Hilton to go another round over ‘Waldorf’ trade mark
Justice Stephen Burley June 21, 2018 11:31 am By Cat Fredenburgh | Melbourne

A serviced apartments provider wants to appeal a ruling that blocked it from trade marking the phrase “Waldorf Apartment” after Hilton Worldwide — which owns New York’s iconic Waldorf Astoria hotel – opposed the move.

 

The Waldorf Apartment Group, which operates a chain of furnished and serviced apartments in Australia and New Zealand, filed a notice of appeal June 19 after trade mark bid was shot down.

Hilton, which markets its luxury hotel services under the Waldorf Astoria Hotels & Resorts brand, opposed the trade mark application, saying it has an established worldwide reputation in the “Waldorf” trade mark with respect to hotel services stretching back to 1893.

In a May 30 judgment, a hearing officer for the Trade Marks Office disagreed with the Waldorf Apartment Group that there was no likelihood of confusion between the marks because its accommodations appeal to more “basic” Australians seeking affordable accommodations, while the Hilton’s “Waldorf” mark conveys luxury accommodations.

“[I]t is not my view that persons seeking the Opponent’s services are pretentious but, in terms of the Applicant’s evidence, and at the risk of quoting a well-known Australian movie – it’s the ‘vibe’ of the evidence in answer for [Waldorf Apartment Group’s application]”, Officer Cristy Condon said, summarising the Waldorf Apartment Group’s argument.

Condon called Waldorf Apartment Group’s claims about the hotel chains’ different vibes a “straw man’s argument” and said that the services offered by the “Waldorf Towers” apartments within the Waldorf Astoria and Waldorf Apartment Group’s services apartments were “basically the same” despite the difference in opulence level.

The officer said Hilton had proved “at the very least” that its “Waldorf Astoria” mark, commonly referred to as the Waldorf, had a substantial reputation in Australia for hotel services prior to the Waldorf Apartment Group application to register the “Waldorf Apartment” marks.

The Trade Marks Office heard evidence of the notoriety of the “Waldorf” mark in Australia, including in relation to the Waldorf Astoria hotel and the Waldorf salad, named after the hotel where maitre d’hôtel Oscar Tschirky concocted the recipe.

“The Opponent’s evidence in my opinion is quite persuasive and it attests to the Opponent’s claim that the Opponent’s ‘WALDORF’ trade mark has a substantial reputation in Australia in relation to the provision of luxury hotels and long and short-term accommodation and property management services.”

Hilton countered the Waldorf Apartment Group’s claim that there was no confusion between the hotel brands by offering a disgruntled TripAdvisor review that referred to a Waldorf Apartments manager as the “fake Waldorf managing director”.

A case management hearing in the appeal has been scheduled for July 27 before Justice Stephen Burley in New South Wales.

Hilton was represented in the Trade Marks Office matter by Miriam Stiel, Kimberley Evans and Julia Kovarsky of Allens Patent and Trade Mark Attorneys. Waldorf-Astoria was represented in the Trade Marks Office matter by David Studdy of Counsel and instructed by Philip Macken of Halfords IP. It is represented by Landerer & Company in its appeal.

The appeal is Waldorf Australia Group Pty Ltd v Hilton Worldwide Inc.

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Cat Fredenburgh

Cat Fredenburgh has been covering legal news for 12 years. She was previously Editor-in-Chief at US legal news publication Law360. She is the Co-Founder of Lawyerly.