact our trade mark attorneys if you have any questions relating to the above article or trade mark use after registration.
*(Down Under – Men at Work 1981 – Songwriters: Colin James Hay / Ronald Graham Strykert Down Under lyrics © Emi Songs Australia Pty Limited)
