Revocation No. 2022-670075 (1/31/2025)
Summary:
Motel One GmbH is the holder of International Registration No. 739344 for the mark “Motel One & device”, which designates services “professional business consulting services for catering and accommodation enterprises, including advice for projects and for the management of such enterprises; consulting services for the management, monitoring and overseeing of catering and accommodation enterprises; franchising of catering enterprises, namely transmission of economic know-how to catering and accommodation enterprises.”in Class 35 and “accommodation and catering services; reservation of temporary lodging; franchising of catering enterprises, namely licencing agencies and transmission of technical know-how to catering and accommodation enterprises.” in Class 42. The International Registration was subsequently designated in Japan on October 15, 2002, and registered on January 9, 2004.
A non-use cancellation trial was filed by a Turkish company against all the designated services in Classes 35 and 42 of the said International Registration in December 2022.
Motel One Group has not provided hotel accommodation services in Japan. However, Motel One’s hotels in Europe were displayed with the mark as shown below on Booking.com site for Japanese customers in Japanese language.
The trial board held that the mark shown on the website is identical with the registered mark in the conventional sense, and use of the mark is intended to attract customers and should be considered as part of "hotel accommodation services". In conclusion, the board determined that the act of advertising "hotel accommodation services" with the mark by electronic means falls under Article 2, Paragraph 3, Item 8 of the Trademark Act.
Remarks:
It is often difficult to prove use of a registered mark for "hotel accommodation services" in Japan if the registrant is a foreign company and do not provide hotel accommodation services in Japan. In this case, the facts below were taken into consideration:
-the Motel One hotels have been displayed on the booking.com site pursuant to the paid contract between booking.com and one of the group companies of Motel One.
-the mark identical with the registered mark in the conventional sense was shown alongside the hotel information.
-the website has been shown in Japanese language for Japanese customers.
-Japanese travelers have made reservations of Motel One hotels via the booking.com site.