Bad Boys Entertainment Pty Ltd v Tomi Savic and Trent Woolley

[2022] ATMO 219

TRADE MARKS ACT 1995

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

Re:Opposition by Badboys Entertainment Pty Ltd to registration of trade mark application number 2141874 (class 45) – Bad Boys Male Entertainment – in the name of Tomi Savic and Trent Woolley

Delegate:

Tracey Berger

Representation:

Opponent: Chris Chow Creative Lawyers Pty Ltd

Applicants: Self represented

Decision:

2022 ATMO 219

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 43, 58 and 60 considered – no grounds established – trade mark to proceed to registration

Background

1.     This is a decision on the opposition by Badboys Entertainment Pty Ltd (‘Opponent’) to registration of the trade mark Bad Boys Male Entertainment (‘Trade Mark’) under Australian trade mark number 2141874 (‘Application’) filed on 19 December 2020 in the name of Tomi Savic and Trent Woolley (‘Applicants’) in class 45 for “Adult services (brothels, escort agencies, massage parlours)” (‘Applicants’ Services’).

2. After examination under s 31 of the Trade Marks Act 1995 (Cth),[1] the Trade Mark was accepted for registration and advertised for opposition on 13 July 2021.  On 16 July 2021, the Opponent filed a Notice of Intention to Oppose and Statement of Grounds and Particulars (‘SGP’).  The Applicants filed a Notice of Intention to Defend on 6 October 2021.

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

3. The parties were afforded the usual opportunity to file evidence in accordance with Part 5 of the Regulations. The Opponent did not file any evidence in support of the opposition. On 15 April 2022, the Applicants filed evidence in answer (‘EIA’) and the Opponent lodged its evidence in reply (‘EIR’) on 9 August 2022.

4.     Following the conclusion of the evidence stages, the parties were given the opportunity to be heard.  The Opponent requested a decision without a hearing and this matter has been assigned to me as a delegate of the Registrar of Trade Marks.

Preliminary matter

5.     The Opponent did not lodge any evidence in support of the Opposition but filed EIR.  This raises a question of procedural fairness in that the Applicants have not had an opportunity to respond to the EIR. 

6.     Evidence in reply should be confined to rebutting the Applicants’ case and should not raise matters that should have been the subject of evidence in support.[2]   Much of the information contained in the EIR is not directly responsive to the EIA.

[2] Sonus Pharmaceuticals Inc v Allian Pharmaceutical Corp and Schering AG [2001] APO 13; Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (Thomson Reuters, online 7^th ed, 2022), [15.1910].

7.     However, under reg 21.15(4), the Registrar is not bound by rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate. Under reg 21.19, the Registrar may propose to take into account information that is relevant to proceedings.  Therefore, whilst the EIR is not strictly evidence in reply, and for the reasons set out below, does not establish the opposition on the grounds particularised in the SGP, I have had regard to information contained in the EIR where appropriate.

Grounds and Onus

8.     The SGP nominates grounds of opposition under ss 43, 58 and 60.

9.     The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[3] The rights of the parties are assessed as at 19 December 2020 being the filing date and priority date of the Application (‘Relevant Date’).[4]

Evidence

[3] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Opponent’s Evidence

10.   The Opponent’s evidence consists of a declaration of Menno Van Kampen, Managing Director of the Opponent, made on 29 July 2022, with Exhibits 1-9.  

11.   The Opponent established a male entertainment business at the Gold Coast in 2002 which has provided live male dance performances since 2004 under the mark BADBOYS AUSTRALIA.  The BADBOYS AUSTRALIA group has extensively toured Australia on an annual basis and performed internationally since its establishment.

12.   Initially Mr Van Kampen operated the business as a sole trader and registered the business name Badboys Australia on 15 June 2009.  He subsequently registered the business name Badboys Australia Entertainment on 22 September 2019 before changing from a sole trader to a company, incorporating Badboys Entertainment Pty Ltd on 30 January 2020.

13.   On 24 March 2004, Mr Van Kampen applied for and registered the mark under Australian trade mark number 993229 in class 41 for ‘live male dance performances’.  The Opponent attests that he “inadvertently let the trade mark lapse” and this registration was removed from the Register in 2014 because it was not renewed. 

14.   The Opponent registered the domain name on 28 May 2003 and established a website at this address in 2012.  On 15 October 2012, the Opponent established a Facebook account under the name ‘badboysaustralia’.

15.   On 17 February 2021, the Opponent filed and registered the mark  under trade mark number 2156592 in classes 35 and 41.

16.   Mr Van Kampen claims in the SGP that there has been consumer confusion between the Opponent’s business and that of the Applicants.  The Opponent claims that the confusion arises over use of the similar marks, the Applicants offering the same services as the Opponent (and not the services claimed in the Application), the Applicants employing some of the Opponent’s performers and using the Opponent’s photos of those performers on the Applicants’ website and social media. 

Applicants’ evidence

17.   The Applicants’ evidence consists of a declaration of Trent James Woolley made on 28 April 2022.

18.   Mr Woolley declares that in November 2020, the Applicants registered the business name Bad Boys Male Entertainment after conducting “proper due diligence” to ensure that there were no similar registered business names.  After registering this business name, the Applicants proceeded to set up the business to operate under the Trade Mark including establishing social media accounts, a website, Google Ad Words accounts and Google My Business listing and filing the Application.

19.   The Applicants claim that they are unaware of any confusion with the Opponent’s business.

Discussion

Section 58

20.   Section 58 provides that a trade mark may be opposed on the grounds that the Applicant is not the owner of the Trade Mark.

21.   In the SGP, the Opponent relies on its use of Badboys Australia since 2004 for a male entertainment group which has acquired a widespread reputation nationally and internationally.

22.   To succeed in this ground of opposition, the Opponent must establish the following:

i.The Trade Mark is identical, or substantially identical, to an earlier trade mark;

ii.The earlier trade mark has been used in respect of good or services that are ‘the same kind of thing’ as the Applicants’ Services;[5] and

iii.Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[6]

[5] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

[6] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ).

23.   The test for whether two marks are substantially identical was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]

[7] [1963] HCA 66; (1963) 109 CLR 407, 415.

24.   In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd, the Full Federal Court held that in determining whether two marks are substantially identical, the comparison is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements.[8]

[8] [2017] FCAFC 83, [51]-[52] (Greenwood, Jagot, and Beach JJ).

25.   The Opponent relies on its use of Badboys Australia (‘Opponent’s Mark’) for entertainment services in particular, live dance performances by a male entertainment group (‘Opponent’s Services’).

26.   Accordingly, the comparison of marks in this instance is between Badboys Australia and Bad Boys Male Entertainment.  In each case, the essential element is Badboys / Bad Boys and the other elements in each mark are non-distinctive.  The difference in presenting Badboys as one word or two words is immaterial.[9]    I am satisfied that the Opponent’s Mark is substantially identical to the Trade Mark.

[9] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 68, [63] (Gummow J).

27.   I turn now to a consideration of whether the Opponent’s Services are the ‘same kind of thing’ as the Applicants’ Services.  In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd,[10] the Full Federal Court considered that the test for whether two sets of services are the ‘same kind of thing’ involves a consideration of whether the services are “true equivalents”.

[10] [2017] FCAFC 56, [332] (Greenwood, Besanko and Katzmann JJ).

28.   As noted above, the Opponent’s Services are live dance performances by a male entertainment group.  The Opponent claims that the Applicants provide the same services but this is not relevant to the present matter.  The question for me is whether the Applicants’ Services are the ‘same kind of thing’ as the Opponent’s Services and in my view, they are not.  “Adult services (brothels, escort agencies, massage parlours)”, being the Applicants’ Services, are not the same as live dance performances.  Brothels, escort agencies and massage parlours do not usually offer dance performances and consumers looking to attend a live dance performance would not instead attend a brothel, escort agency or massage parlour.  The nature and characteristics of the two sets of services are different.

29.   The s 58 ground of opposition is not established.

Section 60

30.   Section 60 provides:

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

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

(a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.

31.   To be successful under this ground of opposition, the Opponent must establish a reputation in a trade mark in Australia at the Relevant Date such that use of the Trade Mark is likely to deceive or cause confusion.

32.   The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[11]Stated another way, the reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers.[12]

[11] [2000] FCA 1335, [81].

[12] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

33.   In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[13]

[13] [2019] FCA 923, [83] (O’Bryan J).

34.   The reputation of a trade mark may be demonstrated in various ways including by demonstrating a significant number of people are exposed to a trade mark.[14]    In practice, it is commonplace to infer reputation from a high volume of sales,[15] together with substantial advertising expenditures and other promotions.[16]

[14] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [118] (Lockhart J).

[15] McCormick (n 11), [86].

[16] Ibid.

35.   Reputation cannot be assumed and must be established by the Opponent as a matter of fact.[17]  

[17] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

36.   The Opponent has not provided any details about the nature and extent of its use of the mark Badboys Australia such as approximate annual revenue, advertising expenditure, details of the number of performances annually or visits to its website.  From the Opponent’s evidence, it is not possible to conclude that the Opponent had a reputation in its mark at the Relevant Date.  Accordingly, the s 60 ground of opposition is unsuccessful.

Section 43

37.   Section 43 is reproduced below:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

38.   To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question ... [18]

[18] [2006] FCA 1663, [53].

39.   In Winton Shire Council v Lomas, Spender J noted:

Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[19]

[19] [2002] FCA 288, [19].

40.   This ground is particularised in the SGP as follows:

Menno van Kampen became aware of the existence of Bad Boys Male Entertainment after confused clients contacted him about bookings for Bad Boys Male Entertainment, convinced that they had made a booking for Badboys Australia for a performance.  Both marks contain exactly the same words BAD BOYS which causes confusion in the minds of consumers about the origin of the services; Both marks are used to identify similar services namely adult entertainment by a male group; both marks target the same market sector and audience and because of the reputation of Badboys Australia there is a connection in the mind of the buying public between Badboys Australia and Bad Boys Male Entertainment.  The connotation between the two marks is obvious, direct, and immediate and within the trade mark itself.

41.   The use of and any reputation in the Opponent’s Mark is not of relevance under s 43.  In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of any reputation that the Opponent may be able to demonstrate in its own mark or confusion between the Trade Mark and a trade mark used by the Opponent.

42.   I am not satisfied that the Trade Mark has an inherent connotation which is likely to cause confusion or deception.  Therefore, the s 43 ground of opposition is not established. 

Decision

43.   Section 55 relevantly provides:

55  Decision

(1)  Unless subsection (3) applies to the proceedings, 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.

44.   The Opponent has not established a ground of opposition.  Accordingly, trade mark application number 2141874 may proceed to registration not less than one month from the date of this decision.

45.   If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.

46. The Applicants have requested an award of costs. The usual rule is for costs to follow the event. I award costs against the Opponent in accordance with s 221, in the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

14 December 2022