Online Travel Group V. The Leading Hotels of the World

22nd Mar 2004

A hearing date of 29th March 2004 has been set for the trademark
opposition to the registration of “The Leading Hotels of the World” by a
South African company, Online Travel Group.
The Leading Hotels of the World, applied for registration of the trademark
“The Leading Hotels of the World” in respect of hotel services in South
Africa in 1998. Online Travel Group, a South Africa based firm who own the
domain name since 1997, are opposing the South African
application on the basis that the trademark is not distinctive.

In 2000, applications to register the trademark in New Zealand were
refused. The Examiner did not accept the applications on the ground that
the marks were not eligible under ss-14 and 15. Ms Sian Roberts, Assistant
Commissioner of Trade Marks held 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.

In April 2002, in an attempt to obtain the domain name,
Leading Hotels of the World initiated proceedings through WIPO (World
Intellectual Property Organization). They lost the proceedings when the
WIPO panel ruled in favor 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”. Furthermore, the
WIPO administrative panel did not find that Online Travel Group were
operating in bad faith, nor did it find that the company registered the
domain name to prevent The Leading Hotels of the World from using its mark
in a domain name. It was found that use of the domain name by Online
Travel Group had always been bona fide and had always been used
legitimately in connection with the development and expansion of the
company’s online hotel reservation services.

A successful opposition of the trademark in South Africa could have far
reaching global implications for The Leading Hotels of the World, as a
successful opposition could prove significant in any attacks on their
existing international trademark registrations.



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