High Court finds no likelihood of confusion between 'Regis' marks for hotel services

In Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts ([2012] SGHC 204, October 9 2012), the High Court has held that there was no likelihood of confusion between the marks PARK REGIS and ST. REGIS for hotel services.

The appellant, Staywell Hospitality Group Pty Ltd, owns and operates 24 hotels, mainly in Australia and New Zealand. The respondents, Starwood Hotels & Resorts Worldwide Inc and its subsidiary Sheraton International Inc, own and operate more than 900 hotels worldwide.

The dispute involved the ST. REGIS mark belonging to Sheraton, and the following trademark belonging to Staywell:

In the opposition hearing, the registrar disallowed the registration of the PARK REGIS mark on the grounds that:

• the marks PARK REGIS and ST. REGIS were similar, the services were similar and, taking into account the circumstances, there was a real likelihood of confusion; and
• the ST. REGIS mark was well known and, as the two marks were similar, there was a likelihood of confusion, as well as a likelihood that potential customers would be misled into thinking that Staywell’s services originated from the respondents.

Staywell appealed to the High Court.

The High Court first considered the visual, aural and conceptual aspects of the marks. In this regard, the distinctiveness of the respondents' ST. REGIS mark was relevant. The court considered the mark ST REGIS to be somewhat distinctive, but not as distinctive as an invented word.

It was not disputed that the marks were visually dissimilar. As to aural similarity, while the marks could also be argued to be dissimilar, it was also clear that 'Regis' is unusual in the context of Singapore and the public would likely pay more attention to the second distinctive word in each mark rather than to the first. As to conceptual similarity, the court felt that the public would likely associate 'Regis' with royalty. It also noted that both parties emphasised a connection with royalty/royal treatment in relation to their hotels and used these concepts to imply qualities of class, status and luxury.

After a balancing exercise, the court held that the marks were aurally and conceptually similar. The court also found that the services covered by the marks were similar.

As to the issue of likelihood of confusion, the court held that this was to be considered globally, taking into account all the circumstances, including:

1. the closeness of the services;
2. the impression given by the marks;
3. the possibility of imperfect recollection;
4. the risk that the public might believe that the services come from the same source or economically-linked sources;
5. the steps taken by the applicant to differentiate the services from that of the opponent; and
6. the kind of customer who would be likely to buy the services of the applicant and the opponent.

Going down the list, the court held as to item (a) that the services were not qualitatively different. As to item (b), the court held that the impression given was likely to be mixed. On the one hand, the dominant concept of royal or luxurious treatment was similar, yet the marks were also visually dissimilar, which would at least raise some questions as to whether they emanated from the same source. The court left open item (c), holding that this would be hard to ascertain.

As to item (d), the court was concerned with the manner in which both hotels were marketed, and whether there was a likelihood of confusion when booking a room in either of the hotels. Four ways in which hotel rooms were booked were identified:

1. through a website;
2. via travel agent;
3. telephone bookings; and
4. walk-ins.

In this regard, the court noted that the websites were completely different and that the other brands of the parties, namely Staywell Hospitality Group and Starwood Preferred Guest, respectively, were prominently used. Further, the impression and images conveyed by the websites were completely different and it would be clear to the reasonable discerning customer booking online that the two were not economically linked entities and belonged to different groups.

As for the other modes of booking, the court held that telephone bookings did not give customers the opportunity to see the marks and there was a greater likelihood of confusion. However, customers were unlikely to be confused if travel agents were involved or when they walked into the respective hotels. The court also noted that no statistics evidence was adduced as to which was the most popular method of booking, and that it was likely that most guests will use the internet or a travel agent. Further, the court raised the lack of survey results showing a likelihood of confusion. The respondents in this case had elected to rely on three isolated incidents of confusion, some of which were not considered reliable.

As to item (e), the court considered as relevant the steps taken by Staywell to differentiate its services and to reduce confusion - that is:

• the prominent display of the STAYWELL HOSPITALITY GROUP mark on Park Regis Singapore’s website;
• the attempt to classify Park Regis as a four-star hotel; and
• the marketing of Park Regis as a business, rather than a luxury, hotel.

As to item (f), the court held that the average Singaporean consumer is “not an unthinking person in a hurry but… someone who would exercise some care and good sense in making his purchases”. This would particularly be true in this case with discerning guests who choose the St Regis Singapore because of its exclusivity and reputation for luxury. It was also noted that rooms at the St Regis are not cheap, and potential guests would likely conduct an internet search or seek clarification from the travel agent before making their booking, which would be sufficient to dispel confusion.

On balance, the court held that there was no likelihood of confusion, notwithstanding the finding that the marks were similar.

With regard to the issue of whether the ST. REGIS mark was well known, the respondents failed under this head as it was necessary to prove that there was a likelihood of confusion. The court also held that, in any case, there was no likelihood of damage since Park Regis Singapore is pitched at a class or two below the St Regis Singapore.

With regard to passing off, the respondents also failed under this head as they were unable to prove that they had the requisite goodwill on the relevant date. Staywell had filed their trademark application on March 3 2008 and the St Regis hotel opened in Singapore only on April 20 2008. Certain pieces of evidence predating March 3 2008 were adduced, but were rejected by the court on the grounds that the evidence was not tied specifically to the situation in Singapore, but related to Starwood’s international reputation, revenues and marketing efforts.

In the final analysis, the court held that the PARK REGIS mark, although similar to the ST. REGIS mark, was not likely to be confused with the St. Regis brand, particularly when taking into account the likely customers of both brands.

The opposition to the PARK REGIS mark failed and the appellant’s mark was permitted to proceed to registration.  

Regina Quek, One Legal LLC, Singapore