Bing Boy IP Pty Ltd v Bing Go Street Food

[2016] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by Bing Boy IP Pty Ltd to registration of trade mark application 1610104(43) - BING GO + DEVICE - filed in the name of Bing Go Street Food.

Delegate:	Cristy Condon
Representation:	Opponent: Megan Ryder of Madderns Patent and Trade Mark Attorneys Applicant: Virginia Beniac-Brooks of Marks & Clerk Australia Patent & Trade Mark Attorneys
Decision:	2016 ATMO 55 Trade Marks Act 1995 (Cth) - Section 52 opposition – s 44 considered - grounds established – registration refused

Background

1. On 7 March 2014 Bing Go Street Food Pty (‘the Applicant’) filed an application under the Trade Marks Act 1995 (Cth) (‘the Act’) to register the following trade mark:

   Trade Mark no.:     1610104

   Trade Mark:           (‘the Trade Mark’)

   Filing Date:             7 March 2014

   Services:                  Class 43: Restaurant services; cafe and snack bar services;   take away food and drink services; providing food and drink
   
   

2. Following the Applicant’s request to expedite the examination of the Trade Mark[1] application it was examined and on 31 July 2014 it was advertised as accepted for possible registration in the Official Journal of Trade Marks. 

   [1] Request received by the Trade Marks Office on 13 March 2014.

3. On 29 September 2014 Bing Boy IP Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark,[2] and on 29 October 2014 it filed a Statement of Grounds and Particulars (‘the SGP’), which particularised the grounds of opposition under ss 44, 60, 42(b), 58 and 62A of the Act. On 21 November 2014 the Applicant filed a Notice of Intention to Defend (NID) the opposition and the evidence stages commenced.

   [2] As provided for under s 52 of the Act.

The Evidence

1. The Opponent filed evidence in support (‘EIS’) of its opposition on 10 March 2015.  This evidence consists of:

   The Opponent’s Evidence in Support

   Declaration by Ming Liang Ma made on 6 March 2015, with Exhibits MJM1 to MJM 31 (‘the Ma declaration’); and,

   Declaration by Kin Seong Leong made on 10 March 2015, with Exhibits KSL1 to KSL2 (‘the Leong declaration’).

2. The EIS concludes the evidence filed by the parties.  The Applicant has not filed any evidence or engaged in these proceedings since filing the NID. 

3. Following completion of the evidence stage the parties were given the opportunity to request a hearing and/or file written submissions.  On 28 September 2015 the Opponent requested a hearing. 

4. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition pursuant to s 55 of the Act which provides that, 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.

5. The hearing was allocated for 15 June 2016 and communicated to the parties via email.  On 8 June 2016 the Opponent confirmed that it would not be attending the hearing and that it would not be submitting any written submissions.  The Applicant remained silent.  On 14 June 2016 I notified the parties by email that I had cancelled the oral hearing and that I would proceed to decide the opposition to the registration of the Trade Mark based on the written record which consists of the Opponent’s EIS. The written record contains the following information about each of the parties:

The Opponent

1. The Opponent operates a business providing food and drink services which was established in 2011.  The business rapidly expanded and the Opponent now has 34 restaurants operated under its trade marks (to which I will refer to later in this decision).  The Opponent manages a chain of franchised restaurants and pursuant to the franchise agreements, the Opponent licenses its trade marks to third parties.

The Applicant

1. Exhibits MLM27 and MLM28 (which are attached to the Ma declaration) contain printed copies of emails between the parties as well as an Australian Securities and Investment Commission (ASIC) company extract of the Applicant.  This evidence shows that one of the Applicant company directors is also one of three directors of Mo’s Mobiles which claims to be an exclusive distributor of Vodaphone products and services.  These emails are dated from March 2013 to December 2013 and the contents show that this director was enquiring into a franchise opportunity with the Opponent.

Relevant date and onus

1. The rights of the parties are to be determined as at the date of application which is typically the filing date.[3] The relevant date in the current matter is 7 March 2014. The Opponent bears the onus of establishing a ground of opposition,[4] and should one ground be established there is no requirement that I discuss any other ground of opposition. The standard of proof is the ordinary civil standard of the balance of probabilities.[5] As will become apparent, the Opponent has successfully established a ground of opposition under s 44.

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; the Act ss 6, 12, 72.

   [4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

   [5] Pfizer Products Inc v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

Discussion and Reasons

1. Section 44 of the Act relevantly provides:

   Identical etc. trade marks

   (1)…

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or      closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related             goods is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of               the applicant’s services is not earlier than the priority date for the registration of           the other trade mark in respect of the similar services or closely related goods.

2. The question under s 44(2) deals with competing rights in relation to statutorily protected trade marks. This subsection is self-regulating that is, it should be decided without any consideration of the Trade Marks use in the Australian marketplace. Instead the decision of the delegate is based on the delegate’s nominal consideration of the trade mark/s which the Opponent has nominated in the SGP.

3. In pursuit of this ground the Opponent has nominated two of its registered trade marks (‘the Bing Boy trade marks’).  Details of these follow:

   Trade Mark No.: 1420450

   Trade Mark: 

   Filing/priority date: 21 April 2011

   Owner: Bing Boy IP Pty Ltd

   Goods & Services:

   Class 43: Providing food and drink; takeaway food and drink services; restaurant services; catering services; all the aforementioned excluding the provision of coffee and coffee drinks

   Trade Mark No.:1589166

   Trade Mark: Bing Boy

   Filing/priority date: 1 November 2013

   Owner: Bing Boy IP Pty Ltd

   Goods & Services:

   Class 43: Providing food and drink; takeaway food and drink services; restaurant services; catering services; all the aforementioned excluding the provision of coffee and coffee drinks

4. Under s 44 an Opponent must first establish that the trade mark which it relies upon has an earlier priority date than the Trade Mark. Secondly, it must establish that this trade mark claims services of the same description, or closely related goods to those services claimed in the Trade Mark specification.[6]  Thirdly, it must establish that this trade mark is substantially identical with, or deceptively similar to, the Trade Mark. 

   [6] Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499.

5. To begin with I note that the priority dates of all of the Bing Boy trade marks predate 7 March 2014[7] and, for brevity, I note that the class 43 services claimed in the Trade Mark are the same, or of the same description, as the class 43 services for which Bing Boy trade marks 1420450 and 1589166 are registered.[8] 

   [7] The relevant date.

   [8] Section 14 of the Act.

6. I turn now to decide whether the Trade Mark is substantially identical or deceptively similar to the Bing Boy trade marks.

7. The test for determining substantial identity involves a side-by-side comparison of the relevant trade marks and is discussed in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’)[9] and more recently in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited[10] Flick J quoted Windeyer J in Shell at [43]:

   In order to determine whether marks are "substantially identical", they should thus be compared side by side with their similarities and differences noted: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [38], [1999] FCA 1721; 96 FCR 107 at 121. Black CJ, Sundberg and Finkelstein JJ there observed that the similarities and differences should be noted and the importance of these similarities and differences assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

   [9] (1961) 109 CLR 407 (at 414-415)

   [10] E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 (at 43).

8. In a side-by-side comparison, I am satisfied that the Trade Mark is not substantially identical to either of the Bing Boy trade marks.  Both of the Bing Boy trade marks include the common element ‘BING’ but they each have other noticeable differences.  Consequently, I decide that these additional differences render the Trade Mark insufficiently similar to the Bing Boy trade marks to find a total impression of resemblance between them.[11] 

   [11] Shell (at 414-415)

9. The concept of deceptive similarity is defined in s 10 of the Act:

   10 Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion

10. The test as to whether trade marks are deceptively similar is explained in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (‘Woollen Mills’). [12] Dixon and McTiernan JJ stated:

    [T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

    [12] (1937) 58 CLR 641 (at 658).

11. Thus, during my consideration of the s 10 definition and the test in Woollen Mills it will be necessary to firstly identify the memorable elements in the Trade Mark and the Bing Boy trade marks.

The Trade Mark

1. The Trade Mark consists of the elements ‘BING’, ‘GO’, a circular device and the descriptive words ‘Street food’ which are represented in a smaller font than the ‘BING’ and ‘GO’ elements. 

2. I consider the memorable elements in the Trade Mark to be ‘BING’ and ‘GO’ and to a much lesser extent the circular device. 

Trade mark 1420450

1. Trade mark 1420450 consists of many different elements.  The most memorable of these I consider to be the word ‘BING’ and to a lesser extent the concentric circular device surrounding a semi-circle, and the word ‘BOY’.  This Bing Boy trade mark also includes the descriptive words ‘urban Asian street food’.

Trade Mark 1589166

1. Trade mark 1589166 is BING BOY.  I consider the most memorable element in this trade mark is the word ‘BING’.  It is the leading element.[13]  However, this is not to suggest that the ‘BOY’ portion of the trade mark will not be remembered by potential purchasers.

   [13] London Lubricants (1920) Limited's Application (1924) 42 RPC 264, line 30; and Enoch’s Application, (1947) 64 RPC 119.

2. According to the Opponent’s evidence: in China ‘Jian Bing’ describes a street food being a very thin pancake.[14]

   [14] Ma declaration Exhibit MLM3.

3. The fact that relevant trade marks may contain an element of descriptiveness does not change the test of deception or confusion under s44. I refer to Maugham J in the ‘Kleenoff’ case[15] at 144:

   My view is that the test of infringement where the mark has a descriptive element is the same as the test where it has no descriptive element except so far as the descriptive element is itself common to the trade.

   [15] Bale & Church Limited v Sutton Parsons & Sutton and Astrah Products (1934) 51 RPC 129.

4. See also the ‘Ustikon’ case,[16] where Sargant LJ remarked:

   And though it may be urged that this (confusion) would be at least partly due to the adoption by the Plaintiff of a mark to describe a quality of the goods which is common to both sets of goods, I do not think that this common element sufficiently explains or justifies the similarity in name.

   [16] Davis v. The Sussex Rubber Co. Ld., (1927) 44 RPC 412,425.

5. I consider the word ‘BING’ is memorable in the context of the provision of food and drink (including a takeaway service and restaurant/cafe and catering services). 

6. Further, it is well established that trade marks may contain differences but a s 44 ground of opposition may succeed when the trade marks contain the same idea.[17]  I refer to Wilcox J in Dial An Angel Pty Ltd v Sagitaur Services Systems Pty Ltd[18] (‘Dial an Angel’) where the Honourable Justice was considering a trade mark infringement case and it was held that while the words DIAL-AN-ANGEL and GUARDIAN ANGEL were not deceptively similar, the pictorial elements in each consisted of a representation of an angel with children, although different in detail, were held to be deceptively similar due to “the idea of the mark” and the similar impression created by them.[19]

   [17] Jafferjee v. Scarlett, [1937] HCA 36; (1937) 57 CLR 115.

   [18] (1990) AIPC 90-687.

   [19] See also: de Cordova v Vick Chemical Co,. (“VapoRub” case) (1951) 68 RPC 103, Jafferjee v. Scarlett, (1937) 57 CLR 115; Cooper Engineering Company Pty Ltd v Sigmund Pumps Limited (“Rainmaster” and “Rain King”) (1952) 86 CLR 536.

7. That said, I shall decide the question of whether the Opponent’s Bing Boy trade marks are deceptively similar to the Trade Mark separately because I consider that there is a much stronger case for finding that deceptive similarity exists between the Trade Mark and the Bing Boy device trade mark (no. 1420450).

8. Concerning Bing Boy Trade mark 1420450, I am satisfied that it is deceptively similar to the Trade Mark.  Both trade marks share the common memorable element BING, a circular device and the words ‘street food’.  I note that the Trade Mark includes the word ‘GO’ but I am satisfied that this would lead to the mistaken impression that this element infers an exclusively takeaway service of the Opponent’s Bing Boy brand.  The additional material in the Trade Mark being ‘street food’ (which also appears in Bing Boy trade mark 1420450) aids in this likely mistaken impression by a potential consumer that the trade marks denote products from the same trade source.  Whist the Trade Mark might not be mistaken for the being the Opponent’s Bing Boy device mark I am satisfied that, for the reasons I have outlined above, the impression or recollection which is carried away and retained by a potential consumer would result in contextual confusion, that is, the differences between the trade marks are readily apparent to them but the presence of the common memorable element BING and the ‘idea’ of the trade marks still leads them to wonder whether they come from the same source.[20]  And, in the words of Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd:[21]

   …it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   [20] See for example Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159 at [145] where Nicholas J also cited the following cases: In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110 (JESTS and EASYJESTS) Tonka Corporation v Chong (1994) 29 IPR 253 (MONOPOLY and MUSICOPOLY) ; Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415 (YELLOW PAGES and YELLOWNET); and Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407 (CAT and LANDCAT).

   [21] (1954) 91 CLR 592 [595].

9. I am satisfied that the Trade Mark is deceptively similar to Bing Boy trade mark 1420450.

10. Concerning Bing Boy trade mark 1589166, I am not satisfied that this mark is deceptively similar to the Trade Mark.  Indeed, both of these trade marks contain the same memorable element ‘BING’ but I do not think that the Opponent’s Bing Boy brand retains its identity[22] in the Trade Mark, thus I am not satisfied that the presence of this memorable element would lead potential consumers to wonder if the two marks originated from the same trade source.[23] 

    [22] Enoch’s Application, (1947) 64 RPC 119, VIVICILLIN : CYLLIN and Darwin’s Application, (1946) 63 RPC 1, MOREX : REX.

    [23] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110.

11. Accordingly, the Opponents ground for opposition under s 44 is established in respect of Bing Boy trade mark 1420450. Consequently, it is unnecessary that I consider the remaining grounds, however, for brevity, based on the evidence I may well have found in favour of the Opponent under the grounds of bad faith. That said, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court for a de novo decision.

Decision and Costs

1. Pursuant to s 55 I decide to refuse trade mark 1610104 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 the disposition of the application should be in accordance with the Court’s order or direction.

2. The Opponent has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event.  I award costs against the Applicant according to the official scale as set out in Schedule 8 of the Trade Mark Regulations 1995.

Cristy Condon
Hearing Officer
Trade Marks Hearings
28 July 2016