Action Tours Pty Limited v Dreamscape Tours Pty Ltd

[2008] ATMO 65

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Action Tours Pty Ltd to registration of trade mark application 1114709(39) - PARTY BUS TOURS and device - filed in the name of Dreamscape Tours Pty Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent : Siobhan Ryan, instructed by Gibsons Solicitors Pty Ltd

Applicant : Ian Horak, instructed by Philips Ormonde Fitzpatrick

Decision:

2008 ATMO 65

Section 52 opposition: reliance on sections 42(b) and 60; neither ground established since reputation not established. Opposition fails.

Costs: Opponent to pay Applicant’s costs at scale.

Background

1. Dreamscape Tours Pty Ltd, made an application on 24 May 2006 for the trade mark represented below:

2. The application was accepted for possible registration in respect of the following class 39 services:

Agency services for arranging tours; arrangement of sightseeing tours; arranging of sightseeing tours; arranging of tours; booking agency services for sightseeing tours; conducting of sightseeing tours; conducting sightseeing tours; operating of tours; organisation of sightseeing tours; organisation of tours; organising tours; provision of sightseeing tours (transport); provision of tours; reservation services for tours; services for the arranging of tours; travel tours and cruises

3. The opponent, Action Tours Pty Ltd, filed a Notice of Opposition to registration of the trade mark. The Notice relied on sections 41, 42, 43, 58 and 60 of the Trade Marks Act 1995 but at the hearing which took place in Melbourne on 18 June, 2008, the opponent only pressed those grounds of opposition under sections 42(b) and 60 of the Act. I treat the remaining grounds as having been abandoned.
4. The opponent was represented by Siobhan Ryan of counsel, instructed by Gibsons Solicitors Pty Ltd and the applicant was represented by Ian Horak of counsel, instructed by Philips Ormonde Fitzpatrick.  The registrar’s delegate was Debrett Lyons.
5. In accordance with the Trade Mark Regulations 1995, the parties served and filed the following evidence:

Evidence-in-Support

●Statutory Declaration of James Garrett with exhibits JG-1 to JG-26, dated 19 April 2007 (Garrett 1);

Evidence-in-Answer

●Statutory Declaration of Peter Haralambous with exhibits

PH-1 to PH-6, dated 15 November 2007;

●         Statutory Declaration of Peter Gerard Maloney, dated 17 October   2007;

●         Statutory Declaration of Roland Sylvester Ott, dated 18 October   2007;

●         Statutory Declaration of Alex Ziflian, dated 29 October 2007 .

Evidence-in-Reply

●          Statutory Declaration of James Garrett with exhibits JG-1 to JG-4,  dated 15 February 2008.   

Discussion

Onus

6. The opponent bears the onus of establishing its grounds of opposition.  The opposition will succeed if one of the grounds is established.  The standard of proof is the balance of probabilities (Blount v Registrar of Trade Mark (1998) 83 FCR 50; Rejfek v McElroy (1965) 112 CLR 517 at 521) but there is a presumption of registrability which favours the applicant (Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; Lomas v Winton Shire Council [2003] AIPC 91-839; Kowa Company Ltd v NV Organon [2005] FCA 1282).

Reputation

7. The opponent laid claim to use of, and reputation in, the trade mark “The Party Bus”.
8. The applicant’s central argument was that the opponent had not shown reputation in either the same or a similar trade mark necessary to support either of its grounds of opposition.
9. The reputation of the opponent’s trade mark is indeed critical to both section 60 and 42(b) for the following reasons.

Section 60

10. The application was filed before the amendment to section 60 introduced by the Trade Marks Amendment Act 2006 came into effect and the pre-amendment version governs this opposition (Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 40; Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100 (21 February 2008)). Section 60 previously read:

Trade mark similar to trade mark that has acquired a reputation in                   Australia

60. The registration of a trade mark in respect of particular goods or              services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade   mark that, before the priority date for the registration of the first-                  mentioned trade mark in respect of those goods or services, had                    acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the   first-mentioned trade mark would be likely to deceive or cause   confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

11. Accordingly, the opponent must show that:

(a) it has a reputation;

(b) in a substantially identical or deceptively similar trade mark; and

(c) use of the applicant’s trade mark is likely to deceive or cause confusion.

12. Section 60 requires that the opponent’s reputation be assessed at the priority date of the application, 24 May 2006.  The opponent must show that at the priority date it had a reputation of the kind and extent which would create a real and tangible danger of deception or confusion amongst persons who are potential users of the class 39 services nominated in the application (Le Cordon Bleu B.V. v Cordon Bleu International Ltee (2000) 50 IPR 1; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592).

Section 42

13. Section 42 of the Act provides:

42  Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)the trade mark contains or consists of scandalous matter; or

(b)its use would be contrary to law.

1. The opponent’s submission was that the use of the trade mark by the applicant would offend section 42(b) since that use would, in turn, contravene sections 52 and 53 of the Trade Practices Act 1974.  In particular, the claim was that the use of the trade mark by the applicant in respect of the nominated class 39 services would be misleading or deceptive, or likely to mislead or deceive, and/or would suggest some sponsorship, approval, affiliation or association with the opponent or its services which the applicant did not have.

2. As with section 60, the date for assessment of that claim is 24 May 2006.

3. Section 42(b) places an obligation on the opponent to show that the use of the trade mark would, rather than might or could, be contrary to law (Advantage-Rent-A- Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683).

4. In Equity Access Pty Ltd v Westpac Banking Corporation (1990) ATPR 40-994, the Court set out a number of established factors relevant to the determination of whether there was a breach of section 52 of the Trade Practices Act.  They were:

   1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell at 202. In the present case the misrepresentation on the part of the respondents is said to be that the financial product advertised and marketed by each of them is the product of the applicant or that there is some business relationship between the applicant and each of the respondents or that the applicant has endorsed the respective product of the respondents.

   2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu per Gibbs CJ at p 6 and per Mason J at p 15, Global Sportsman Pty Ltd v. Mirror Newspapers Ltd (1984) 55 ALR 25, at p 34.

   3. Conduct will be likely to mislead or deceive if there is a "real or not remote chance or possibility" of misleading or deception regardless of whether it is less or more than 50%: Global Sportsman at p 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at pp 198-9.

   4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at p 100; Bridge Stock Brokers v. Bridges (1984) 57 ALR 401 at p 413 per Lockhart J. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v. Katies Ltd (1977) 29 FLR 336, 343. The test in passing off cases is usually expressed as being whether a "substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant's use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff's goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question." (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v. Odhams Press Ltd (1962) RPC 163 at 168 and see Saville Perfumery v. June Perfect Ltd (1941) 58 RPC 147 at 175-6, 10th Cantanae Pty Ltd v. Shoshana Pty Ltd (1987) 79 ALR 299 at 315 per Gummow J).

   5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant's business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person's business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.

   6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at p 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v. Lucas (1985) 61 ALR 307 at p 309.

5. The requirement stated therein that the opponent must establish that it has acquired the relevant reputation in the name – that is to say that the name had become distinctive of the opponent’s business in a particular area – is also a precondition to success under section 53 of the Trade Practices Act.

The Evidence

(i) the  Sale Agreement

19. The opponent asserts rights in the trade mark “The Party Bus” acquired through use and reputation.  Garrett 1 declares that:

the words “The Party Bus” have been used continuously as a business name by a predecessor of the Opponent’s business in connection with the service of bus tours and transfers since on or about 1995 (sic.).

20. Garrett 1 declares that “The Party Bus” was registered in Victoria as a business name on 20 November 1995 by  Jeffrey Fletcher, who from that date:

to a date which I cannot confirm…was in a business relationship with Craig Davis.  The business was incorporated as The Party Bus (Aust) Pty Ltd (the Former Owner) on 19 September 1997 and Craig Davis became a director of that company. 

The Opponents and I bought the business from the Former Owner on 6 February 2006, together with the business name and all the goodwill associated with the business and the business name. ...

On legal advice at the time, the Opponent did not buy the company The Party Bus (Aust.) Pty Ltd, as it did not want to be responsible for any unknown debts of that company.

21. Garrett 1 exhibits two pages of the contract of sale of business. One page is the cover sheet to the agreement and carries no helpful information.  The second page is entitled “Particulars of Sale”.  For reasons left unexplained, both in the evidence and at the hearing, the body of the agreement was not exhibited.

22. The particulars of sale name The Party Bus (Aust) Pty Ltd as the vendor and James Garrett and Alison Garrett as the purchasers.  The date of sale appears to be 21 January 2006.  The type of business is identified as “Party Bus Tours and Charters”.  Garrett’s described the transaction as an asset purchase rather than a share purchase, however the particulars of sale do not clearly identify the assets purchased.  The particulars refer to two business names: “The Party Bus”, and “A Amega Bus Tours”.  The address of the vendor’s business premises is a place in Dandenong, Victoria.  Those premises are said to be occupied by the vendor as a tenant. There appears to be a restraint of trade provision imposed on the purchasers, limited to three years and a radius of 200 kilometres (presumably calculated from the Dandenong address).  That is all that can be drawn from the agreement.

23. Unsurprisingly, the applicant was critical of the sale document in terms of it providing evidence of a claim that the opponent benefitted from whatever trading goodwill had been generated in the words “the Party Bus” prior to 21 January 2006.

24. Statements made elsewhere in Garrett 1 suggest that the purchase included seven buses painted with the words, “The Party Bus”.

(ii) the Trade Mark

25. The applicant contended that the evidence is not conclusive of consistent use of the words “The Party Bus” before the priority date and is not conclusive of use of the words “The Party Bus” as a trade mark before the priority date.

26. Garrett 1’s declared that “the words ‘The Party Bus’ have … been used as the identifying words in a company name that was the owner and operator of the Opponent’s business from September 1997 to February 2006”.  That statement seems relatively uncontroversial provided that it is accepted that The Party Bus (Aust) Pty Ltd was the opponent’s predecessor in business.

27. Garrett 1 added that the trade mark has been continuously used since 1995 but that it “was initially used in conjunction with the words ‘Mega Bus’. i.e. ‘Mega Bus Tours – The Party Bus’”, but that “gradually, the Trade Mark was used more and more extensively on its own, as the service became established in the market and the minds of the public as ‘The Party Bus’”.

28. Garrett 1 explains that:

Whilst other operators were also in the marketplace, the public identified strongly with the Trade Mark and the brand “The Party Bus” and sought out the business and its services by reference to the Trade Mark.  This led to the Former Owner subcontracting the use of buses with other bus owners.  In such situations, the bus may not have been branded on the outside but would be provided with a Tour Operator wearing a uniform branded with the Trade Mark and the bus would be fitted out internally with lights and music to match or approximate the buses run by the Former Owner.

29. Garrett 1 declared that the opponent’s trade mark has been used in the following ways:

§     painted on the buses;

§     staff uniforms;

§     used in the welcome address  by the tour operator;

§     printed on vouchers and the “VIP passport” given to customers;

§     printed on a variety of marketing merchandise;

§     featured on a wedding show on television (c. 1996);

§     advertising in magazines;

§     advertising in the Yellow Pages directory;

§     printed on business cards;

§     on the website, start="30" type="1">

Garrett 1 explained that in October 2000, he registered a Victorian business name, “Action Tours” with the intention of trading as a bus driver / operator available on contract to companies like The Party Bus (Aust) Pty Ltd.  In November 2000 he had one bus “decorated with the painted slogan ‘Action Tours’” and sometime in 2002-3 he began contracting his services to The Party Bus (Aust) Pty Ltd.  Garrett 1 stated that he conducted that business under the name “Action Tours” and that he wore an “Action Tours” uniform.  From his evidence, it seems that each bus is manned by two or more people and Garrett explained that The Party Bus (Aust) Pty Ltd employees would wear their own uniforms bearing “The Party Bus” if they helped man his bus.

31. Much of the physical evidence is undated or would not have carried a date. There are trinkets such as keys rings and free merchandise such as stubby holders which are naturally undated.  There are advertisements for the opponent’s services in wedding and bridal magazines, but none show their publication dates, nor is there an attempt in the declaratory statements to place them in time.   Evidence which nonetheless clearly suggests itself to date from the period prior to the sale agreement regularly shows use of the expressions “Mega Bus” or “Mega Bus Tours – The Party Bus”.

32. The business card of Craig Davis which is exhibited to Garrett 1 shows use of the words “The Party Bus” on its face, along with two instances of the use of “Mega Bus Tours”.  On its obverse side, it has the prominent words “Mega Bus Tours – The Ultimate Mobile Party” followed by the contact information (telephone number and address) of Mega Bus Tours. 

33. The advertisements from bridal magazines or from the Yellow Pages directory which show use of the words “Mega Bus Tours”, include beneath, the words “The Party Bus”.  Some of those advertisements also feature the slogan, “The World Famous Party Bus”.  Where advertisements include a photograph, rather than cartoon image of the bus, there is on the front of the bus and in the location where a public service bus would show its destination, the words “Mega Bus Tours” and - once more below, in smaller, stylised font, the words “The Party Bus”.

34. There is no evidence that Davis or The Party Bus (Aust) Pty Ltd was the owner of a business name “Mega Bus Tours”.  The particulars of sale refer to the similar business name, “A Amega Bus Tours”.  The company name, The Party Bus (Aust) Pty Ltd, does not appear in much of this evidence.  That may be so because the evidence predated the formation of The Party Bus (Aust) Pty Ltd, but that is speculation.  What is nonetheless clear is that the trading name “Mega Bus Tours” is performing a trade mark function in much of the evidence before me.  That is not to say that the expressions “The Party Bus” or “Mega Bus – The Party Bus” may not also have a claim to trade mark status, but that is a question which I have deliberately left to one side for the moment.

35. The opponent’s remaining evidence does not take its case much further forward.  Nevertheless, four points deserve to be made.  Firstly, there is a percentage of advertisements which feature only the words “The Party Bus” and give a telephone number, email and the website addresses.  Since none are dated, they are of limited assistance to me.

36. Second, the “Wayback Machine” internet archive facility has been used by the opponent to generate archive pages from the website from December 2001 onwards but once more many of those pages show the buses themselves to feature the words “Mega Bus Tours-The Party Bus” in the manner previously described.  It can be seen, however, that use of “The Party Bus” on its own becomes more regular as time moves on, I would say during 2005 and 2006.

37. Third, the opponent has put into evidence three letters which talk of the use of “The Party Bus” by Mr Davis, but I must bear in mind that the statements are unsworn and come from those with whom Mr Davis had a business relationship.

38. Fourth, the opponent argued that the reputation of its business under the name “The Party Bus” extended beyond Melbourne because of the wider circulation of the magazines in which it advertised and because of the website which had been in existence since late 2001.

(iii) use after the Sale Agreement

39. The opponent claims that it has itself used the words, “The Party Bus” since   6 February 2006.  The 2006 turnover of the business is said to be a “significant sum” but since no figures are given it is unclear how to gauge that claim or how to assess what measure of that business could be ascribed to the relevant period between the sale agreement and the priority date, that is, from February 2006 to May 2006.  Again, the examples of use provided in evidence are either undated, or they postdate the priority date. 

(iv) third  party use

40. To my mind, the expression “party bus” is one which other traders, without improper motive, might wish to use to describe the same sort of class 39 services nominated in the trade mark application.

41. The applicant adduced evidence which supports that intuition.  It produced a copy of the entry for “party bus” from Wikipedia:

A party bus (also known as a Party Ride, limo bus, limousine bus or luxury bus) is a large motor vehicle designed to carry 10 or more people. Party buses are usually driven by chauffeurs.

Party buses offer seating capacities from 10 to 50 passengers. In most cases these are converted van or mini-bus chassis with some conversions done using urban coach or motor coach chassis. Amenities may include upgraded electrical systems, fast idle controller, AM/FM stereo with CD player, power/heated remote control mirrors, power door locks and windows, upgraded seats and fabric, stripper-poles, air actuated passenger entry door, video and audio systems, luggage partitions, back-up cameras, seat and fabric upgrades, smoke machines, laser lights, disco lights, strobe lights, on-board restroom, ADA equipment and a large array of floor plans to suit varying transportation needs.

Party buses are primarily used for, although not limited to, weddings, proms and bachelor and bachelorette parties as well as round trips to casinos, nights on the town, personalized drop offs and pick ups at various bars and nightclubs, birthdays and city tours.

While some party buses are used for week long tours and events, most are used for day trips and events. Most party buses, however, operate as livery vehicles, providing more accessible competition to limousines and taxicabs.

42. The applicant submitted that the Wikipedia entry was consistent with Garrett 1’s declaration, where he described: 

The buses which Mr Davis and the Former Owner used to carry out their business, would typically have flashing lights, music and seating styled to allow people to comfortably socialize, such as “club style seating” (booth style with four seats facing each other) and “perimeter seating” to allow space on the dance floor.  The buses were designed to support the idea that the bus was a venue or destination in itself for relaxing and entertaining…” 

43. No matter how else the expression “The Party Bus” was used, there is ample evidence that the opponent itself used the words “party bus” descriptively.  Garrett 1 describes how “[T]he Opponent was pleased to purchase the biggest Party Bus company in Victoria.”  The particulars of the sale agreement describe the business as “Party Bus Tours and Charters”.  Garrett 1 included advertising material stating that “The Party Bus is also an ideal way to get to and from your School Formal or Debutante Ball”.

44. The applicant’s evidence of third party use of “Party Bus” showed entries in the 2005 Yellow Pages directory for:

●AAABOOZE BUS “2005/2006 PARTY BUS OF THE YEAR”;

●AAABRISTOCAT PARTY TOURS – “PARTY BUSES” with Dance Floor;

●AAABudget Party Buses,

and in the 2006 Yellow Pages directory for:

●AAAABGO GET AROUND TOURS “PARTY BUS”

45. Numerous other similar examples were given from other Australian State business name registers, business directories and from the ASIC companies register.

Conclusions

46. The opponent’s claim to use and reputation in the words “The Party Bus” can be broken down into three phases: the period before the incorporation of The Party Bus (Aust) Pty Ltd in November 1997; the longest period between that incorporation and the sale agreement in January 2006; and the most recent short period between the sale agreement and the priority date.

Phase I

47. The opponent laid claim to the words and trade mark “The Party Bus” from November 1995.

48. Garrett 1 declared (i) that in November 1995 Jeffrey Fletcher registered the business name, “The Party Bus”; (ii) that from November 1995 until some unknown date Fletcher had a business relationship with a Craig Davis; (iii) that the business was incorporated as The Party Bus (Aust) Pty Ltd two years later, and (iv) that Craig Davis was appointed a director of that company.

49. Although the business name was first registered in Fletcher’s name, Garrett 1 declares that Davis “coined the trade mark”.

50. The ASIC company extract for The Party Bus (Aust) Pty Ltd shows that Fletcher was not appointed a director of the company alongside Davis.  Nor did he later become an officer of the company.

51. In the absence of better evidence, it would be open to me to infer that (i) Fletcher was the first person to stake rights in the name, and (ii) that from a time before incorporation of The Party Bus (Aust) Pty Ltd on 19 September 1997, Fletcher had nothing more to do with the business.

52. There is no evidence as to what property vested in the company.  All the evidence shows is that the Victorian business name registration was transferred to the company on 29 September 1997, soon after its incorporation.  Nothing can reliably be said of trade mark rights or goodwill.

53. In terms of the probity of the evidence of this period, Garrett 1’s account of the use of the words “The Party Bus” refers throughout to Jeffrey Fletcher, but the Victorian business names register extract shows that the registration was made to a Jeffrey Fletcher Findlay.

54. The most benign construction I can put on this evidence is that there was a simple mistake in the Garrett 1 declaration, or perhaps in the official records; the least favourable interpretation is that Mr Garrett has no genuine knowledge of the ownership, control or use of the name during this period. 

Phase II

55. The sale of business by the company in 2006 is also troubling. There is no evidence as to what was sold or transferred and no explanation offered for the omission of the body of the sale agreement.

56. The purchaser was not the opponent, but Garrett and his wife, Alison.  There is no mention of Action Tours Pty Ltd.  Whatever was purchased by the Garretts was not purchased by the opponent. Arguably, the opposition might have properly been made in all names.

57. The business name was nonetheless transferred to the opponent on 3 February 2006, consistent with the timing of the sale, but once more, nothing can reliably be said of trade mark rights or goodwill.

Phase III

58. Whatever the opponent acquired by way of the contract of sale, it did so a mere four months before the priority date. 

59. There are indications that even after the sale agreement, the opponent continued to use its own business name “Action Tours” in conjunction with the words “The Party Bus”.

60. Use of the words “The Party Bus” by the opponent company itself after the sale is described only as substantial and is not supported by physical evidence of any weight.

Generally

61. It is not enough to decide reputation in a vacuum.  Reputation might be localised, it might hinge on the nature of the services, it might develop quickly or slowly depending on the services, it will be linked to the qualitative nature of the trade mark itself.  In this case, those factors are all of relevance.

62. In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 at 234, Lockhart J said:

[R]eputation…may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

63. In McCormick & Co Inc. v McCormick (2000) 51 IPR 102, Kenny J. said at page129:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

64. I am sensitive to the opponent’s submissions that the market for “event” services (as it was described to me) is localised and that reputation should be assessed in a way which takes that into account.  It was stressed that services of this kind tend to be confined to local capital city and regions and it was underscored that there had been no evidence of national operations of the kind.

65. I am reminded of what was said in the Miki Shoko Co Ltd case (cited in Equity Access above) that in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person's business.  Moreover, in Le Cordon Bleu BV v Cordon Bleu International Ltee, op. cit.,  it was said that a:

‘significant’ [reputation] will depend on the nature of the goods or services in question. For highly specialized products, awareness amongst a few thousand persons, or even less might be sufficient.

66. The opponent in this case faces an added hurdle since it claimed reputation in what are descriptive words, but other protagonists have faced that obstacle.  In the interlocutory application for passing off reported in Select Personnel Pty Ltd v Morgan & Banks Pty Ltd (1998) 12 IPR 167 at 171, McLelland J. accepted that there was a serious case to be tried:

Although the evidence of the plaintiff’s reputation is scanty, it is sufficient to suggest that at a final hearing the plaintiff may well be able to establish that it has a substantial reputation, at least in Sydney, associated with the name “Select Personnel” in the field of employment procurement.

67. That said, this is not an application for interlocutory relief but a trade mark opposition where the opponent bears the onus of proof.  A narrow view might be taken that the opponent had not established a predecessor in business and could only rely on that evidence from 2006 and before the priority date which clearly showed use of “The Party Bus”.  Limited in that manner, the opponent would fail utterly.  A broader view, which overlooks the flaws in the opponent’s stake to the name “The Party Bus” since 1995, is still beset by the quantitative and qualitative limitations to the evidence of reputation.   There are none of the usual indicia of reputation through use – turnover figures, promotional expenditure, and the like, especially unhelpful when the expression the subject of the claimed reputation is so evidently descriptive.  Contrary to the opponent’s claim, there is no evidence of any kind that the public, or even a sector of it, recognised the name as belonging to the opponent.  Finally, for the most part, the use of “The Party Bus” has been in close association with other terms competing for trade mark competence such as “Mega Bus” or “Mega Bus Tours” or “Action Tours”.

68. The most reliable evidence appears to be Mr Garrett’s statement that the expression “The Party Bus” was initially used in conjunction with the words “Mega Bus” i.e. “Mega Bus Tours – The Party Bus”, but that:

gradually, the expression was used more and more on its own as the service became established in the market and the minds of the public as ‘The Party Bus’.

69. That evidence is corroborated by the archive website pages and, in something of an unscientific fashion, the opponent’s physical evidence unfolds that way, notwithstanding the lack of a clear chronology.  The best guess that can be made is that the transfiguration of the usage from ‘Mega Bus Tours – The Party Bus’ to “The Party Bus” on its own occurred from sometime in 2005. 

70. Having made allowance for all considerations I am still not drawn towards the view that the opponent has anything like the reputation required to show that:

§    at the priority date, the opponent’s trade mark had a reputation of the kind and extent which would create a real and tangible danger of deception or confusion amongst persons who are potential users of the services claimed in the opposed application;  or that

§    at the priority date, the use of the trade mark by the applicant in respect of the nominated class 39 services would be misleading or deceptive, or likely to mislead or deceive, and/or would suggest some sponsorship, approval, affiliation or association with the opponent or its services which the applicant does not have.

41. I find that the opponent has not established either ground of opposition.

Decision

42. Section 55 of the Act provides:

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application; having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note: For limitations see section 6.

43. I find the opposition unsuccessful. Accordingly, I direct that the trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

44. The applicant is entitled to costs at the official scale.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

28 July 2008

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