By way of introduction, perhaps the most interesting aspect of this decision is that the Opponent provided evidence that in China ‘Jian Bing ’ describes a type of street food, being a very thin pancake. (The hearing officer decided that this was neither here nor there.) An image on Wikipedia suggests that a “jian bing” is very similar to a crepe, and appears to have a very long tradition in China – it is accredited by legend with helping soldiers win a battle. In this particular battle, the Opponent was successful.
On 7 March 2014, Bing Go Street Food Pty (the Applicant) filed a trade mark registration application for AU TM 1610104, which consists of a circle logo containing the name “Bing Go” and the words “Street Food” in smaller case underneath (see image below).
The trade mark was filed under Class 43 services covering restaurants, café and snack bars, and take away food and drinks. The application was opposed by Bing Boy IP Pty Ltd (the Opponent) on various grounds, with the delegate of the Trade Mark Registrar focusing mainly on the issue of substantial identity and deceptive similarity.
The Opponent relied upon two of its registered trademarks:
a) TM 1589166, which is for the term “Bing Boy,” for Class 43 goods and services similar to the Applicant’s TM, and
b) TM 1420450, which is for a logo consisting of a circle with a yellow visual element that looks like a smiling mouth, alongside the name “bing boy,” with the phrase “urban asian street food” rendered underneath using a much smaller font: . This TM is also registered under the same Class 43 goods and services.
Both of the Opponent’s TMs have earlier priority dates, and fall into the same classification as the Applicant’s trade mark.
In published reasons for decision, the hearing officer was not convinced that the Opponent’s TM 1589166 (“Bing Boy”) is identical nor deceptively similar to the Applicant’s “Bing Go” trade mark, despite both having “Bing” as the core, prefix element (the “leading element” as the hearing officer put it. In a side by side comparison, the trade marks were not substantially identical.
(It is worth noting that the Opponent provided evidence that in China ‘Jian Bing ’ describes a type of street food, being a very thin pancake, but the hearing officer decided that this was neither here nor there.)
In respective similarity, the hearing officer applied the well-worn test in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd:
[T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.
The hearing officer found in favor of the Opponent when it comes to assessing deceptive similarity between TM 1420450 and the Applicant’s trade mark. Both are device marks that rely on “BING” as the dominant element, both use a circular device and use the words “street food.”
The hearing officer addressed the presence of the word “GO” in the Applicant’s trade mark, but noted that it would most likely lead to customers thinking that it is a takeaway service for the Opponent’s brand, especially due to the presence of “street food” on both marks.