When are leading hotels not simply good, well-known hotels? Are trademarks stealing our English language?

In March 2005, a trademark infringement claim filed in Paris by The Leading Hotels of the World Ltd resulted in a judgment ordering transfer of the domain name leadinghotels.com from Online Travel Group to The Leading Hotels of the World Ltd.

However, the Australian registrar of the domain name has refused transfer of the domain on the basis that it is not governed by French law and in particular because of the unusual circumstances under which the judgment was obtained.

The Leading Hotels of the World Ltd and Online Travel Group have been involved in ongoing disputes since 1997. The Leading Hotels of the World Ltd registered the domain lhw.com in 1996 and created a website using this name, which it still does today. One year later, Online Travel Group, a South African company, registered the available domain leading-hotels.com and the following year registered leadinghotels.com which was also available.

In 2002, almost five years later, The Leading Hotels of the World Ltd decided to claim trademark infringement and instituted proceedings against Online Travel Group before the World Intellectual Property Organization. WIPO rejected LHW's claim and ruled in favour of OTG, stating the company was not operating in bad faith and that use of the domain name leadinghotels.com by Online Travel Group had always been bona fide and used legitimately in connection with the company's online hotel reservation services.

More interestingly, the WIPO panel noted in its ruling that the phrase 'Leading Hotels' was highly descriptive and not distinctive and therefore on its own not capable of acting as a trademark. A fact recognized and corroborated by LHW in their further statement to WIPO in which they clearly disclaim exclusive rights to the phrase 'Leading Hotels'.

Despite this, the following year The Leading Hotels of the World Ltd filed a Community Trade Mark application to register 'Leading Hotels' for services in class 43. (The application was rejected February 2006 by the European Trade Mark Office.)

Then in April 2004, LHW's application to register 'The Leading Hotels of the World' Logo in South Africa was refused by the Registrar of Trade Marks after Online Travel Group filed an opposition. LHW appealed the decision, but lost the appeal hearing in 2005.

Nonetheless, despite all of the above and just one month after their trademark application was rejected by the South African Registrar, The Leading Hotels of the World Ltd went ahead and instituted legal proceedings against Online Travel Group in the French court on exactly the same grounds as those filed (and lost) before the World Intellectual Property Organization and the South African High Court.

In May 2004, a summons was served at the registered office of Online Travel Group in South Africa. However, because OTG had changed address in early May, the summons was returned unclaimed. Aware of this, LHW made no other attempt to contact the company and continued with its action in France knowing that OTG had no knowledge of any legal proceedings against it. Consequently, a judgment was rendered in the absence of Online Travel Group.

Online Travel Group is appealing the French judgment on the basis that The Leading Hotels of the World Ltd misinformed the court and did not mention any past or pending proceedings between the parties, including OTG's successful opposition to LHW's South African trademark application. Nor did The Leading Hotels of the World Ltd mention to the court the WIPO ruling in favor of OTG and the pending appeal before the High Court of South Africa.

To date, OTG has still not received the French court summons or been served the subsequent judgment.

Online Travel Group is seeking cancellation of the trademark 'The Leading Hotels of the World' registered in France in 1986 and on which the above action was based, for lack of distinctiveness and non-use from December 2000 pursuant to provisions of the French Intellectual Property Code.

OTG have also filed expungement proceedings to cancel trademark no 97/17327 'The Leading Hotels of the World' Logo in South Africa, following successful opposition of the application in 2004. LHW are expected to file their evidence by 17 October.