Daine Anderson v Bangin' Bodz Health & Fitness Pty Ltd

[2017] ATMO 70

TRADE MARKS ACT 1995

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

Re:Opposition by Daine Anderson to registration of trade mark application 1669305(41) - Bangin' Bodz - in the name of Bangin' Bodz Health & Fitness Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: James Maxwell and Leonard Mancini of Peter Maxwell and Associates Applicant: Gavin Doherty of mdp and Alan Clark of CIP International Pty Ltd
Decision:	2017 ATMO 70 Opposition under section 52 of the Trade Marks Act 1995 (Cth) – grounds of opposition under sections 41, 58, 60 and 62A pressed – no ground of opposition established – trade mark to proceed to registration

Background

1. Bangin’ Bodz Health & Fitness Pty Ltd (‘the Applicant’) made an application for registration of a trade mark under the Trade Marks Act 1995 (Cth) (‘the Act’). The relevant details of this application follow:

   Application number:         1669305

   Trade mark:  Bangin’ Bodz (‘the Trade Mark’)

   Filing date:   15 January 2015 (‘the Relevant Date’)

   Specification of services:    Class 41: Adult training; Advisory services relating to education; Advisory services relating to entertainment; Advisory services relating to the organisation of sporting events; Advisory services relating to training; Arranging and conducting of workshops (training); Arranging of exhibitions for training purposes; Arranging of sporting events; Association services being the provision of training and education to members of the association; Booking of tickets for sporting events; Coaching (training); Commercial training services; Computer based training; Computerised training; Conducting training seminars; Conducting workshops (training); Consultancy services relating to training; Event management services (organisation of educational, entertainment, sporting or cultural events); Health club services (exercise); Health club services (health and fitness training); Health education; Physical health education; Life coaching services (training or education services); Lifestyle counselling and consultancy (training); Management of educational events; Management of entertainment events; Management of sporting events; Mentoring (education and training); Mentoring (training); Organising charitable fundraising events being the provision of entertainment, sporting and cultural services; Organisation of promotions (sporting events); Organisation of sporting events; Organisation of training courses; Personal trainer services (fitness training); Physical fitness training services; Physical training services; Providing courses of training; Providing information, including online, about education, training, entertainment, sporting and cultural activities

   (‘the Relevant Services’)

2. The Trade Mark was examined and advertised as having been accepted for possible registration on 4 June 2015. On 20 June 2015, Daine Anderson (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark. The Opponent followed this up with a Statement of Grounds and Particulars, and the Applicant then filed a Notice of Intention to Defend the opposition. The Opponent was then invited to file evidence in support, which he did on 23 December 2015.

3. The Applicant missed its deadline for filing evidence in answer to the evidence in support and was unsuccessful in an attempt to obtain an extension of time for doing so. It was offered a hearing on the procedural matter before its application for extension of time was formally refused, but it did not take up the opportunity. As a result, the application for extension of time to file evidence in answer was refused, and the opposition was ready to be heard. The parties were invited to request a hearing, which the Applicant did on 15 June 2016. Alongside its hearing request, the Applicant filed submissions as to why it considers that its late filed evidence should be considered when deciding the opposition.

4. The hearing was scheduled to be held in Canberra on 24 February 2017. On 6 February 2017 I wrote to the parties reminding them of their obligations to file a written outline of submissions prior to the hearing. In response, on 7 February 2017, the Opponent indicated that it would attend the hearing. Then on 8 February 2017, the Opponent filed two declarations, one of which was over 1200 pages long, purporting to be evidence in reply to the Applicant’s evidence in answer.

5. The Opponent’s supposed evidence in reply was brought to my attention on 13 February 2017. I wrote to the parties on that day, expressing that I did not intend to take any of this late filed material (neither the evidence in answer nor evidence in reply) into account when deciding the opposition. The Opponent provided further submissions as to why he believed I should admit his evidence in reply. On 15 February 2017 I wrote once more to the parties informing them that neither sets of late material would be considered, and provided the parties with my reasons for making that decision.

6. The hearing went ahead as scheduled before me, a delegate of the Registrar of Trade Marks. The Opponent appeared with his attorneys James Maxwell and Leonard Mancini of Peter Maxwell and Associates. Appearing on behalf of the Applicant was Gavin Doherty of mdp, instructed by Alan Clark of CIP International Pty Ltd.

Evidence

1. The following evidence has been filed in relation to this opposition in accordance with reg 5.14 of the Trade Marks Regulations 1995 (Cth):

   Evidence in support

   Statutory Declaration of Daine Anderson, the Opponent, made on 23 December 2015 with exhibits DA-1 to DA-7.

Grounds and onus

1. The Opponent has nominated grounds of opposition under ss 41, 42(b), 58, 60 and 62A of the Act in its Statement of Grounds and Particulars. At the hearing, the Opponent indicated that it would not press the ground of opposition in s 42(b) of the Act. The onus is on the Opponent to establish a ground of opposition on the balance of probabilities.[1] The rights of the parties are to be determined as at the Relevant Date.[2]

Reasons

[1] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

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

Section 41

1. Section 41 of the Act is reproduced below:

   41 Trade mark not distinguishing applicant’s goods or services

   (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.

   Note:For goods of a person and services of a person see section 6.

   (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.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)    the time of production of goods or of the rendering of services.

   Note 2:For goods of a person and services of a person see section 6.

   Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:For applicant and predecessor in title see section 6.

   Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

2. In determining whether a trade mark is ‘inherently adapted to distinguish’, ‘[t]he first step is to ask what is the ordinary signification (ie the ordinary meaning) of the words.[3] ‘Once the “ordinary signification” of a word…is established an inquiry can then be made into whether other traders might legitimately need to use the word’,[4] because of this ordinary signification, in relation to the Relevant Services. There is a distinction between a ‘direct reference’ to services, and a ‘covert and skilful allusion’ to them. The former is not inherently adapted to distinguish, but the latter is.[5]

   [3] Cantarella Bros Pty Limited v Modena Trading Pty Limited (2014) 254 CLR 337, 361 [70].

   [4] Ibid 362 [72].

   [5] Ibid 354 [50].

3. The Opponent’s evidence in support includes several definitions of the words ‘bang’ and ‘banging’, along with the contraction of the latter that appears in the Trade Mark. The definitions are drawn from nine online sources, none of which appear to be particularly concerned with word usage in Australia. Among this collection are some user-created content sources of little evidentiary weight such as the Urban Dictionary and Your Dictionary. Of these, the London Slang Dictionary Project seems particularly remote from the motives of traders in the Relevant Services in Australia, and the Glossary of Eighties Terms is necessarily concerned with usages that are far in time from the Relevant Date. The common theme that the Opponent seeks to draw from these websites is the laudatory adjectival use of these terms, which communicate in an emphatic way that something is very good.

4. The Opponent has similarly provided many sources which purport to define the word ‘bod’. There are fewer sources offered for this word, just one of which is a dictionary of some repute, albeit American. Despite the shortcomings in this evidence, I accept that ‘bod’ can be a shortening of the word ‘body’ in Australia. The Opponent submits that the additional ‘z’ offers a plural form of bod, in place of the standard ‘s’.

5. I will leave aside my reservations as to the veracity and relevance of much of this evidence in order to place the Opponent’s case at its highest. The argument is that the ordinary meaning of the Trade Mark is along the lines of ‘very good bodies’, and that other honest traders in the Relevant Services would wish to use this term because of this ordinary meaning. At one extreme, the Relevant Services specify items such as ‘[b]ooking of tickets for sporting events’. It is hard to see how the Trade Mark indicates any characteristic of this particular service. Closer to the Opponent’s main area of concern, I understand, is the provision of fitness training. In relation to such services, even if the Trade Mark were to be understood as ‘very good bodies’ or similar, it at most offers up ‘a covert and skillful allusion’ to the potential results that might be obtained by consumers of the Relevant Services.[6] It does not itself describe a characteristic of any of the Relevant Services, and as such is prima facie inherently adapted to distinguish all of those services within the meaning of s 41 of the Act.

   [6] Mark Foy’s Limited v Davies Coop and Company Limited (1956) 95 CLR 190, 201.

6. A further line of argument from the Opponent alleges that the Applicant has publicly admitted that the Trade Mark is descriptive of the Relevant Services. To this end, it has adduced screenshots of the front page of the Applicant’s website that include the line ‘get a bangin’ body’. The weight that could be afforded such an admission, given the absolute nature of this ground of opposition, is not great. At any rate, this does not appear to me as an admission of descriptiveness of the Trade Mark but rather just an attempt to play off the Trade Mark in marketing materials.

7. The Opponent has not established a ground of opposition under s 41 of the Act.

Section 58

1. Section 58 of the Act provides:

58 Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:           For applicant see section 6.

1. As was noted by the Hearing Officer in L.T. Overseas Limited v Chemico Pty Ltd:

   The word ‘owner’ is not defined in the Act, although there are numerous decisions where courts have considered its meaning. It is well established that, in the absence of fraud, the owner of a trade mark in Australia for particular goods or services is taken to be the first person to use it in the course of trade in Australia in relation to those goods or services.[7]

   [7] [2008] ATMO 44, [18] (citations omitted).

2. In the absence of any use, the first person to apply to register a trade mark will in most cases be the owner.[8] In order to establish this ground, therefore, the Opponent needs to show that another person was the first to use the Trade Mark, or substantially identical trade mark, in Australia.[9] Section 7(5) of the Act defines use of a trade mark in relation to services as ‘use of the trade mark in physical or other relation to the services.’

   [8] Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR 601.

   [9] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375.

3. In his evidence in support, the Opponent has offered up two potential earlier trade marks in relation to this ground of opposition. The first consists of evidence of a third party’s business name registration and associated trading name for BANGIN’ BODZ, dating back to late 2011 or mid 2012. This business and trading name is of course identical to the Trade Mark, but without more such registration is neither use of a trade mark nor is it ‘in physical or any other relation to [any] services.’

4. Aside from the records of business name registration, the only other supporting information offered in relation to this third party is a screenshot of her personal ‘Facebook’ page. This shows nothing more than that she wrote that she was studying at a fitness training institution in 2011, and that she claims to have graduated from that course in 2012. From this, the Opponent seeks to infer that the third party at least held an intention to use her business name in relation to fitness training services prior to the Relevant Date. Even if such an intention existed, it would not meet the requirements of this ground of opposition. Intention to use is merely an intention, it is not use. The Opponent’s submissions also state that these documents ‘may well represent…earlier use of the [Trade] Mark’. To accept that there has been trade mark use on the basis of these documents alone would require me to form the view without any actual evidence in support of it.

5. The second potential earlier trade mark use is by the Opponent himself. The evidence led for this ground is a series of screenshots showing excerpts of two chats with what appears to be the Applicant’s official ‘Facebook’ account, the first chat happening on 8 September 2013 and the second on 8 October 2014. In earlier chat, the Applicant asserted that its business name had been registered in Queensland with the Australian Securities and Investments Commission and the Australian Taxation Office, to which the Opponent replied:

   So is Bangn Bodz

   For two years

   Started on the Gold Coast

6. The Applicant then stated that it does not run ‘bootcamps’ and asked the Opponent whether he offers these services, to which he replied:

   I do I do

   That’s all

7. BANGN BODZ and The Trade Mark are without a doubt substantially identical. However, all these screenshots reveal is that the Opponent claims to have used BANGN BODZ earlier than the Relevant Date. There are no examples of its use as a trade mark use from before the Relevant Date (or at all), nor are there documents or information among the Opponent’s evidence that might reasonably be used to infer prior use of BANGN BODZ as a trade mark.

8. The Opponent has not established a ground of opposition under s 58 of the Act.

Section 60

1. Section 60 of the Act is reproduced below:

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.

Note:     For priority date see section 12.

1. To establish this ground of opposition, the Opponent must show that, at the relevant date, another trade mark had a reputation in Australia, and due to that reputation use of the Trade Mark would be likely to deceive or cause confusion. The Opponent must establish this reputation of that trade mark as a matter of fact.[10] Reputation can, for example, be demonstrated through direct evidence of consumer appreciation or it can be inferred from a high volume of sales together with substantial advertising figures and other promotions.[11] This reputation must be reputation as a trade mark.[12] The reputation must be amongst a significant section of the relevant market.[13]

   [10] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193, 234.

   [11] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 127.

   [12] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551, 574-5 [121]-[131].

   [13] Re Smith Hayden & Co Ltd's Application (1946) 63 RPC 97 (Ch D).

2. The Opponent submits that at the Relevant Date his claimed BANGN BODZ trade mark had a significant reputation. I have noted the lack of evidence of any use of this trade mark set out in my discussion above relating to s 58 of the Act. There is also no evidence of customer appreciation, sales, advertising or other promotions. Without such material it is impossible to make a finding as to the reputation that the Opponent asserts for his claimed trade mark. The Opponent’s evidence does not satisfy the first limb of this ground of opposition, so it is unnecessary to consider whether there is a likelihood of deception under s 60(b) of the Act.

3. The Opponent has not established a ground of opposition under s 60 of the Act.

Section 62A

1. Section 62A of the Act is reproduced below:

   62A Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The test for bad faith combines subjective and objective elements. That is, given the knowledge of the Applicant at the relevant date, would its decision to apply for registration of the Trade Mark be regarded as in bad faith by persons adopting proper standards?[14] This is a serious allegation requiring cogent evidence, but the standard of proof remains that of the balance of probabilities.[15]

   [14] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62].

   [15] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [145].

1. For this ground of opposition, the Opponent again relies on his chats in ‘Facebook’ with the Applicant. He submits that, since the Applicant had been made aware in those chats of ‘bona fide prior use of a similar mark’, the Applicant’s decision to seek registration of the Trade Mark falls short of acceptable standards of commercial behavior.

2. As has been found above, these ‘Facebook’ chats alone are insufficient to establish bona fide prior use of BANGN BODZ as a trade mark. What is more, the chats appear to be directed toward registered business names, not trade marks.

3. The Opponent has not established a ground of opposition under s 62A of the Act.

Decision

1. Section 55 of the Act 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.

2. The Opponent has failed to make out a ground of opposition, so I have decided the Trade Mark 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 the registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

Costs

1. Both parties have requested an award of costs. The ordinary rule is that costs follow the event and I see no reason to deviate from this. I award costs against the Opponent in the official scale against the applicable amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Adrian Richards
Hearing Officer
Trade Marks and Designs Group
17 July 2017