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Leading Hotels Appeal Trademark Dismissal

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 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
  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.