Bounce IP Pty Ltd v Big Bounce Australia Pty Ltd

[2022] ATMO 146

TRADE MARKS ACT 1995

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

Re:Opposition by Bounce IP Pty Ltd and Bounce Australia Pty Ltd to registration of trade mark application number 2071001 (Class 41) – The Big Bounce Australia – in the name of Big Bounce Australia Pty Ltd.

Delegate:

Blake Knowles

Representation:

Opponents: K&L Gates.   

Applicant: Cooper IP Pty Ltd.    

Decision:

2022 ATMO 146

Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pressed under ss 42(b), 44, 58, 60, and 62A– s 60 established – registration refused.

Background

1. This is a decision on the opposition by Bounce IP Pty Ltd and Bounce Australia Pty Ltd (‘Opponents’) to registration of trade mark application number 2071001 (‘Application’) filed by Big Bounce Australia Pty Ltd (‘Applicant’) on 25 February 2020 (‘Relevant Date’). The Application seeks to register ‘The Big Bounce Australia’ (‘Trade Mark’) for:

   Class 41: Amusement services (‘Applicant’s Services’)

2. The Application was examined, accepted for registration, and subsequently advertised for opposition on 26 July 2020. The Opponents filed a notice of intention to oppose the Application on 10 August 2020 and a statement of grounds and particulars (‘SGP’) on 8 September 2020. The Applicant filed notice of its intention to defend the Application from opposition on 20 November 2020.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[1] The Opponents filed Evidence in Support (‘EIS’) on 20 May 2021. The Applicant filed Evidence in Answer (‘EIA’) on 23 August 2021. The Opponents did not file Evidence in Reply.

   [1] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. The parties were given the opportunity to be heard by video conference or written submissions. The Opponents did not request to be heard. The Applicant requested to be heard by way of written submissions which were subsequently filed by Michael Cooper of Cooper IP Pty Ltd. I have decided this matter as a delegate of the Registrar of Trade Marks based on the particulars set out in the SGP, the EIS, EIA, and the submissions of the Applicant.  

Grounds and onus

1. The SGP nominates grounds of opposition under ss 42(b), 44, 58, 60, and 62A.

2. The Opponents carry the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] 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).

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

Evidence

1. The following evidence was filed:

   EIS

   Declaration of Simon McNamara, director of Opponents, made on 19 May 2021, with Annexures SM-1 to SM-33.

   EIA

   Declaration of Grahame Ferguson, Managing Director of the Applicant, made on 20 August 2021, with Annexures 1 to 5.  

EIS

1. Mr McNamara declares that Bounce Australia Pty Ltd (‘BA’) was incorporated in 2011 and commenced operations in Melbourne in 2012 when it opened its first indoor trampoline facility. Mr McNamara declares that the trade mark BOUNCE has been used since 2012-2013 in relation to various indoor recreational services including trampolining, obstacle courses, inflatable jumping bags, dodgeball, basketball rings, battle beams, cliff jumps, and peg walls (‘BA Services’).

2. Mr McNamara declares that at the time of his declaration, BA operated eleven indoor facilities across Australia, including six in Victoria, two in Queensland, and one each in South Australia, Western Australia, and Tasmania. BA also operates 12 additional facilities in other countries.

3. Mr McNamara declares that Bounce IP Pty Ltd (‘BI’) is the owner of numerous BOUNCE formative trade marks, including trade mark number 903846 for the plain word BOUNCE with a priority date of 3 August 2001. This registration covers, amongst other things, entertainment and sporting services.  Mr McNamara declares that registered trade marks owned by BI are exclusively licensed to BA.

4. Mr McNamara provides a table which sets out the number of attendees at each venue between 2012-2020 and revenue figures from Australian facilities, both on an annual basis. The figures provided are substantial and indicate that the BA Services are very popular.

5. Mr McNamara declares that the BA Services are promoted via social media (Facebook, Instagram, YouTube, TikTok, and Twitter). The BA Facebook, Instagram, and TikTok accounts as of the date of Mr McNamara’s declaration enjoyed a significant following, and there were also approximately 2.5m views on videos posted by BA on its YouTube channel.

6. Mr McNamara declares that the BA Services are also promoted at the website (‘BA Website’), which has operated since 2012. Website analytics annexed to the declaration indicate that the BA Website had a substantial number of daily page views over a fourteen-month period between January 2017 and March 2018.

7. The BA Services are also promoted via online articles, television, radio, billboards, cinema, pop-up events, and competitions.

8. Mr McNamara annexes to the declaration examples of use of BOUNCE formative marks being extensively used at BA’s facilities, on the BA Website, in social media, and in other marketing/promotional activities. Illustrative examples of the trade marks in use include:

1. Mr McNamara declares that customers of the Applicant have confused the Applicant with BA as a result of bank statements recording the Applicant’s merchant details as BA instead of the Applicant. Mr McNamara annexes email correspondence which purportedly evidences instances of confusion. 

EIA

1. Mr Ferguson declares that the Applicant was incorporated in 2019 and has used the Trade Mark in Australia since 2019 in relation to the ‘installation of’ touring, outdoor, inflatable theme parks, in addition to music entertainment and games.

2. Mr Ferguson declares that the Trade Mark has been used in the USA by Big Bounce America LLC in relation to 84 events held since 2017. Mr Ferguson opines that the reputation developed in the Trade Mark in the USA has spilled over into other regions. Third party content on the #thebigbounce in the USA has millions of views, with one video alone attracting 175m views.

3. Mr Ferguson declares that a significant amount was invested into the Australian tour of THE BIG BOUNCE AMERICA in 2019, and the decision was made to use the same branding in Australia in order to keep a consistent global brand.

4. Mr Ferguson declares that the first events were held under the Trade Mark in January-March 2020 in Melbourne, Sydney, Adelaide, and Brisbane. A total of 35,000 patrons visited the 39 events held over this period. These events were subject to significant promotion beforehand.

5. Mr Ferguson declares that the Applicant operates a website at in addition to a Facebook page (with 18,000 followers) and Instagram page (with 6,500 followers). In addition to being used as part of the social media account names /thebigbounceaustralia, the Trade Mark is also used as part of a distinctive composite mark:

1. Mr Ferguson declares that the Trade Mark has been the subject of articles in various media and online sources, illustrative examples of which are annexed to the declaration.

2. Mr Ferguson declares that if the Trade Mark is entered into Google, the first organic search result refers to the Applicant’s business. A screenshot from a Google search conducted on 26 July 2021 is annexed.

3. Mr Ferguson declares that the Applicant’s investigations discovered that instances of confusion cited in the EIS resulted from an algorithm error in software used by the relevant bank.

4. Mr Ferguson declares that the only similarity between the trade marks used by each party is the word ‘BOUNCE’ which is descriptive. Mr Ferguson refers to a definition of BOUNCE in the Australian Concise Oxford Dictionary which is ‘(cause to) rebound; throw oneself about’. Mr Ferguson opines that consumers would not search the same hashtags when looking for the respective businesses.

5. Mr Ferguson declares that the word ‘bounce’ is used by other businesses in the normal course of trade, and refers to several other registered trade marks namely BodyBounce Fitness, Free to Bounce, Bounce Patrol, and the following composite marks:

Discussion

Section 60

1. To establish this ground, the Opponents must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponents must then prove that because of the reputation in the trade mark/s relied on by the Opponents, use of the Trade Mark by the Applicant is likely to deceive or cause confusion.

2. It is not necessary for the Opponents to establish that the trade mark/s relied on by the Opponents as the basis for this ground and the Trade Mark are deceptively similar, or that the relevant services of the parties are similar. However, the greater the similarities in the respective trade marks and services, the more likely the existence of a reputation in the trade mark/s relied on by the Opponents is to give rise to a likelihood of confusion. 

3. In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:

   It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

   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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[4]

   [4] [2000] FCA 1335, [85]-[86].

4. 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.[5]

   [5] [2019] FCA 923, [83] (O’Bryan J).

5. The existence of reputation does not necessarily mean that confusion resulting from use of the Trade Mark is likely to occur. There must be a nexus between the reputation in the trade mark/s relied on by the Opponents and the likelihood of confusion caused by use of the Trade Mark. In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd, Hearing Officer Lyons said:

   Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[6]

   [6] [2010] ATMO 5, [39].

6. The Opponents rely on reputation in Bounce formative marks, including BOUNCE and BOUNCE INC. I note that BA primarily uses BOUNCE INC, including in a stylised form where BOUNCE is heavily emphasised and the word INC is in much smaller font:

1. The word ‘BOUNCE’ is the dominant part of this stylised mark. The word INC is descriptive matter (indicating ‘Incorporated’), and the stylization in the letter ‘N’ is minimal.

2. Overall, I consider that the evidence demonstrates extensive use of BOUNCE INC in plain word and stylised form in relation to the BA Services. This extensive use establishes that there is a significant reputation in BOUNCE INC in relation to the BA Services.

3. I must now consider whether, because of this reputation, the use of the Trade Mark is likely to deceive or cause confusion. While it is not necessary for the Opponents to prove that the Trade Mark is deceptively similar to BOUNCE INC, the tests for deceptive similarity provide a useful starting point, namely:

-There must be a real, tangible danger of confusion, not just a mere possibility.[7]

-Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[8]

-The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[9] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[10]

-Consumers may retain an imperfect recollection of a mark or its essential features.[11]

-It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[12]

-The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[13]

-It must be considered how the goods or services are ordinarily sold or provided.[14]

[7] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

[8] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

[9] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

[10] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

[11] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

[12] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

[13] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

[14] Ibid.

1. I accept that the word BOUNCE has a well-known English meaning, including the act or effect of rebounding away from a surface. I also accept that consumers, when utilizing trampolines, jumping castles, or other surfaces with a degree of elasticity will ‘bounce’. However, I am not satisfied that the term BOUNCE is directly descriptive of either the Applicant’s Services or the BA Services. In order to connect the term to the Applicant’s Services, one first has to engage in a search for meaning. As such, the term BOUNCE is more accurately characterised as allusory rather than descriptive in the context of the services of both parties.

2. I also accept that there are other registered trade marks that contain the word BOUNCE that appear to be co-existing with BOUNCE formative registrations owned by BI. However, I note that these registrations are either composites containing distinctive device elements and/or they contain other word elements that alter the meaning of the trade mark as a whole. In this case, the additional words in the Trade Mark, i.e. THE BIG and AUSTRALIA, are not particularly distinctive, and the word BOUNCE is the most memorable essential feature. Further, I consider there would be a tendency for some consumers to disregard the words THE and/or AUSTRALIA in the Trade Mark, and effectively refer to it as ‘BIG BOUNCE’. The news articles filed in the EIA contain several examples of the Trade Mark being abbreviated to BIG BOUNCE or THE BIG BOUNCE.

3. Both BA and the Applicant are catering to similar markets, including children and parents. While the BA Services are provided at indoor centres, and the Applicant’s Services are provided via temporary outdoor installations, the respective services (being amusement venues facilitating physical play-based activity by patrons) are very similar in nature. I must also consider the potential for confusion based on imperfect recollection and aural use of the Trade Mark. Parents often discuss and recommend activities for children amongst each other. Children will also hear about activities from their friends and classmates, and request that their parents take them to a venue providing the relevant services. In this context, there is a real and tangible danger of conflation by consumers of two businesses offering very similar services that are primarily identifiable by the presence of the word BOUNCE in their respective brands. Whilst not all consumers would be confused, and in some cases instances of confusion may subsequently be corrected, I still consider that a significant number of consumers would initially be caused to wonder whether the Applicant’s Services are provided by or have some connection with the Opponents.  

1. I note that there is no compelling evidence of actual confusion. However, while this is a relevant factor to consider, it is not determinative particularly given the short period of time in which the Applicant has been providing its services.

2. On balance, I consider that given the extensive reputation in the trade mark BOUNCE INC relied on by the Opponents, considered together with the similarity between the Trade Mark and BOUNCE INC, the use of the Trade Mark is likely to deceive or cause confusion.

3. As the Opponents have established a ground of opposition under s 60, there is no need for me to consider the remaining grounds.   

Decision and costs

1. The Opponents have established a ground of opposition. As such, I have decided to refuse the Application. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

2. The Opponents in the SGP requested an award of costs in their favour. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Applicant.

Blake Knowles

Hearing Officer

Delegate of the Registrar of Trade Marks

30 August 2022