Nicholas Van Den Berg v Brain Hamilton

[2007] ATMO 31

TRADE MARKS ACT 1995

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

Re:Opposition by Nicholas van den Berg and Van Den Berg Holdings Pty Limited to registration of trade mark application 1029245(35, 39 and 41) - BIG BOYZ TOYZ - filed in the name of Brian Hamilton.

Delegate:

Don Nancarrow

Representation:

Opponent: Nicholas van den Berg

Applicant: Ben Fitzpatrick, of counsel, instructed by Griffith Hack, Patent and Trade Mark Attorneys, Perth

Decision:

2007 ATMO 31

s. 52 opposition – s. 42 use not contrary to law; s. 43 no connotation in trade mark likely to deceive or confuse; s. 58 applicant owner for some services, opponent owner for other services; s. 59 no evidence of lack of intention to use trade mark; s. 60 insufficient evidence of opponent’s reputation demonstrated; s. 41 trade mark to some extent ‘capable of distinguishing’, evidence of use only provided for classes 39 an 41, those classes may be registered with s. 41 (5) endorsement, class 35 to be deleted from application.

Costs – each party to bear own costs.   

Background

1. Brian Hamilton (‘the applicant’) filed application number 1029245 on 10 November 2004 in respect of three classes of services in the International (‘Nice’) Classification  of Goods and Services. Details of the application are set out below.

Trade mark:  big boyz toyz

Services:Class 35: Sale of recreational and leisure equipment and vehicles, excluding air tools, parts and accessories

Class 39: Hire of recreation and leisure vehicles; tours

Class 41: Hire of recreation and leisure equipment

Acceptance Advert.:      10 March 2005

1. Nicholas van den Berg and Van Den Berg Holdings Pty Limited (the opponents but hereafter referred to as ‘the opponent’) filed a Notice of Opposition to registration of the trade mark on 7 June 2005. Thereafter evidence in support, evidence in answer and evidence in reply were duly filed and served by the parties according to the provisions in the Trade Mark Regulations 1995 (‘the Regulations’).

2. After the matter was set down to be heard the opponent applied for permission to serve further evidence. I indicated to both parties that the hearing would proceed and I would take submissions on whether the further evidence would be permitted at the hearing of the substantive matter. The hearing proceeded on 5 March 2007 in Melbourne.

3. At the hearing Mr. Fitzpatrick, for the applicant, submitted that the applicant would have no objection to the further evidence of the opponent provided that the applicant could also serve further evidence in response. Both parties agreed that all of the evidence should be allowed. As there was no issue of dispute concerning allowing the further evidence, I indicated that I would allow all of the material from both parties.

The Evidence

1. The evidence filed and served in accord with the Trade Marks Act 1995 (‘the Act’) and the Regulations thereto is set out in the table below.

Declarant	Status	Date Declared, Known As	Exhibits
Evidence in Support
Nicholas van den Berg	Sole director of Van Den Berg Holdings Pty Ltd	7 November 2005 – van den Berg 1	‘NV-1’ to ‘NV-21’
Evidence in Answer
Brian Patrick Hamilton	Applicant	7 March 2006 – Hamilton	‘BH-1’ to ‘BH-20’
Linda Russell	Professional media consultant	7 March 2006 – Russell	NIL
Evidence in Reply
Nicholas van den Berg	(As above)	7 August 2006 – van den Berg 2	‘NV-22’ to ‘NV-40’
Renae Kunda	Company Secretary of CYMCA	7 August 2006 – Kunda
Further Evidence – opponent
Nicholas van den Berg	(As above)	2 March 2007 – van den Berg 3	‘NV-1’
Nicholas van den Berg	(As above)	2 March 2007 – van den Berg 4	‘NV-2’
Further Evidence – applicant
Rohan James Wallace	Senior Associate at Griffith Hack	2 March 2007 – Wallace	‘RJW-1’

1. As much of the evidentiary material is not directly related to matters concerning the substantive issues I will only refer to relevant material as required throughout this decision.

Grounds of Opposition

1. The Notice of Opposition nominated almost every available ground under the Act. At the Hearing Mr. van den Berg’s submissions pressed grounds under sections 41, 42, 43, 58, 59 and 60, with some of the submissions going to more than one ground (and some submissions finding no application under any of the six grounds).

2. Mr. van den Berg sought to make an issue of the actual use that had been documented by the applicant – although the submission had not been made in relation to any particular ground of opposition. The evidence showed that the majority of usage of the trade mark by the applicant had been in the format BIG BOYZ TOYZ HIRE (‘NV-3’ to ‘NV-6’ inclusive, van den Berg 1). Such use, he claimed, could not qualify as use of the trade mark BIG BOYZ TOYZ. In relation to any ‘hire’ services, however, BIG BOYZ TOYZ HIRE is use of the trade mark BIG BOYZ TOYZ, because the word ‘hire’ will be seen as merely a description of the services offered. In relation to other services (sales services in class 35 and tour services in class 39 in the present matter) I will take up the issue in my discussion under section 41.

   (a)    Section 42

3. The legislation here allows:

Trade mark scandalous or its use contrary to law

42. An application for the registration of a trade mark must be rejected if:

(a) ….
(b) its use would be contrary to law.

1. Mr. van den Berg submitted that although one of the services specified in the statement of the applicant’s services in class 35 is ‘sale of recreational …. vehicles’, the applicant is not registered or licensed to carry out the sale of recreational vehicles in the State of Western Australia. Thus, he claimed, use of the trade mark would be contrary to law, specifically, contrary to the Western Australian Motor Vehicle Dealers Act 1973 (MVDA).

2. The further evidence of Mr. van den Berg, at exhibit ‘NV-1’ to van den Berg 3, consists of email communications between Mr. van den Berg and Ms. Sandra Iemma, Assistant Secretary of the Department of Consumer & Employment Protection/ Motor Vehicles Branch W. A., (DOCEP).  Ms. Iemma indicates that the applicant’s company, Keychoice Holdings Pty Limited (Keychoice), holds an exemption licence which enables it to ‘hire vehicles ONLY, not to sell to the general public’. The further evidence of the applicant, at exhibit ‘RJW-1’ to Wallace, provides a copy of the exemption certificate that Keychoice holds from DOCEP. The certificate (operational from 30 October 2004 to 30 October 2007) enables the business as a car hire operator to dispose of vehicles bought in the course of its business to ‘dealers licensed under the Motor Vehicle Dealers Act 1973’.

3. A logical reading of all of the foregoing brings me to the conclusion that Keychoice, as the entity that operates the applicant’s business under the BIG BOYZ TOYZ trade mark (with authorization to use the trade mark from Mr. Hamilton as the owner), is not, by law, permitted to sell vehicles to the general public – but is allowed to sell vehicles that have been used as hire vehicles in the course of its business to licensed motor dealers, who may then on-sell these vehicles to the general public. In that limited sense it does have the capacity to operate as the specification of services describes.

4. Additionally, there is nothing before me that would prevent the applicant seeking a motor vehicle dealers licence that would enable it to sell vehicles to the general public in the future. As a business decision, any trade mark owner may decide to obtain trade mark registration before making an application to comply with the MVDA – with an intention to acquire both registrations before the sales operation would begin.

5. I find that this ground of opposition has not been established.

   (b)    Section 43

6. Under this ground the legislation reads:

Trade mark likely to deceive or cause confusion

43. 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.

1. This ground of opposition considers the trade mark that has been applied for – not by comparison with another trade mark, but alone. The question to be asked is ‘does this trade mark have existing within the mark itself a connotation, or secondary meaning, such that use by the applicant on the goods or services in the specification would be likely to deceive or cause confusion’. This test follows from Down to Earth (Victoria) Co-OperativeSociety Limited v Schmidt (1998) 41 IPR 632 at 644 and is confirmed in the courts in Big Country Developments PtyLimited v TGI Friday’s Inc and another (2000) 48 IPR 513 at 521.

2. Mr. van den Berg’s submissions did not highlight any sort of connotation in the trade mark that would be likely to deceive or confuse apart from the claim that the trade mark would be seen as descriptive of certain goods. Such an argument directly applies in terms of section 41 of the Act rather than in providing a secondary meaning that would be likely to cause the purchasing public any implied expectation that could not be met.

3. I find that this ground has not been made out.

   (c)     Section 58

4. This ground of opposition is set out as:

Applicant not owner of trade mark

58. 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. It is now well established law that, in order to succeed under this ground of opposition the opponent must establish three factors. These are:

1. that the trade mark of the applicant and the trade mark relied on by the opponent be either identical or substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375, (1994) AIPC ¶91-049, (1994) 120 ALR 495)

2. that the  respective goods or services of the parties be the ‘same kind of thing’ (Re:Hicks’s Trade Mark (1897) 22 VLR 636, 3 ALR 75), and

3. that a person other than the applicant has the earlier claim to ownership based on use prior to both the present application to register and actual use of the trade mark by the applicant (Settef SpA v Riv-Oland Marble Co (Vic.) Pty Limited 10 IPR 402 at 413 and Re:Hicks’s Trade Mark, supra, at 639).

1. Mr. van den Berg provided several lines of argument in relation to this ground. One line alleged that a large number of parties had used the trade mark BIG BOYS TOYS prior to the date of application. Another line was that the applicant could not claim any use of the BIG BOYZ TOYZ trade mark based on the evidence it had submitted because the applicant had only shown use in the form BIG BOYZ TOYZ HIRE. He added as further arguments that the applicant had not shown any use whatsoever on ‘sales’ and had only used its BIG BOYZ TOYZ HIRE in Western Australia but not outside that area.

2. Mr. van den Berg also claimed that there was a question about ownership of the trade mark on the basis that the applicant had not used the trade mark at all, but that another entity was using the trade mark. I make nothing of this submission because the actual user, as it turns out, is a company under the control of the applicant. As Mr. Fitzpatrick correctly pointed out, such use comes within the provisions of sections 7(3) and 8 of the Act.

3. The opponent’s final contention here concerns two earlier applications that had been made by the present applicant (numbers 680471 and 771547). He submitted that these applications had been in respect of ‘hire services’ but not ‘sale or retailing of recreational and leisure equipment and vehicles’. This, he claimed, showed that the applicant had made no claim to ‘sale of recreational and leisure equipment and vehicles’ until the present application was made on 10 November 2004.

4. A closer inspection of these earlier applications does show, however, that the sale of such equipment was included within each of the class 42 specifications at the times of making those applications. For 680471 a claim is made for ‘all services within class 42’. At that time, 11 December 1995, the item ‘sales of recreational and leisure equipment and vehicles’ fell into that class. The same holds true for 771547 at its application date of 27 August 1998, although in that case the item is expressly included in the class 42 specification.

5. In order to make a valid comparison of the claims of both parties it is necessary to isolate the uses that have been presented in the evidence of both parties.

6. The present date of application is 10 November 2004. Any use after that date is not relevant for the purposes of establishing ownership of the present trade mark. The relevant information (and some other use necessary to highlight specific lines of reasoning) is set out below.

Trade Mark	User	Goods/services	Date of use	Reference
Big Boyz Toyz Hire (BBTH)	Applicant	Motorcycle hire	10 October 1995	‘BH-1’ to Hamilton
BBTH	Applicant	Motorcycle hire and tours (also quadbike hire and leisure equipment hire)	1 March 2002	‘BH-2’
Big Boyz Toyz (BBT)	Applicant	Motorcycle hire and tours	Undated page  (printed on 2 February 2006)	‘BH-2’
BBT and BBTH	Applicant	Motorcycle hire and tours, (hire of leisure equip?)	5 June 1999	‘BH-6’, ‘NV-1’ to van den Berg 1
BBTH	Applicant	Motorcycle hire and tours	April 1999	‘BH-11’
BBTH	Applicant	Hire of leisure equipment	February 2002	‘BH-11’
BBTH	Applicant	4-wheel hire and tours	April 2002	‘BH-11’
BBT and BBTH	Applicant	Motorcycle hire and tours	July 1997	‘BH-14’
BBTH	Applicant	Advertising of hire business via a rally	1 December 1996	‘BH-16’
BBT	BBT ebay store	Motorcycle sales	23 January 2006	‘BH-19’
BBTH	Applicant	Motorcycle hire and tours	11 May 2000	‘NV-6’ to van den Berg 1
BBT	Applicant	Motorcycle hire and tours	Undated (but copyright 2000)	‘NV-7’
Big Boys Toys (Bbt)	Opponent	Motor cycle sales	6 July 2004	‘NV-10’
Bbt	Opponent	4-wheel vehicles incl. buggies sales	10 August 2004	‘NV-10’
Bbt	Opponent	(Reg. of Bbt as trading name – Internet use)	20 June 2004	‘NV-14’
Bbt	Kendall-Richardson	Exhibitions and event management	Undated (but copyright 1999)	‘NV-18’
Bbt	CMS Events	Exhibition	30 July 2004	‘NV-18’
Bbt	? Kendall- Richardson	Exhibition	9 November 2000	‘NV-18’

1. The evidence on the issue of ownership is voluminous. A good deal of this material, from both parties, is not relevant because it post-dates the present application date. Much of it is undated. Some is not relevant because it is from overseas jurisdictions. Some evidence gives details of business and company names – which need not bear any relationship with the trade mark being used by those entities. The opponent also claimed use of the BIG BOYS TOYS trade mark from as early as 1984 by various third parties in relation to a range of goods and services – but, particularly, in relation to the BIG BOYS TOYS exhibition run by Kendall-Richardson. The evidence to support such an allegation, however, is a document that even when read in the most favourable light, shows use by Kendall-Richardson of its trade mark in 1999.

2. The applicant did not make submissions concerning the differences between BIG BOYZ TOYZ and BIG BOYS TOYS. For the latter to be able to displace ownership of the former both trade marks would have to be considered to be, at least, substantially identical. Such assessment is by means of a side by side comparison[1] where the differences and similarities are noted. In the present matter I believe that these two trade marks are substantially identical. The pronunciation of the phrases is the same, the meaning is entirely identical and the substitution of the letter ‘z’ for the letter ‘s’ in pluralising the words is likely, by some, to be regarded as interchangeable (or possibly seen as a misspelling). Thus, whether the trade marks are in either form I intend to consider them as relevant for the issue of ownership.

   [1] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1963) 109 CLR 407 at 414

3. The second relevant test to be assessed, from the three items listed for ownership above, concerns whether or not the respective services of the parties are ‘the same kind of thing’. The various services in need of comparison are ‘hire services’, ‘sales services’ and ‘exhibitions and event management’.

4. If I had to decide an issue under section 44 involving these trade marks, I would be required to consider whether the services are ‘similar services’. Relevant to this test the case law directs me to consider the respective trade channels, nature, characteristics, uses and purposes of the services. (Jellinek's Application (1946) 63 RPC 59; John Crowther & Sons (Milnsbridge) Limited'sApplication (1948) 65 RPC 369; Reckitt & Colman (Australia) Limited v Boden (1945) 70 CLR 84; Southern Cross Refrigerating Co v Toowoomba Foundry PtyLimited (1954) 91 CLR 592; 1A IPR 465 applied for a comparison of goods v. goods.) These factors from the precedent cases for goods v. goods have been imported for a comparison of services v. services in the Full Federal Court case MID Sydney Pty Limited v Australian Tourism Co Limited, (1998) 42 IPR 561 at 567-568. I consider that none of ‘hire services’, ‘sales services’ and ‘exhibitions and event management’ are similar by weighing up the factors to be compared.

5. The test for services to be ‘the same kind of thing’ under section 58 is stricter than for services to be considered ‘similar’ under section 44. (Silverstone Tire and Rubber CoSdn Bhd v Bob Jane Corporation Pty Ltd [1998] ATMO 26).

6. Thus, from the foregoing I consider that hire services, sales services and exhibition and event management set out in the above table to constitute three different ‘things’. It follows then that each of these three services could be delivered under the same trade mark, in co-existence, by different business entities as ‘owners’ of the trade marks under the assessment to be made for section 58.

7. From the table, it can be seen that the first documented evidence of use of the trade mark provided to me for this opposition action is:

8. by the applicant in respect of ‘motorcycle hire services’ – 10 October 1995;

9. by the applicant in respect of ‘tour services’ – July 1997 (support 5 June 1999), these two instances show use of trade mark BIG BOYZ TOYZ;

10. by the applicant in respect of ‘4-wheel vehicle hire services’ – 1 March 2002;

11. by the opponent in respect of ‘motorcycle sales’ – 6 July 2004 ;

12. by the opponent in respect of ‘sales of 4-wheel vehicles including buggies’ – 10 August 2004;

13. by a third party in respect of ‘exhibitions and event management services’ – 1999/2000.

14. The net result is that the applicant has the best claim to ‘hire and tour services’, the opponent the strongest claim to ‘sales of motor vehicles’ and a third party the leading claim to ‘exhibitions and event management’.

15. Thus, in relation to this ground of opposition, I find that the opponent is successful insofar as class 35 of this specification is concerned. Although the applicant holds an exemption to the Motor Vehicle Dealers Act 1973 (W.A.) that would allow sales of vehicles to a licensed motor dealer between 30 October 2004 and 30 October 2007 no evidence of such sales were placed before me. In addition, the opponent’s use on sales of motorcycles and motor vehicles (6 July and 10 August 2004 respectively) pre-dates any possible sales that could have occurred under that exemption licence.

16. The applicant’s claims for the services in the specifications under classes 39 and 41 remain unaffected by the opponent’s success under section 58 and I will return to the overall issue for class 35 in my commentary concerning the ground of opposition under section 41.

    (d)    Section 59

17. Relevant to this ground of opposition the legislation reads:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

1. Mr. van den Berg submitted that because the applicant could not legally sell motor vehicles in Western Australia, that the application had been made with a ‘lack of intention’ to use the trade mark on all of the services specified in the application.

2. As already discussed, under (a) section 42 above, the applicant may sell used hire vehicles that had been used for its hire services to licensed motor traders under its exemption to the MVDA. This may be sales to a quite limited market – but is still use of the trade mark ‘in the course of trade’.

3. Mr. Fitzpatrick also argued that it is open to the applicant to authorize use of the trade mark to a party that did have the necessary standing under the MVDA, or, alternatively, it could obtain such a licence itself in the future for sales to the general public.

4. Given these factors, I do not accept the opponent’s position here. The applicant is using the BIG BOYZ TOYZ trade mark in relation to hire and tour services – and has done so since as least 1995. There is also some circumstantial evidence that sales to motor dealers have occurred, although specific examples were not in evidence. All of this is far removed from a lack of intent to use the trade mark.

5. I find that this ground of opposition has not been established.     

   (e)    Section 60

6. The legislation allows:

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

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

1. I have already commented, in my discussion under (c) Section 58, that the respective trade marks, BIG BOYS TOYS and BIG BOYZ TOYZ, are substantially identical. The next step in terms of sub-section 60(a) is to evaluate the reputation that the opponent’s trade mark has acquired as at the date of application, being 10 November 2004.

2. The available evidence shows that the opponent registered the website in June 2004 and invested many thousands of dollars in advertising its business by means of bumper stickers, caps and shirts between July and November 2004. The first evidence of advertisements of the opponent’s vehicles is shown in the Trading Post classifieds on 6 July 2004 and this advertising was continuous to the date of the present application. Sales figures from July to November 2004 could only be said to be modest at best.

3. Much of the opponent’s evidence brings into focus the use of the BIG BOYS TOYS trade mark by third parties, both in Australia and in other jurisdictions. Apart from the items listed in the paragraph above very little of the opponent’s evidence demonstrates reputation in the trade mark by the opponent as at November 2004.

4. The matter of reputation has been set out by Justice Kenny in McCormick & Co Inc. vMcCormick (2000) 51 IPR 102 at 128-9. When this standard is applied, I do not accept that the opponent has demonstrated a sufficient reputation in its BIG BOYS TOYS trade mark, by 10 November 2004, to trigger section 60 as a valid ground of opposition.

5. I find that this ground of opposition has not been established.

(f)     Section 41

1. The legislation, relevant to the present matter which involves an application for services, allows:

Trade mark not distinguishing applicant's goods or services

41.(1) ….

(2) 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 (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.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a) the Registrar is to consider whether, because of the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

Note 1:  For goods of a person and services of a person see section 6.

Note 2: 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 (1) and 7(3) and section 8).

(6) ….

1. In Blount v Registrar of Trade Marks (1998), 40 IPR 498 at 504-5, Branson J sets out the mechanism by which section 41 is to be applied.

2. The applicant’s services in this application are: ‘Sale of recreational and leisure equipment and vehicles, excluding air tools, parts and accessories’ (class 35), ‘Hire of recreation and leisure vehicles; tours’ (class 39) and ‘Hire of recreation and leisure equipment’ (class 41). The question to be considered is ‘Is the phrase BIG BOYZ TOYZ capable of distinguishing the applicant’s services from those of other traders in similar services’?

3. The basic test comes from Clark Equipment Co v Registrar of TradeMarks (1964) 111 CLR 511 where Kitto J commented:

   …. whether a mark is adapted to distinguish be tested by 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.

4. Superimposed on this test (which was formulated under the 1955 Act) lies the so called ‘presumption of registrability’, whereby the Registrar must accept an application unless the application has not been made in accordance with the Act, or there are grounds for rejecting it. A trade mark that has an oblique reference to the applicant’s goods or services is not a word or phrase that is likely to be required by others in the same field for normal purposes of description or reference.

5. In relation to this ground of opposition Mr. van den Berg submitted that BIG BOYS TOYS has been used by a number of traders as a description of goods that are ‘exciting, high-tech, self-indulgent or masculine’ before the date of the present application and that the applicant ought not obtain exclusive use of the trade mark BIG BOYZ TOYZ on that basis. He detailed some examples from the evidence, including his own use of the trade mark (set out in my discussion of (e) Section 60 above), Big Boys Toys Exhibition (Melbourne) November 2000, Big Boys Toys Exhibition (Perth) July 2004 and N.S.W. trade fairs going by the name ‘Big Boys Toys Expo’ (2001, 2003). The opponent’s evidence exhibited a considerable amount of material printed from the Internet to support the case that there are a large number of independent users of the BIG BOYS TOYS and BIG BOYZ TOYZ trade marks. However, the vast majority of this material is undated. This makes it impossible to know how much, if any, is relevant in deciding the issue. The uses detailed here by the opponent look at the phrase BIG BOYS TOYS as describing goods – items that are seen as desirable but non-essential and with an appeal to adult males for recreational pursuits. Thus, BIG BOYS TOYS EXPO would generally be seen as an exhibition of various goods that many adult males would use for recreation – such as four wheeled motorized vehicles, motorcycles, boats, auto accessories, amphibious vehicles, aeroplanes and even military vehicles.

6. The specification for the applicant here involves services rather than goods and, therefore, is necessarily one step removed from the mental picture that ‘big boys toys’ brings to mind as being descriptive of certain goods. A second aspect that finds some favour for the applicant is that ‘big boys toys’ may also be used to indicate a range of other different goods – such as electronic goods, computers, video games, stereo systems, home theatres, televisions, men’s toiletries, jewellery, watches, cigars and even clothing. This dilutes, to some extent, the level of description that the trade mark may have for motorized recreational vehicles. The services of the applicant, nevertheless, are shown by the evidence before me, to be delivered by means of goods which may be referred to as ‘big boys toys’ and I believe that section 41 presents a barrier for the application.

7. For all of the applicant’s services, I believe that the trade mark is to some extent inherently adapted to distinguish the services of the applicant from those of other traders in similar services, and sub-section 41(5) applies. However, I do not believe that the trade mark is equally so adapted for the whole range of the applicant’s services.

8. For the applicant’s ‘hire’ and ‘tour’ services, whilst I accept that there is some level of description, I do not believe that it need be fatal for the application with regard to those services. Justice Branson sets out the way to registration for such applications by means of the combined effect of the ‘extent’ that the trade mark is ‘inherently adapted to distinguish the designated goods or services’ as being those of the applicant; ‘the use, or intended use, of the trade mark by the applicant’ and ‘any other circumstances’.

9. For the applicant’s ‘sales’ services the matter of descriptiveness of the trade mark has an extra factor. Whereas with ‘hire’ and ‘tour’ services the goods may be seen as merely a vehicle to deliver the services because it is the services that the customer seeks – for ‘sales’ services the customer seeks to find goods (and if the services are delivered) the customer will retain in their possession goods for which BIG BOYZ TOYZ has some descriptive meaning. Despite the fact that the applicant is offering ‘sales’ services it is the goods that the customer is seeking, and in the circumstances the descriptive association is stronger for ‘sales’ services in the mind of the customer than the other services offered by the applicant.

10. Returning to the pathway that Justice Branson outlined for registration when a trade mark is ‘to some extent inherently adapted to distinguish’, I must consider the evidence of use of the trade mark and ‘any other circumstances’ that may enable the application to proceed to registration. The evidence here shows that the applicant has used this trade mark in relation to ‘hire and tour’ services from October 1995. The use, though not overwhelming, is sizeable and has been continuous from that time and is supported by two earlier applications by the applicant for the trade mark BIG BOYZ TOYZ on 11 December 1995 and 27 August 1998 that both lapsed. No evidence of use has been provided for ‘sales’ services.

11. The evidence of use provided by the applicant in relation to BIG BOYZ TOYZ and BIG BOYZ TOYZ HIRE for the ‘hire services’ in classes 39 and 41 and the use shown for the BIG BOYZ TOYZ trade mark in relation to ‘tour services’ in class 39 is sufficient, in combination with the extent of ‘inherent adaptability to distinguish the applicant’s services’, to enable the application to proceed for those two classes of services with an evidence endorsement.

12. However, the opponent is successful under this ground in relation to class 35 as no evidence of use was provided and no ‘other circumstances’ were raised for my consideration.

Decision

1. My decision in terms of section 55 is that this application may not proceed in its present form. I refuse to register it unless it is amended to meet my requirements. I have found that the opponent is successful under both section 58 and section 41 grounds of opposition in respect of class 35 only and under no other ground of opposition. Thus, I decide that if within 21 days of the issuing of this decision the applicant agrees, in writing, to delete the claim for class 35 services and agrees to the endorsement ‘Provisions of subsection 41(5) applied’, this application, number 1029245 for the trade mark BIG BOYZ TOYZ, may proceed to registration one month from date of this decision, provided that the sealing fee has been paid. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to that order.

Costs

1. Both parties requested their costs in the matter. In view of the overall result in this decision, in which both parties have been partly successful, I direct that each party bear its own costs.

Don Nancarrow

Hearing Officer

Trade Marks Hearings

5 June 2007