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.
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