Opposition by Big Bus Tours Limited to registration of trade mark application no. 1897730 – THE BIG BUS - in the name of Adam William Ford.

[2021] ATMO 117

TRADE MARKS ACT 1995

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

Re:Opposition by Big Bus Tours Limited to registration of trade mark application no. 1897730 – THE BIG BUS - in the name of Adam William Ford.

Delegate:	Bianca Irgang
Representation:	Opponent: Written submissions by Davies Collison Cave. Applicant: Written submissions by IP Wealth Pty Ltd.
Decision:	2021 ATMO 117 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42(b), 43, 44, 58, 58A, 60, 62(b), and 62A raised – s 41 considered and established for all services – evidence insufficient to overcome ground of opposition - trade mark registration refused.

Background

1. Adam William Ford (the ‘applicant’), filed trade mark application number 1897730 on 10 January 2018. Current details of the application are set out below:

   Trade mark:  THE BIG BUS (the ‘Trade Mark’)

   Trade mark application no: 1897730            

   Filing Date:  10 January 2018

   Specification:  Class 39: Booking agency services for sightseeing tours; Provision of information relating to tourism; Provision of tourist travel information; Reservation services for tours; Sightseeing (tourism); Tourist agency services (travel); Tourist travel reservation services

   Endorsements:  Provisions of paragraph 44(4) and/or Reg 4.15A(5) applied.

2. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 8 July 2019. Subsequently, Big Bus Tours Limited (the ‘opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].The applicant then filed its Notice of Intention to Defend. The parties then filed evidence in accordance with the Trade Mark Regulations 1995 (the ‘Regulations’).

   [1] Which together constitute ‘the Notice’.

3. The opposition came before me as a delegate of the Registrar of Trade Marks on 17 May 2021. The applicant filed written submissions via his legal representatives IP Wealth Pty Ltd. The opponent filed written submissions via its legal representatives, Davies Collison Cave.

   Grounds of Opposition

4. The Notice nominated nine grounds of opposition under the Trade Marks Act 1995 (‘the Act’) being ss 41, 42(b), 43, 44, 58, 58A, 60, 62(b) and 62A. The onus is on the opponent to establish one or more of these grounds. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach of Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

   [2] [2015] FCAFC 156, [133].

   [3] [2006] FCA 1663, [26].

   Evidence

5. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of Andrew Furlong (‘Furlong’) dated 9 March 2020 together with Exhibits AF-1 to AF-11

   Evidence in Answer

   ·Declaration of Adam William Ford (‘Ford’) dated 19 May 2020 together with Exhibits AWF-1 to AWF-28

   Discussion

   Section 41 - Trade mark not distinguishing applicant’s goods or services

6. Section 41 provides:

   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  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).

7. Section 41 of the Act provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods and services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition, the onus is on the opponent to make its case under s 41. Therefore, the opponent must establish that the applicant’s Trade Mark is not capable of distinguishing the services in question.

8. Turning to the relevant consideration of whether a trade mark is inherently adapted to distinguish, in the case of Clark Equipment Co v Registrar of Trade Marks Kitto J found:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

   …

   [T]he question [is] 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]

   [4] (1964) 111 CLR 511 [513–14].

9. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[5](‘Cantarella’) noted the following part of Kitto J’s test:

   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.

   [5] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Brennan and Kiefel JJ.

10. Considering this passage the High Court explained that the inherent adaptation of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods (or, as here, the designated services)[6].

    [6] Cantarella  [28], [30] per French CJ, Brennan and Kiefel JJ.

11. The opponent presses the s 41 ground based upon:

    ·The term THE BIG BUS is not inherently adapted to distinguish the class 39 services;

    ·The applicant has not, on the evidence, used the Trade Mark as applied for before the filing date to such an extent that the Trade Mark does or will distinguish the class 39 services as being those of the applicant; and

    ·Section 41 of the Act requires the opposed application to be refused in these circumstances.

12. The opponent argues that the ordinary signification of the words THE BIG BUS is straightforward: a large bus that is typically used for the transport of people. The opponent goes on to state that there can be no question that consumers and persons trading in sightseeing tours, travel, and tourism will understand THE BIG BUS by its ordinary, plain English meaning. Thus, THE BIG BUS is descriptive of a characteristic of the designated services because it directly describes a common mode of transport that is offered to consumers looking for sightseeing tours and travel information.

13. Naturally, the applicant argues the opposite view. The applicant states that THE BIG BUS is inherently adapted to distinguish the applicant’s services from those of other traders because:

    ·The fact that the Trade Mark is composed of ordinary English words which when combined may have an understandable meaning does not immediately infer that the Trade Mark is not capable of distinguishing;

    ·The Trade Mark is sufficiently capable of distinguishing given it is a unique and distinctive name which is not a common way to describe the services; and

    ·The Trade Mark may suggest a meaning to the consumer, but the consumer would have to do significant mental work to derive and apply a descriptive meaning to the services.

14. In considering the Trade Mark it is clear to me that the ordinary signification which may be applied to the expression “THE BIG BUS” by the general consumer is likely to be that of a ‘large bus’. The word “THE” at the beginning of the Trade Mark is about as commonly used as a word can be. It has limited value when it comes to distinguishing the services of one trader from another. The terms “BIG” and “BUS” are likely to be more memorable than “THE”.

15. The applicant has argued that the Trade Mark is sufficiently capable of distinguishing the designated sightseeing and tourism services. The applicant refers to the Laser Tracer case[7] where the OHIM Third Board of Appeal stated:

    “…a trade mark is considered to be allusive whenever it makes reference to certain characteristics of the products or services in an indirect way … or through a mental association process which requires a special effort on the part of consumers who are expected to transform a suggestive or emotional message into a rational evaluation.”

    [7] Laser Tracer, Case R0062/1998-3, 11 (Office for Harmonization in the Internal Market).

16. I am not persuaded by the Applicant’s reasoning. It is common for large buses to be used to provide sight-seeing tours and tourism services. I am not satisfied that it would take a significant mental leap on the part of a consumer seeking a sightseeing tour to envisage that any such services offered under the Trade Mark would relate to sight-seeing on a large/big bus. Indeed, the Trade Mark clearly indicates that the applicant’s sightseeing and tourism services are provided via a large bus. I also note Mr Ford states in his declaration:

    “The Applicant’s Mark was chosen as a reference to the large coaches which were a common mode of transport seen on the television series, and as a metaphor for travel, going places, discovering new things, and enjoying the services of a guide to provide information about a destination.”

17. Turning to the designated services of the applicant, the application covers Booking agency services for sightseeing tours; Provision of information relating to tourism; Provision of tourist travel information; Reservation services for tours; Sightseeing (tourism); Tourist agency services (travel); Tourist travel reservation services. As an aside I note from the applicant’s evidence that many of the applicant’s services of interest are tourism and sightseeing via bus.

18. When considering whether the Trade Mark is capable of distinguishing the applicant’s services from those of another trader, I am influenced by the fact that the expression “THE BIG BUS” refers to an item rather than a service. However, it is clear from the evidence provided by the opponent that “THE BIG BUS” or “BIG BUS” are commonly understood and used terms within the tourism and sightseeing industry within Australia. It is also clear from the evidence that a consumer would not be wrong in assuming that a tourism retailer selling services under the Trade Mark was in the business of sight-seeing tours via bus. 

19. Given all of the above, I am satisfied that the trade mark is only to some extent inherently adapted to distinguish. Therefore, under s 41(4), I must consider whether the Trade Mark is capable of distinguishing based on the extent to which the Trade Mark is inherently adapted to distinguish, the use or intended use of the Trade Mark, and other relevant circumstances.

    Application of s 41(4)

20. The Trade Mark is the expression THE BIG BUS and I must consider whether the applicant’s evidence establishes that the Trade Mark is either currently acting or will act, in its own right, as a badge of origin for the applicant when applied to its tourism and sight-seeing services.

21. Mr Ford is the founder of the business known as Peppercorn Productions and The Big Bus tour and travel guide. He states that the applicant is an online travel agency that sells day tours, guided experiences, and tourism-based activities to the public via its own website, and via affiliate relationships with third party platforms. The types of tours offered include walking tours, city tours, scenic day tours, day cruises, wine tours, and scenic flights. Day tours, guided experiences, and tourism-based activities constitute 95% of the Business’s annual sales.

22. According to Mr Ford, between 2013 and 2015, the applicant co-produced three seasons of a television series on Network Ten, called Tour the World. In September 2014, he chose and adopted the Trade Mark as the name of the online travel blog associated with the Tour the World television series, providing information relating to tourism via the website located at thebigbus.com.au.

23. Between 2014 and 2016, Mr Ford claims the applicant established itself as a source of information relating to tourism. He states:

    “From a standing start we embarked on a significant publicity and promotional drive, including television, radio and editorial exposure for the Applicant’s Mark. We established relationships with more than 30 Australian travel writers and began actively building a catalogue of editorial stories on hundreds of travel destinations. Today the Website offers readers access to over 600 stories, including 117 city guides. Many of these are regional Australian tourism centres, which indicates our commitment to promoting Australian tourism more broadly than simply selling tours. The breadth and quality of content that we offer today under the Applicant’s Mark represents a very significant investment in effort, time, commitment and capital. In April 2016, the Business began selling day tours and guided experiences via the Website. Sales were modest to begin with, but have grown steadily over the subsequent four years.”

24. While all of this sounds impressive, the evidence reveals the reality of the situation. I note that the trade marks that were adopted and used by the applicant include composite trade marks which include stylization and graphic devices rather than merely the applied for Trade Mark.

25. In 2015, the original logo was designed as shown below:

26. In March 2016, the applicant updated its trade mark to the following:

27. The applicant has argued that the use of the above composite trade marks is use of the Trade Mark as the only way to pronounce or describe the Trade Mark is as “The Big Bus”. However, I am not persuaded by this reasoning. While it is true that the graphic representation in the above trade marks is a bus, there are other elements to the trade marks apart from the words and bus devices. There is the differing placement of the graphics and words within the trade marks as well as emphasis placed on words such as “BIG” and “BUS” that create cognitive cues for the consumer which link big red tour buses to the words. The applicant’s trade marks are more than just the words “THE BIG BUS” with a nondescript bus device to emphasize the words. The bus device is located in the middle of the first of the above trade marks, as though heading towards the consumer. In the second trade mark, the tour bus is incomplete and poking around the words with the word BIG in a prominent position on the device. These placements of the devices are more than the bus device acting to emphasize the words. I am therefore not satisfied that the applicant’s use of the above composite trade marks is use of the applied for Trade Mark.

28. In considering the applicant’s evidence of use of the applied for Trade Mark and not the composite trade marks, use of the Trade Mark is limited to occasions where the graphic devices cannot appropriately or physically be used such as aural commercials or interviews[8], the domain name and within the body of text paragraphs[10].

    [8] Exhibits AWF-15 and AWF-16 accompanying Ford declaration.

    [9] Exhibit AWF-1 accompanying Ford declaration.

    [10] Exhibit AWF-2 accompanying Ford declaration.

29. The Applicant has provided figures for advertising expenditure and revenue relating to use of the Trade Mark. However, I note that these figures would encompass all of the various BIG BUS trade marks used by the applicant, not just the plain words comprising the Trade Mark. In any event, when I consider the applicant’s evidence of expenditure on advertising and the revenue generated through sales of tourism and sight-seeing services contained in the Ford declaration, I note that the figures provided are modest when the size of the tourism and sight-seeing industry in Australia is taken into account. I also note that given the size of the tourism and sightseeing industry in Australia, the numbers of hits on its advertising campaigns are also relatively modest.

30. I am also mindful of the fact that the applicant’s use of its trade marks prior to 2016 is for a Blog supporting its television series which the opponent has pointed out isn’t necessarily use of the trade marks on the applied for services.

31. Even if I were to take into account all of the applicant’s use of all of its various trade marks, at its height, the applicant’s evidence demonstrates only modest use of these various trade marks and this evidence does not sufficiently advance the applicant’s case for registration of the Trade Mark.

32. Taking all of the above factors into account, I am satisfied that the Trade Mark is not capable of distinguishing having regard to the matters set out in s 41(4).

    Decision

33. Section 55 of the Act 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:          Forlimitationssee section 6.

1. I find that the opponent has met its onus in terms of establishing the ground of opposition under s 41. Accordingly I refuse to register trade mark application no. 1897730.

   Costs

2. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under s 221 of the Act and Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Oppositions and Hearings

   11 October 2021