Bonza Aviation Pty Ltd

[2022] ATMO 188

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 2217809 (classes 35 and 41) and 2253806 (classes 36, 39 and 43) – BONZA – in the name of Bonza Aviation Pty Ltd

Delegate:

Katrina Brown

Representation:

Applicant: Mindaugas Skavronskas of Norton Rose Fulbright

Decision:

2022 ATMO 188

Trade Marks Act 1995 (Cth) – ss 33 & 38 proceedings – s 41 – trade mark is to some extent, but not sufficiently inherently adapted to distinguish – evidence of use sufficient for some designated services – specification of TM 2253806 amended and trade mark accepted – acceptance of TM 2217809 revoked and returned to examination.

Background

1. This decision is in respect of ex parte proceedings pursuant to ss 33 and 38 of the Trade Marks Act 1995 (Cth) (‘Act’) concerning applications to register the following trade marks:

Trade mark number:	2217809	2253806
Trade mark:	BONZA (‘Claimed Mark’)
Applicant:	Bonza Aviation Pty Ltd (‘Applicant’)
Filing date:	11 October 2021
Designated services:	2217809 Class 35 – Organisation and management of airline frequent flyer programmes; online retail services Class 41 – Entertainment, cultural or sporting event booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme 2253806 Class 36 – Agency services for arranging travel insurance; Collection of payments Class 39 - Airline bookings; Airline check-in services; Airline ticket reservation services; Airline transport; Airline transportation services; Provision of information relating to airline scheduling; Travel reservation services for airline frequent flyer programmes; Holiday travel reservation services; Advisory services relating to travel; Agency services for arranging travel; Air travel services; Booking agency services for travel; Booking agency services relating to travel; Computerised reservation services for travel; Information services relating to travel; Provision of travel services from customer loyalty and frequent buyer schemes; Provision of travel services from frequent flyer schemes; Reservation services for booking seats (travel); Reservation services for travel; Seat reservation services for travel; Services for the arranging of travel; Services for the booking of travel; Ticket booking services for travel; Travel advisory services; Travel booking and reservation services provided in relation to a customer loyalty or frequent buyer scheme; Travel booking and reservation services provided in relation to a frequent flyer scheme; Travel ticket reservation services; Travel information services; Air cargo transport Class 43 - Arranging holiday accommodation; Arrangement of accommodation for holiday makers; Accommodation finding services for travellers; Travel agency services for booking accommodation; Travel agency services for making hotel reservations; Travel agency services for reserving accommodation; Travel agency services for reserving hotel accommodation (‘806 Designated Services’) (collectively ‘Designated Services’)

Trade mark number 2217809

1. This trade mark application was examined as required by s 31 of the Act. The examiner did not identify any grounds for rejection. The application was accepted on 11 December 2021.

2. However, on 10 January 2022 a delegate of the Registrar of Trade Marks issued the Applicant a notice proposing to revoke acceptance of the application pursuant to s 38 of the Act. The notice relevantly stated:

   The acceptance of the application has been reviewed and it is considered that the examiner should have raised grounds for rejecting the application rather than accepting it. Those grounds for rejection are as follows:

   Section 41: The word BONZA is a word that has ordinary and laudatory reference to the services and is a word other traders would want to use - being an obvious phonetic equivalent of “bonzer”, a colloquial term meaning excellent.

   Section 44: The word BONZA is the same as or similar to the following trade marks, and is for similar services: 968506 BONZA BRATS (class 35 retail vs your class 35 online retail services); 995830 BONZA BANK (class 35 range of specific retail services vs your class 35 online retail services); 1626412 BONZAR (class 35 range of specific retail services vs your class 35 online retail services); 1854721 BONZA PONY HIRE (class 41 amusement rides vs your class 41 entertainment booking services).

   Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance in accordance with section 38 of the Trade Marks Act 1995.

3. After receiving the notice, the Applicant requested to be heard in respect of whether acceptance of the application should be revoked based on s 41 of the Act. The Applicant did not seek to address the s 44 ground.

Trade mark number 2253806

1. This is a divisional application, the parent being trade mark number 2217809. Trade mark number 2253806 was examined and a ground for rejection was raised under s 41(4) of the Act as the examiner was of the opinion that the Claimed Mark was to some extent, but not sufficiently, inherently adapted to distinguish the 806 Designated Services. The ground for rejection was articulated in the first examination report as follows:

   Your trade mark is BONZA.

   The word BONZA is a word that has ordinary and laudatory reference to your services and is a word other traders would want to use, being an obvious phonetic equivalent of “bonzer”, a colloquial term meaning excellent.

   Other traders should be able to use BONZA, or something so nearly resembling it, in connection with goods or services similar to yours.

2. After the first examination report, the Applicant requested to be heard pursuant to s 33 of the Act.

3. The matters came before me, a delegate of the Registrar of Trade Marks, on 21 June 2022. Mindaugas Skavronskas of Norton Rose Fulbright made written and oral submissions on behalf of the Applicant. The following declarations were also filed on the Applicant’s behalf:

• Declaration of Lidia Valenzuela (Chief Financial Officer of Applicant) made on 14 June 2022 with Exhibit LV-1 and a Confidential Exhibit (‘Valenzuela Declaration’); and

• Declaration of Rita Lahoud (Norton Rose Fulbright) made on 14 June 2022 with Exhibit RL-1 (‘Lahoud Declaration’).

The relevant statutory provisions

1. Section 33 of the Act relevantly provides:

   (3) If the Registrar is satisfied that:

   (a) the application has not been made in accordance with this Act; or

   (b) there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   …

   (4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

1. Section 38 of the Act provides the Registrar with a discretionary power to revoke the acceptance of a trade mark application. Section 38 relevantly provides:

   (1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

   (a)    the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b)    it is reasonable to revoke the acceptance, taking account of all the circumstances.

2. Section 38 sets out a two-limb test. Firstly, I must be satisfied that the trade mark application should not have been accepted considering all the circumstances that existed at that time (regardless of whether the Registrar knew then of their existence). If there was a valid ground for rejection, clearly the trade mark application ought not to have been accepted. Secondly, I must be satisfied that it is reasonable to revoke acceptance taking account of all the circumstances. Both limbs of the test must be met for the acceptance to be revoked. The effect of revocation under s 38 of the Act is that the application is taken to have never been accepted and it is returned to the examination phase of the application process.[1]

   [1] Act s 38(2)(a) and (b).

3. Common to both the s 33 proceeding in respect of trade mark number 2253806 and the s 38 proceeding in respect of trade mark number 2217809, is the possible ground for rejection under s 41 of the Act.

Discussion

1. Section 41 of the Act relevantly provides:

   (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   …

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)This subsection applies to a trade mark if:

   (a)    the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)    the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)This subsection applies to a trade mark if:

   (a)    the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)    the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances.

2. The inherent adaptation of a trade mark is assessed:

   [B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[2]

   [2] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

3. This is a two-step process.[3] The first step is to identify the signification which the word ordinarily possesses (ordinary signification). The second step is to determine whether other traders might legitimately need to use the word for its ordinary signification in respect of their own similar goods and services.

Ordinary signification

[3] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

1. The ordinary signification is the ordinary meaning of the word to any person in Australia concerned with the Designated Services.[4]

   [4] Ibid [70].

2. The Claimed Mark is the plain word BONZA. The word ‘bonza’ is a recognised alternative spelling of ‘bonzer’, a colloquial term which is defined in the Macquarie Dictionary as ‘excellent; attractive; pleasing’. The interchangeable nature of ‘bonza’ and ‘bonzer’ is supported by media articles contained in Exhibit RL-1 to the Lahoud Declaration.

3. The Applicant does not contest that ‘bonza’ is a colloquial term for excellent. Rather the Applicant submits that ‘bonza’ is an archaic and obscure term which has fallen out of common use and therefore has no ordinary signification to the relevant class of consumers concerned with the Designated Services. In support of this, the Applicant has provided extracts from various dictionaries which characterise the words ‘bonza’ or ‘bonzer’ as dated, archaic and old fashioned. Additionally, Exhibit RL-1 to the Lahoud Declaration contains four articles which provide commentary on the decreasing use of colloquialisms.

4. The material before me suggests that the word ‘bonza’ has had its heyday. Whilst once part of the quintessential Australian vernacular, it is now used less frequently to the extent that it is characterised as dated and archaic. Nonetheless, there is a distinction to be drawn between an obsolete word[5] which no longer has an ordinary meaning in Australia and a once-often used word which still has an ordinary meaning to Australian consumers. My impression is that ‘bonza’ is in the latter category.

   [5] Allied Domecq v Carlton and United Breweries Limited [1997] ATMO 56.

5. The Applicant also highlights that ‘bonza’ has alternative meanings, specifically the name of an Australian variety of apple and a type of surfboard. The enquiry under s 41 is concerned with the ordinary signification to those concerned with the Designated Services. In my opinion, the ordinary signification of the word ‘bonza’ to persons in Australia concerned with the Designated Services is a colloquial term meaning ‘excellent’. This is reinforced by the Applicant’s own promotional campaign. The Valenzuela Declaration contains examples of the Applicant’s marketing on its website ( and on various social media platforms. The campaign has a distinct ‘Aussie flavour’ packed with fair dinkum colloquialisms such as ‘G’day’, ‘beaut’, ‘budgies’, ‘tucker’, ‘cossies’, ‘chocker’ and ‘arvo’. Contextually, the use alongside other colloquialisms reinforces that the ordinary signification of ‘bonza’ to an Australian consumer is the colloquial term for ‘excellent’.

6. I also note that the Designated Services are broad in nature and the target market is essentially any person over the age of 18, including older consumers who admittedly are likely to be the most familiar with ‘bonza’ as a colloquialism for excellent.

Other traders

1. Having determined the ordinary signification, the enquiry turns to whether other traders might legitimately desire to use the word ‘bonza’, or something so nearly resembling it, for its ordinary signification in respect of their own similar services.[6]

   [6] Cantarella Bros Pty Limited v Modena Trading Pty Limited (n 3) [71].

2. The Applicant submits that other traders do not need to use the Claimed Mark because at best it evokes an emotion without conveying any tangible idea. Additionally, the Applicant submits that there are a multitude of other terms meaning ‘excellent’ available to honestly motivated traders.

3. Neither assertion is persuasive. As discussed above, the ordinary signification of the Claimed Mark is that of the colloquialism for ‘excellent’. As such, the Claimed Mark conveys the tangible idea that the Designated Services are superior or remarkably good. Furthermore, s 41 is concerned with the nature of the trade mark itself.[7] The fact that there are other words that could be used to convey the same idea does not alter the non-distinctive nature of the Claimed Mark.

   [7] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15, [7] (Gibbs J).

4. The Applicant also draws my attention to the specialised nature of the Designated Services. The evidence before me demonstrates that the domestic passenger airline industry in Australia is a narrow and highly regulated market. Nonetheless, this is of little assistance to the Applicant because most of the Designated Services are broad and not specific or restricted to this narrow and highly regulated market.

5. In my assessment, the Claimed Mark is to some extent, but not sufficiently inherently adapted to distinguish the Designated Services.

6. I now turn to the evidence of use or intended use of the Claimed Mark filed by the Applicant.

Evidence of use or intended use

1. The Valenzuela Declaration states that the Applicant intends to launch a low-cost airline with 25 routes to 16 destinations across Queensland, New South Wales, and Victoria. To support this intention the Applicant has provided evidence of its application to the Civil Aviation Safety Authority and has also provided information in respect of leasing arrangements for aircraft, the number of current employees and projections as to future labour hire expenditure. Additionally, Exhibit LV-1 to the Valenzuela Declaration contains numerous third-party media articles discussing the launch of the Applicant’s new low-cost airline.

2. It is declared that the Applicant has used the Claimed Mark since October 2021 on the Applicant’s website, on various social media platforms, on application software and on signage in Australian airports. Exhibit LV-1 to the Valenzuela Declaration contains screenshots from the Applicant’s website captured on 11 October 2021 and 13 April 2022. These screenshots show some use of the Claimed Mark in relation to an airline. Similarly, the screenshots of various social media platforms show use of the Claimed Mark in relation to what appears to be the launch of an airline which will be offering flights within Australia.

3. Many of the examples put forward by the Applicant, such as the signage at Port Macquarie airport, only contain the word ‘bonza’ in the following stylised form:

1. Use of this stylised form will only constitute use of the Claimed Mark if the additions or alterations do not substantially affect the identity of the Claimed Mark.[8] In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) Dodds-Streeton J relevantly observed:

   the addition or subtraction of a prominent element to or from a mark which is capable of distinguishing only as a combination is likely to affect the identity of the mark.[9]

The addition of the thumbs up device element forming the letter ‘b’ forms a combination which is capable of distinguishing. Therefore, I do not consider use of this stylised form to assist the Applicant in demonstrating that the plain word ‘bonza’ does or will distinguish the Designated Services.

[8] Act, s 7(1).

[9] [2012] FCA 81, [112].

1. The Applicant has provided infographics and statistics from a media monitoring service. These statistics suggest that the Applicant has had considerable media exposure. However, from the information provided it is not clear to me what percentage of the media exposure relates to use of the Claimed Mark as opposed to use of the stylised form.

2. Taking into consideration the narrow and highly regulated nature of the domestic airline industry, and the fact that my overall impression of the evidence is that the stylised trade mark set out at [29] is being used, or intended to be used, as the badge of origin, I am only satisfied that the Claimed Mark is, or will be, capable of distinguishing the following services:

   Class 39 - Airline bookings; Airline check-in services; Airline ticket reservation services; Airline transport; Airline transportation services; Provision of information relating to airline scheduling; Air travel services; Air cargo transport

Conclusion in respect of trade mark number 2217809

1. For the reasons explained above, I am satisfied that there is a valid ground for rejection under s 41 of the Act. Therefore, I am satisfied that the application should not have been accepted taking into account all the circumstances that existed at that time.

2. Section 38 of the Act requires me to also be satisfied that revocation is reasonable, taking into account all the circumstances. The Applicant has not drawn my attention to, nor have I identified, any specific circumstances which might give me pause in finding it reasonable to revoke acceptance. The public interest, and the private interests of the Applicant, are best served by returning the application to examination and allowing the Applicant the normal and legitimate opportunity to overcome any ground for rejection that may be raised.

3. As such, I find that in all the circumstances it is reasonable to revoke acceptance of the trade mark application.

Conclusion in respect of trade mark number 2253806

1. When I weigh the evidence before me together with the extent that the Claimed Mark is inherently adapted to distinguish the Designated Services, the combined effect is sufficient to overcome the s 41(4) ground for rejection in respect of the following services:

   Class 39 - Airline bookings; Airline check-in services; Airline ticket reservation services; Airline transport; Airline transportation services; Provision of information relating to airline scheduling; Air travel services; Air cargo transport

2. Consequently, I informed the Applicant that it was my intention to reject the application unless the specification was amended as follows:

   Class 36 – Agency services for arranging travel insurance; Collection of payments

   Class 39 - Airline bookings; Airline check-in services; Airline ticket reservation services; Airline transport; Airline transportation services; Provision of information relating to airline scheduling; Travel reservation services for airline frequent flyer programmes; Holiday travel reservation services; Advisory services relating to travel; Agency services for arranging travel; Air travel services; Booking agency services for travel; Booking agency services relating to travel; Computerised reservation services for travel; Information services relating to travel; Provision of travel services from customer loyalty and frequent buyer schemes; Provision of travel services from frequent flyer schemes; Reservation services for booking seats (travel); Reservation services for travel; Seat reservation services for travel; Services for the arranging of travel; Services for the booking of travel; Ticket booking services for travel; Travel advisory services; Travel booking and reservation services provided in relation to a customer loyalty or frequent buyer scheme; Travel booking and reservation services provided in relation to a frequent flyer scheme; Travel ticket reservation services; Travel information services; Air cargo transport

   Class 43 - Arranging holiday accommodation; Arrangement of accommodation for holiday makers; Accommodation finding services for travellers; Travel agency services for booking accommodation; Travel agency services for making hotel reservations; Travel agency services for reserving accommodation; Travel agency services for reserving hotel accommodation

3. The Applicant filed a divisional application (trade mark number 2307818) in respect of all the services in classes 36 and 43, and for the services in class 39 that are not struck through in [37] of this decision. Consequently, the specification of trade mark number 2253806 has been amended in accordance with [37] and the following endorsement has been added: Evidence and/or other circumstances provided under subsection 41(4).

Decision

1. I revoke acceptance of trade mark application number 2217809. The application will be returned to examination giving the Applicant an opportunity to overcome any grounds for rejection which may be raised.

2. Trade mark application number 2253806 may proceed to acceptance.

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

25 October 2022