The Applicant submits that the evidence of the Opponent is fundamentally incomplete in that the EIR indicates that:
the Trade Marks were licensed and controlled by Margaritaville Hotels & Resorts LLC or Compass Margaritaville LLC (not the Opponent);
there is no documentary evidence, only assertion, that Margaritaville Hotels & Resorts LLC and Compass Margaritaville LLC are wholly owned subsidiaries of the Opponent;
the licence/franchise agreements provided in the EIR postdate the relevant period and even then do not provide evidence of actual control. There was no evidence of monitoring or actions taken by Margaritaville Hotels & Resorts LLC and Compass Margaritaville LLC to confirm that the control provisions in the agreements are being complied with;
the Privacy Notice clearly states that the hotels operated under the Trade Marks are 'not controlled or managed by us. Margaritaville franchisees and licensees are independent third parties, not owned or controlled by Margaritaville.'; and
there is no evidence of ownership and control of the various websites used to promote the hotels under the Trade Marks.
The Opponent submits that:
This is not a case comparable to Lodestar, which involved a bare $1 licence with no actual control that was created in the context of the settlement of a trade mark dispute. The Opponent/Margaritaville Hotels & Resorts LLC/Compass Margaritaville LLC operates a significant hotel chain at scale, with hotels in over 30 locations under the Trade Marks. The Opponent's franchise/licensing agreements involve the franchisee/licensee paying significant revenue to Margaritaville Hotels & Resorts LLC or Compass Margaritaville LLC, which would not be the case in the absence of significant efforts to maintain the branding and standards associated with properties offering services under the Trade Marks. Furthermore evidence of control can be seen by the fact that each of the hotel properties participate in the chain's rewards program, as required under the agreements; and that their website use is closely controlled; all hotel websites are either operated centrally by the Opponent, or, when operated by the hotel operator, demonstrate consistent usage and control from the central website.
While the Opponent does not provide documentary evidence being company search reports indicating that Margaritaville Hotels & Resorts LLC and Compass Margaritaville LLC are wholly owned subsidiaries of the Opponent, this is clearly stated in the EIR and the status of the respective entities is restated multiple times in the various legal documents; including the franchise/licensing agreements, provided by the Opponent.
Limited weight should be placed on the Privacy Notice, which is taken out of context by the Applicant, rather regard should be had to the actual franchise agreements and operation of the business which provides clear indicia of control.
While noting the gaps identified by the Applicant in the Opponent's evidence[19], I am satisfied on the balance of probabilities that the use of the Trade Marks was by the Opponent, either directly through operation of the Opponent's Websites (through which bookings were made), or as a result of the use by the various franchisees authorised (indirectly) by the Opponent. I am satisfied that Australians have made bookings for at least some of the hotel properties operated under the Trade Marks through the website operated by the Opponent at www.margaritavilleresorts.com. I am satisfied on the balance of probabilities, taking the Opponent's evidence as a whole, that use of the Trade Marks by the Opponent's franchisees/licensees was authorised by the Opponent. Firstly, I am satisfied by the statements in the EIR, as well as the numerous references in corporate documents such as the licence agreements that the franchisors/licensors are wholly owned subsidiaries of the Opponent and thus control can be found under the principles set out in Trident.
Secondly, regarding the relationship between the franchisors/licensors and franchisees/licensees, I find that Margaritaville Hotels & Resorts LLC/Compass Margaritaville LLC exercised practical control over their use of the Trade Marks. Considering the Opponent's evidence of its operation of a hotel chain as a whole, including the 380 page franchise/licensing agreements, it would be simply implausible to conclude that Margaritaville Hotels & Resorts LLC/Compass Margaritaville LLC, the longstanding operators of a large hotel chain that hotel operators are prepared to pay large sums to partner with and use the Trade Marks, takes no steps to ensure that any of the detailed requirements surrounding the offering of hotel services under the Trade Marks by the franchisees/licensees are complied with. Furthermore, the license/franchise agreements provide that Margaritaville Hotels & Resorts LLC/Compass Margaritaville LLC control the licensors/franchisors' online use of the Trade Marks. The evidence indicates that Margaritaville Hotels & Resorts LLC/Compass Margaritaville LLC control and operate the central booking websites (the Opponent's Websites) and operates at least some of the official websites for each of the hotels (as prescribed in the license/franchise agreements). In addition, each of the licensors/franchisors participates in the Opponent's Perks (loyalty/rewards) program (again as prescribed in the licence/franchise agreements) illustrating compliance with the terms of the license/franchise agreements in the offering of hotel services under the Trade Marks.
Finally, I note the Applicant's submissions regarding the effect of the Privacy Notice. While the Privacy Notice is undoubtedly poorly drafted, I cannot put more weight on a privacy notice than the significant evidence that the Opponent operates a detailed franchise system with ongoing controls on the Trade Marks.
Accordingly I am satisfied that the Opponent has used the Trade Marks in Australia in respect of hotels and similar services being services that involve the provision of short-stay accommodation, such as 'resort hotels; providing temporary accommodation at cottages; providing temporary housing accommodations' ('Used Services') in the relevant period. I am not satisfied that the Opponent has used the Trade Marks for the services sought to be removed other than the Used Services ('Remaining Services') during the relevant period.
[2]
The Opponent does not in its particulars formally submit that there have been any matters that amount to an obstacle to the use of the Trade Marks for the Remaining Services in the relevant period, pursuant to s 100(3)(c) and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Marks, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Marks to remain on the Register for any of the Remaining Services.
[3]
As noted in Shanahan's Australian Law of Trade Marks and Passing Off ,the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[20] In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):
[4]
The following propositions are relevant to the exercise of this discretion:
[5]
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
[6]
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. ...
[7]
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. ...
[8]
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
[9]
(5) The range of factors considered in the exercise of the discretion has included whether or not:
[10]
(b) the registered proprietor of the mark still has a residual reputation in the mark;
[11]
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
[12]
(d) the applicant for removal had entered the market in knowledge of the registered mark;
[13]
(e) the registered proprietors were aware of the applicant's sales under the mark;
[14]
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[21]
[15]
In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the Register, the Court said:
[16]
[T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have "integrity" and that it be "pure". It is a "public mischief" if the Register is not pure, for there is "public interest in [its] purity". The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function - to indicate the trade origins of the goods to which it is intended that they be applied.[22]
[17]
While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:
[18]
Although the 'guiding principle behind the discretion is public interest, particularly in the integrity of the register',[23] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme - or at least - a predominant interest is the maintenance of the integrity of the Register.[24] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[25]
[19]
In the present case I reach the following conclusions:
There is no residual reputation held in the Opponent's Trade Marks in the Remaining Services in Australia, arising from the single, unsuccessful business venture. In particular I am unimpressed by the Opponent's decision not to provide a date of closure of its Darling Harbour restaurant, and instead rely, at paragraph 84 of its submissions, on what is clearly an out-of-date reference to a closed restaurant on a website with no particular reputation.
While accepting that there are a significant number of restaurants operated under the Opponent's Trade Marks, the Opponent's evidence of sales, advertising and third-party recognition for the Remaining Services is limited.
There is no evidence that the Opponent seeks to use the Opponent's Trade Marks in Australia for the Remaining Services.
The Opponent submits that one basis on which I should exercise the discretion not to remove the Trade Marks in respect of the Remaining Services on the basis of s 101(4) of the Act, namely that the Trade Marks have been used in respect of similar services, being the Used Services, and closely related goods, being the foodstuffs and beverages offered by the Opponent online. The Opponent submits that as a result of this use, by reason of the removal of the Trade Marks in respect of the Remaining Services, confusion will occur among the public.
In the present case, while I do accept that hotel providers often offer restaurant services and alcoholic beverages and bar services, this is not by itself determinative of whether or not I should exercise the discretion. Section 101(4) only identifies the use of the Trade Marks on similar services/closely related goods as a factor that I may take into account in the exercise of the discretion.
I am unpersuaded that the Opponent has any reputation in the closely related services, noting the lack of evidence of sales figures. The Opponent may have a reputation in the Used Services, but noting that the Opponent has never operated hotels in Australia, and is only based in 30 locations, mostly American and Caribbean, its reputation in Australia is modest. There is a public interest in the integrity of the Register, and I do not consider the public interest in this case is served by allowing a mark to remain registered for a wider variety of services than used or intended to be used by the Opponent. If I were to remove the Remaining Services the Opponent would still retain the protection of the Trade Marks for the Used Services (as well as the services for which removal is not sought) and (both in respect of any opposition or infringement matters) any similar goods/services or closely related services/goods. As such I do not consider that the private commercial interest of the Opponent would be significantly impacted by the removal of the Trade Mark for the Used Services. Nor would there be a significant risk of consumer confusion; the scope of the protection granted to the Opponent under the revised specification would (absent any defences) prevent the use of deceptively similar marks for Used Services and any similar goods or closely related services; it is not necessary for the protection of the public to retain the registration of the Trade Marks for a wider range of services then it has actually been used for.
Finally, while I accept that Jimmy Buffett and his music is well-known, I am unpersuaded that this, along with the other evidence before me, provides a clear basis to exercise the discretion to preserve the registration of the Trade Marks for the Remaining Services. To the extent that a third party seeks to improperly associate its goods and services with Mr Buffett, as would be the case with any well-known individual, there other remedies available outside trade mark law that do not require the maintenance of registration of a set of Trade Marks for services that the Opponent does not use in Australia and, based on the evidence before me, has no plans to use in Australia. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Remaining Services.
[20]
The Opponent has not established its opposition to removal of Trade Mark 1464686. Accordingly, I direct that registration 1464686 be removed from the Register one month from the date of this decision.
The Opponent has established its opposition to removal of Trade Marks 1231299**,** 2005533 and 2009564. Accordingly I decline to remove Trade Mark registration Nos. 1231299**,** 2005533 and 2009564 from the Register.
The Opponent has partly established its opposition to the remaining removal applications. Accordingly, I direct that registration 735775 be removed from the Register in respect of all the Remaining Services one month from the date of the Decision. It will remain registered for the goods and services listed below.
[21]
Class 35: Mail order services in the field of clothing, gifts and souvenirs
[22]
Class 41: Fan club services available on the Internet
[23]
I direct that registration 1464685 be removed from the Register in respect of all the Remaining Services one month from the date of the Decision. It will remain registered for the services listed below.
[24]
Class 35: Mail order services in the field of clothing, gifts and souvenirs
[25]
Class 41: Fan club services available on the Internet
[26]
I direct that registration 1871341be removed from the Register in respect of all the Remaining Services one month from the date of the Decision. It will remain registered for the services listed below.
[27]
Class 36: Real estate and vacation property management; real estate leasing; vacation real estate time share services.
[28]
Class 43: resort hotels; hotels; providing temporary accommodation at cottages; providing temporary housing accommodations.
[29]
If the Registrar is served with a notice of appeal I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.
[30]
Neither party has been entirely successful in respect of the application for removal of the Trade Marks. As such I make no order as to costs.
[31]
Class 35: Mail order services in the field of clothing, gifts and souvenirs
[32]
Class 41: Fan club services available on the Internet
[33]
Class 43: Hotels; resort hotels; providing temporary housing accommodation services at hotels; providing temporary housing accommodation services at resorts, villas and condominiums
[34]
Class 43: Hotels; resort hotels; providing temporary housing accommodation services at hotels; providing temporary housing accommodation services at resorts, villas and condominiums
[35]
Class 36: Real estate and vacation property management; real estate leasing; vacation real estate time share services.
[36]
Class 43: Bar services; restaurant services; resort hotels; hotels; providing temporary accommodation at cottages; providing temporary housing accommodations.
[37]
Class 43: Bar services; restaurant services; resort hotels; hotels; providing temporary accommodation at cottages; providing temporary housing accommodations.
[2]Pfizer Products Inc. v Karam[2006] FCA 1663, [26] (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd[2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.
[6]Great White Shark Enterprises Inc v Joose Apparel Pty Ltd[1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited[2015] ATMO 124, [21] (Hearing Officer Wilson).
[44]
[7]Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd[2018] ATMO 153, [16] (Hearing Officer Wilson). See also Simon Burke v Factor Holdings Ltd[2019] ATMO 69, [24] (Hearing Officer Brown).
[45]
[9]Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).
[46]
[10]Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Ltd[2023] FCAFC 175, [82]-[84] (Nicholas, Burley and Cheeseman JJ).
[47]
[11] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd[2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).
[19] In particular while the evidence of the franchising agreements and Whois statements postdated the relevant period, these documents are supported by sworn evidence that the domain names were held by the Opponent during the relevant period and the franchising agreements are similar to the agreements in place during the relevant period; I accept these statements noting that it is implausible that the Opponent created and instituted 380 page franchise agreements in the period between the conclusion of the relevant period and the date of Facher 2.
[55]
[20] M Davison, I Horak Shanahan's Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].
[56]
[21][2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).
[57]
[22][2010] HCA 13, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).
[24]Campomar Sociedad Limitada v Nike International Ltd[2000] HCA 12, [40].
[60]
[25]E & J Gallo Winery v Lion Nathan Australia Pty Limited[2008] FCA 934, [210] (emphasis in original).
Parties
Applicant/Plaintiff:
Margaritaville Enterprises, LLC
Respondent/Defendant:
Australian Bar & Beverage Group Pty. Ltd [2025] ATMO 194
Legislation Cited (3)
Marks Act 1995
Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018
Marks Regulations 1995
Cases Cited (12)
Margaritaville Enterprises, LLC v Australian Bar & Beverage Group Pty. Ltd [2025] ATMO 194 (16 September 2025)
The primary judge referred to the summary of the relevant principles concerning use "as a trade mark" in Nature's Blend Pty Ltd v Nestlé Australia Ltd[2010] FCAFC 117; (2010) 87 IPR 464 (Stone, Gordon and McKerracher JJ) which was a case in which the words "luscious Lips" were used on packaged confectionary which included lip shaped lollies. The Full Court summarised the relevant principles as follows at [19]:
Use as a trade mark is use of the mark as a "badge of origin", a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd(1999) 96 FCR 107; 47 IPR 481; [1999] FCA 1721 at [19] (Coca-Cola); E & J Gallo Winery v Lion Nathan Australia Pty Ltd(2010) 265 ALR 645; 86 IPR 224; [2010] HCA 15 at [43] (Lion Nathan).
...Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods [Anheuser-Busch[2002] FCA 390; (2002) 56 IPR 182 at 228 [191]].
The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[1963] HCA 66; (1963) 109 CLR 407 at 422; [1963] ALR 634 at 636; [1963] HCA 66; 1B IPR 523 at 532 (Shell Co).
The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use "as a trade mark": Johnson & Johnson at FCR 347; ALR 723; IPR 24 per Gummow J; Shell Co at CLR 422; ALR 636; IPR 532.
Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or "context") of the impugned words: Johnson & Johnson at FCR 347; ALR 723; IPR 24; Anheuser-Busch Inc v Budejovicky Budvar(2002) 56 IPR 182; [2002] FCA 390 (Anheuser-Busch).
In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited.