Opposition by Bang Bang Investment Pty Ltd to registration of trade mark application number 1834510 (class 43) – BANG BANG (fancy) – in the name of BJBAC 3 Pty Ltd
[2021] ATMO 50
•11 June 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Bang Bang Investment Pty Ltd to registration of trade mark application number 1834510 (class 43) – BANG BANG (fancy) – in the name of BJBAC 3 Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Davies Collison Cave Applicant: RKL Lawyers and Consultants |
| Decision: | 2021 ATMO 50 Trade Marks Act 1995 (Cth) – opposition under section 52 – section 58 considered – ground not established – trade mark to proceed to registration |
Background
This decision concerns an opposition brought by Bang Bang Investment Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: (‘Trade Mark’)
Application Number: 1834510
Applicant: BJBAC 3 Pty Ltd (‘Applicant’)
Priority Date: 28 March 2017
Specification: Class 43: Cafe services; Cafes; Restaurant services; Restaurant services for the provision of fast food; Restaurants; Arranging of meals; Arranging for the provision of drink; Arranging for the provision of food; Arranging for the provision of meals; Hospitality services (food and drink); Providing food and drink; Preparation of take-away and fast food; Take away food services; Take out food and beverage services; Takeaway food and drink services (‘Claimed Services’)
The Trade Mark’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks on 4 October 2018. The Opponent filed a notice of intention to oppose registration of the Trade Mark on 4 December 2018 and a Statement of Grounds and Particulars (‘SGP’) on 4 January 2019. The Applicant filed its notice of intention to defend on 6 February 2019.
On 7 May 2019, the parties jointly requested a cooling-off period of 6 months as provided for in reg 5.16(2) of the Trade Marks Regulations 1995 (Cth) (‘Regulations’). This period subsequently expired and the evidence stages commenced. They comprised of:
| Evidence in Support |
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| Evidence in Answer |
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The Applicant requested a hearing by way of written submissions and filed submissions on 28 April 2021. No submissions were filed by the Opponent and it took no further part in the proceeding. The matter has been allocated to me, as a delegate of the Registrar of Trade Marks, and I am to decide the opposition as required by s 55 of the Act. In doing so I take account of the material detailed above. This material comprises the written record.
Grounds of opposition, onus and standard of proof
The SGP nominated a solitary ground of opposition under s 58 of the Act. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[1]
[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
The date at which the rights of the parties are to be determined is 28 March 2017, being the filing date of the Trade Mark.
Evidence
The Opponent’s evidence
The Lolis Declaration provides information on six hospitality venues that were listed in the SGP. As part of his investigation into the use of ‘BANG BANG’ in Australia, Mr Lolis ‘reviewed various third party websites which detail Australian specific use of a BANG BANG (or similar) trade mark’.[2] He also inspected customer reviews of ‘Australian restaurants that operate under a BANG BANG (or similar) trade mark’[3] accessible on websites via zomato.com (‘Zomato’) and tripadvisor.com.au (‘Tripadvisor’).
[2] Lolis Declaration, [3].
[3] Lolis Declaration, [5].
According to the Lolis Declaration, several Australian hospitality venues use the words ‘BANG BANG’ as part of their trading name. Based on his research, Mr Lolis notes that there is an establishment located in the Melbourne suburb of Elsternwick which ‘trades under the BANG BANG trade mark’ and has done so since at least January 2017.[4] To support this, screenshots from the website accessible at bangbang.com.au together with customer reviews of this establishment on the Tripadvisor and Zomato websites were exhibited. Similarly, Mr Lolis’ research indicates the existence of a ‘Sichuan Bang Bang’ restaurant that operates from two Brisbane based premises. Again, reference is made to exhibited screenshots of the website accessible at sichuanbangbang.com.au as well as customer reviews of this restaurant dated from June 2016 on the Tripadvisor and Zomato websites.
[4] Lolis Declaration, [15].
Mr Lolis’ research also identified an Adelaide café trading as ‘Bang Bang’. Based on information available from the Zomato website, Mr Lolis notes that this cafe appears to have been in operation since at least January 2016. Likewise, his investigations indicate that there is a ‘Café Bang Bang’ operating in Wongaling Beach, Queensland. Mr Lolis observes that this business has an associated Facebook® page and that the first post on this page is dated 14 July 2016.
10. Finally, Mr Lolis states that since at least 2013 he has regularly dined at a Vietnamese restaurant named ‘pho BANG BANG’ which is located in the Melbourne suburb of Northcote. He points out that the earliest reviews of this establishment which appear on the Zomato and Tripadvisor websites are 28 May 2012 and 24 March 2015, respectively.[5]
[5] Lolis Declaration, [13].
11. The Lolis Declaration also mentions the following trade mark which was removed from the Australian Register of Trade Marks (‘Register’):
Trade Mark: bangbang (‘Unregistered Mark’)
Number: 1226929
Owner:Cafe4me Pty Ltd Matthew Timothy Coghill Maddrell
Filing Date: 28 February 2008
Removal Date: 14 September 2018
Specification: Class 43: Restaurant reservation services; restaurant services; restaurant services for the provision of fast food; bar services
12. Mr Lolis claims that the Unregistered Mark originally formed a barrier to the acceptance of the Trade Mark before it was removed from the Register. He is unable to comment as to why the registration was not renewed but submits that the Unregistered Mark still appears to be in use at a café located in the Sydney suburb of Surry Hills. To this end, reference is made to exhibited screenshots of the website accessible at bangbangcafe.com.au as well as customer reviews posted about this venue on the Zomato and Tripadvisor websites.
The Applicant’s evidence
13. The Rudstein Declaration provides a brief overview of the Applicant’s use of the Trade Mark. Relevantly, Ms Rudstein explains that the Applicant contemplated use of the Trade Mark in March 2016 and that first use of the Trade Mark in relation to the Claimed Services occurred on or about 15 December 2016.[6]
[6] Rudstein Declaration, [2(d)].
14. The Rudstein Declaration also responds to claims made within the Lolis Declaration. Based on her own enquiries, Ms Rudstein takes issue with particular aspects of the information disclosed in the Lolis Declaration concerning the hospitality venues located in Surry Hills, Elsternwick and Wongaling Beach.[7] For reasons that will become apparent, it is not essential to elaborate on the concerns raised by Ms Rudstein. For present purposes, it is sufficient to say that Ms Rudstein holds contrasting views to those expressed by Mr Lolis in respect of the abovementioned hospitality venues.
[7] See discussion at [8], [9] and [12] of this decision.
Section 58
15. Section 58 of the Act relevantly provides:
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.
16. The ground of opposition was particularised in the SGP as follows:
One or more identical or substantially identical BANG BANG trade mark have been used by different traders prior to the filing date of the Application and for the claimed services goods [sic] prior to the first use of the Trade Mark by the Applicant or any predecessor in title. Use of a prior identical or substantially identical BANG BANG trade marks includes but is not limited to the restaurants or cafes located at:
o337 High St, Northcote VIC 3070
o294 Glenhuntly Road, Elsternwick, Victoria, 3185
o113 Reservoir Street Surry Hills NSW 2010
o8 Wongabel St Kenmore QLD and 70 Kedron Brook Road, Wilston, QLD
oCorner Hindley St & Leigh St Adelaide, South Australia 5000
o34 Dickinson St, Wongaling Beach QLD 4852
17. To succeed under this ground of opposition, the Opponent must establish the following requirements:
the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark[8] (‘First Requirement’);
the Claimed Services are the ‘same kind of thing’ as the services for which the trade mark relied upon by the Opponent has been used[9] (‘Second Requirement’); and
a person other than the Applicant has the earlier claim to ownership based on use of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register or (b) any actual use of the Trade Mark by the Applicant[10] (‘Third Requirement’).
[8] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62].
[9] Re Hicks’ Trade Mark (1897) 3 ALR 75.
[10] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
18. As set out in the SGP, the Opponent relies on the alleged prior use by other traders of various trade marks that incorporate the words ‘BANG BANG’. For the purposes of the First Requirement, the following discussion will compare the plain words ‘BANG BANG’[11] (‘Earlier Mark’) with the Trade Mark. The rationale being, if the Earlier Mark is not found to be at least substantially identical to the Trade Mark, the same result will necessarily follow in respect of the remaining trade marks relied upon by the Opponent given they are more dissimilar to the Trade Mark by virtue of their depiction and/or additional point(s) of differentiation.
[11] As essentially depicted in the ‘294 Glenhuntly Road, Elsternwick, Victoria, 3185’ and ‘Corner Hindley St & Leigh St Adelaide, South Australia 5000’ examples set out at [16] of this decision.
19. The well established test for substantial identity was explained by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the [earlier] mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[12]
[12] [1963] HCA 66, [12].
20. More recently, in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd, the Full Court of the Federal Court observed that:
A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical.[13]
[13] [2020] FCAFC 186, [98].
21. The Trade Mark and the Earlier Mark are reproduced below:
| Trade Mark | Earlier Mark |
| BANG BANG |
22. The Trade Mark shares a similarity with the Earlier Mark insofar as its constituent elements form the words ‘BANG’ and ‘BANG’. However, notable differences exist with respect to how each trade mark has been depicted. The words in the Earlier Mark are presented with unembellished letters and in a conventional side by side manner. In contrast, the words within the Trade Mark are framed in a quadrilateral border which is delineated by two rectangular frames. Within each frame, the word ‘BANG’ is dissected in half with the resultant ‘BA’ stacked atop the ‘NG’. This quadrant style arrangement imbues the Trade Mark with ambiguity given the natural visual directionality for written English is from left to right, then top to bottom.
23. The dissimilarity between the trade marks is further accentuated by the stylised typeface utilised in the Trade Mark and its absence thereof in the Earlier Mark. The Trade Mark incorporates highly decorative and unorthodox letter shapes. Notably, there is a striking lack of internal consistency within the lettering given each ‘B’, ‘A’, ‘N’ and ‘G’ have differing proportions and unique traits. The ensuing irregularity markedly contrasts with the plain typeface and uniform depiction of the Earlier Mark.
24. In relation to the commonality of elements, the fact that each trade mark contains the same word elements does not, by itself, dictate that a finding of substantial identity must be made. As stated above, the test for substantial identity requires a ‘studied comparison’ and concepts such as imperfect recollection are irrelevant in this context. Regard must therefore be given to the specific presentation of each trade mark. To do otherwise would utterly ignore the visual impact of the respective trade marks and the influence same has on the total impression of each trade mark.
25. The decision in Optical 88 Limited v Optical 88 Pty Limited (No 2)[14] illustrates the importance of visual presentation when considering two trade marks that possess a commonality in elements. Despite being comprised of the same word and image elements, the following trade marks were determined not to be substantially identical:
[14] [2010] FCA 1380.
| ‘707 Mark[15] | Cleaning Cloth Mark (CC Mark)[16] |
[15] Extracted from Schedule 4 to Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380.
[16] Extracted from Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130, [38].
26. In concluding that the ‘707 Mark was not substantially identical to the CC Mark, Yates J observed:
… the impression created [by the CC Mark] is quite different because of the change in position of the applicant’s logo, which imparts a different orientation to the mark. This different orientation gives a sense of triangularity that also underscores the centrality and prominence of the name “OPTICAL 88” (in Chinese characters). When compared with the ‘707 mark, a substantial impression of identity does not arise. … Therefore, the supply of the cleaning cloth to Ms Sinclair does not instance a use of the ‘707 mark (with additions or alterations not substantially affecting its identity) ...[17]
[17] Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, [261]. This finding was not disturbed by the Full Court on appeal: see Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130, [35]-[39].
27. Similarly, in Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd & Anor,[18] the trade marks under comparison both contained the words ‘BLACK SHEEP’ as shown below:
[18] [2020] FCCA 1718.
| ‘DL Mark’ | ‘Mark’ |
| BLACK SHEEP |
28. Notwithstanding a commonality of word elements, the DL Mark was found to be not substantially identical with the Mark. In reaching this decision, Baird J explained:
The device element is not a separate and distinguishable part of the [DL Mark]. Part of the device element suggests a part of the letter K in the word “black”, and similarly another part of the device element forms the letter S in the word “sheep”. The device element is not divisible or discountable from the word elements, or the overall [DL Mark], but forms an integral and necessary, essential part of it.
…
The device element within the DL Mark substantially informs and affects the trade mark’s identity. Although aurally the word elements of the DL Mark may be recollected, as being a not-uncommon, colloquial expression, I do not consider that the device element can be excised from recollection of the DL Mark. It is an essential element, and a dominant cognitive cue.
I find that the essential features of the DL Mark are the words “black” and “sheep” together with the linking device forming the K of black and the S of sheep. The device element and the words are essential features. The device element strikes the eye. It gives the trade mark distinctive character and visual impact.[19]
[19] Ibid [104]-[107] (emphasis altered).
29. Evidently the words ‘BANG BANG’ form the essential feature of the Earlier Mark and also constitute an essential feature of the Trade Mark. However, in my view, the highly stylised and irregular depiction of the letters within the Trade Mark are inextricably linked to its identity. As such, it constitutes an essential feature of the Trade Mark that is independent of the words themselves. To borrow the words of Baird J, the stylised presentation of the Trade Mark ‘is not divisible or discountable from the word elements’. Rather, it is an essential feature that is embedded within the identity of the Trade Mark and unquestionably bestows same with its ‘distinctive character and visual impact’. The complete absence of any such stylisation in the Earlier Mark thus weighs heavily against a finding of substantial identity. When the trade marks are placed side by side, as they should be, and the essential features of each are borne in mind, the total impression which emerges from the comparison is one of dissimilarity. It follows that the Trade Mark is not substantially identical to the Earlier Mark.
30. Consequently, I find that the First Requirement is not satisfied. Given all three requirements outlined at [17] of this decision must be satisfied in order to establish this ground of opposition, it is not necessary to consider the remaining requirements.
31. The s 58 ground of opposition has not been established.
Decision
32. Section 55 of the Act relevantly provides:
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.
33. The Opponent has not established the ground of opposition. It follows that trade mark application number 1834510 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
34. Both parties sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
11 June 2021
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