Jason Gazal Trading Pty Ltd v Emile Greiss

[2002] ATMO 36

TRADE MARKS ACT 1995

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

Re:Opposition by Jason Gazal Trading Pty Ltd to registration of trade mark application 824838(3, 25) - MANGO TANGO (Logo) - filed in the name of Emile Greiss.

Background

On 24 February 2000, Emile Greiss (‘Mr Greiss’) of Banksia in New South Wales, filed application 824838 to register the trade mark appearing below, in Classes 3 and 25 of the International (Nice) Classification of Goods and Services in respect of:

Class 3

Perfumes, cosmetics, toiletries

Class 25

Designer clothing, including footwear

 

On 2 November 2000, the application was advertised as accepted in the Australian Official Journal of Trade Marks. On 30 March 2001, after seeking and receiving an extension of time in which to do so, Jason Gazal Trading Pty Ltd (‘Gazal’ or 'the opponent') of Peakhurst in New South Wales filed Notice of Opposition ('the Notice') to the registration of the trade mark.  The grounds of opposition specified in the Notice are wide-ranging and I will discuss these more fully below.

Reasons

Neither party requested a hearing in this matter. Section 55 of the Trade Marks Act 1995, ('the Act') provides:

55  Decision

Unless the proceedings are discontinued or dismissed, 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.

The issue has therefore come to me, a delegate of the Registrar of Trade Marks, to decide on the written record on the basis of the material on file.  Gazal has put in written submission by its solicitors, Corrs Chambers Westgarth of Brisbane.

The Evidence

The evidence served and filed in relation to this matter consists of a statutory declaration in support of the opposition by Chawki Gazal, manager of Gazal, the opponent.

The declaration is briefly stated.  Mr Gazal states that the opponent uses the trade mark MANGO on clothing, footwear and accessories, being menswear, ladies' wear and girls', boys', toddlers' and infants' wear.  Gazal has registered its trade marks - details of the Gazal registrations are:

Registered Number:    384615
Priority date:              30 November 1982
Class:  25
Goods:  Clothing included in this class
Trade mark:                MANGO

Registered Number:    417238
Priority Date:             24 October 1984
Class:  25
Goods:  All goods included in Class 25
Trade mark:                MANGO

Registered Number:    477531
Priority Date:             1 December 1987
Class:  25
Goods:  Clothing included in this class
Trade Mark:               

Registered Number:    812197
Priority Date:             1 November 1999
Class:  25
Goods:  Clothing, clothing accessories, headwear, footwear
Trade Mark:               Mini Mango

Gazal supplies clothing bearing the trade mark MANGO to Best & Less retail stores of which there are, says Mr Gazal, 120 throughout Australia.  Mr Gazal attests to some $40 million of sales by Gazal.  He says, "The trading volumes of the [Gazal goods] are $15,000,000 of branded products, and $25,000,000 of the Opponent's own products".  I do not know what is meant by this statement - it is not expressly stated that the value of sales, given by Mr Gazal, all relate to the trade mark MANGO.  It is possible that Mr Gazal means that the opponent makes some of its goods and has other goods made for it, but they all carry the trade mark MANGO (or its derivative) and that the division of the values given is on this basis.  However, it is also possible that the smaller amount relates to the trade mark MANGO and the other relates to some other trade marks owned by Gazal.  Further, it is not stated in the Gazal declaration when the use of the opponent's trade mark started, whether the sales figures given are cumulative or whether they are from within one financial year.

Four attachments to the Gazal declaration show the trade mark in use.  They each bear the expression 'since 1982' or similar, so I infer that the trade mark has been in use since 1982.

Summary

The written submissions of the opponent address the provisions of sections 44 and 60 of the Act. However, the evidence does not, I consider, support opposition in terms of section 60 of the Act since it is very imprecisely couched, as I have outlined, above. I am hesitant to place much weight on evidence of reputation which is cryptic, vague and open to differing interpretations. The evidence does not expressly show, for instance, what type of clothing is made or sold by the opponent and although the declaration states that the trade mark has been used on footwear, it is not clear whether this is socks and stockings or shoes.

However, had the evidence established the reputation of the opponent's trade mark in relation to clothing, I do not consider that the outcome of these Reasons would have altered.  Without evidence to the contrary, the potential linkage in the public mind between perfumery of one trader and the clothing of another sold in a shop such as Best & Less is somewhat tenuous and not such that it could give rise to deception and confusion.

Section 44

Relevant to these reasons, section 44 of the Act provides:

44  Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Consequently, there are a number of factors for my consideration: whether the,

·trade marks are substantially identical or deceptively similar

·goods are the same goods

·priority dates of the Gazal registrations are earlier than that of the opposed application.

As the priority dates of the opponent's registrations are earlier than that of the opposed application, I will consider the first two dot-points, above.

The Goods

Section 14 of the Act defines the words 'similar goods' which occur within section 44::

14  Definition of similar goods and similar services

(1)For the purposes of this Act, goods are similar to other goods:

(a)if they are the same as the other goods; or

(b)if they are of the same description as that of the other goods.

(2)For the purposes of this Act, services are similar to other services:

(a)if they are the same as the other services; or

(b)if they are of the same description as that of the other services.

The term 'goods of the same description' is discussed in cases such as Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 1A IPR 465 at 467, where Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ said:

There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek’s Application (1946) 63 RPC 59; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the assistant comptroller elaborated on the observations of Romer J in the following manner.

In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application Romer J classified these various factors under three heads, viz the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”.

Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 at 372.

Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Aust) Ltd v Boden, supra, at 94[1] when he said:

[1] Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84

What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments.

The specifications of goods of the parties in Class 25 contain those which are either the same goods or goods of the same description: the "designer clothing" of Mr Greiss is encapsulated within the generality of the expression "all goods in Class 25" (or similar) within the specifications of goods of Gazal.  However, the Class 3 goods of the opposed application "perfumes, cosmetics, toiletries" are not, by the above criteria, goods of the same description as the goods in respect of which the opponent's trade mark is registered in Class 25.  Perfumery, cosmetics and toiletries are not normally made by those who make clothing; such goods are not normally distributed along the same trade channels; and, they are not normally sold across the same counter.

The trade marks

The assessment of whether trade marks are substantially identical is based on an objective, side-by-side assessment of the similarities of the trade marks.  In the words of Windeyer J in The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd. (1963) 109 CLR 407, at 415:

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 registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106

Although the word MANGO in the opposed trade mark qualifies the word TANGO, the word TANGO has no obvious reference to the character or quality of the goods; it thus does not lack inherent adaptation to distinguish and therefore should not be discounted to any extent from the opposed trade mark during the comparison: PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 (17 November 1999).

As the word TANGO in the opposed trade mark represents an obvious difference between the trade marks, I consider that the trade marks are not substantially identical.

In assessing whether trade marks are deceptively similar, a subjective comparison is applied.  In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described the test as follows:

But, in the end, it becomes a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

In deciding this question, the marks ought not, of course, 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 effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part. 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 course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

The word TANGO denotes a Latin American dance, or the music for this activity.  Viewed in this light, there is room for the view that the word TANGO in the opposed trade mark is of assistance in distinguishing the opponent's trade mark from it.  However, the word MANGO in the opposed trade mark is the first word in the trade mark: in an analogous way, in London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264 Sargant LJ commented on the importance of prefixes when comparing trade marks. Aurally, the word MANGO operates in the opposed trade mark in much the same way as does a prefix.

In my visual impression of the opposed trade mark, I note that the placement of the word TANGO in the opposed trade mark is at the bottom of the oval, or ellipse, in which it is contained and that the word TANGO is in the upper portion and thus the more dominant, or stressed, element.  Most people will read from the top of a document or label.  Further, the word MANGO is in a larger font than is the word TANGO.  The word MANGO is separated from the word TANGO in the opposed trade mark by a horizontal bar.  Thus any unity that might have been formed between the words MANGO and TANGO by the strongly alliterate effect of the juxtaposition of the words, has largely been lost.  In the opposed trade mark, the word MANGO is, thus, in a position where it is stressed and the word TANGO is de-emphasised and subsidiary to it.

The issue is whether, by these similarities, the trade marks are deceptively similar. Section 10 of the Act provides:

10  Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

In Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), French J said, at paragraph 50:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973 129 CLR 353 at 362:

"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

French J also said in Woolworths, at paragraph 45:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

I am satisfied that the opposed trade mark is deceptively similar to the opponent's registered trade marks 384615 and 417238, which are in respect of the word trade mark MANGO on its own. 

The goods at issue are not all such that the normal person will take a great deal of time or care in shopping for them: - LANCER- Trade Mark Application [1987] RPC 303 [LANCER versus LANCIA for cars]. Although the goods in the opposed application are limited to 'designer clothing', it is not clear to me that this means that such goods are of a high price: rather it is that the goods are well-tailored, or bear striking prints or colours, whatever their cost.

The word MANGO, in the opposed trade mark, is stressed, as discussed above.

In the retail of clothing, trade marks are often placed, and inspected by the potential purchaser, on swing-tags or labels.  In shops, when clothing is hung in racks or placed in bins, as are, for example, socks and underwear, its is likely that the inspection of such labels or swing-tags is likely to be cursory.  Under these circumstances, the word TANGO, in smaller print, and an inferior position at the bottom of the label, is likely to escape attention or be of diminished significance - and thus not be of assistance in distinguishing between the trade marks.  The purchaser is likely under these circumstances to take the one trade mark for the other.  The solicitors for the opponent also make submission that the word TANGO (in the opposed trade mark) is likely to be seen as a 'tag line' for the word MANGO and point to their client's use of the 'tag line' "since 1982" in on the labels and swing tags in their evidence.  This is, I think, another way of saying that the immediate significance of the word TANGO in the opposed trade mark is likely to be overlooked when the goods are inspected by potential purchasers in retail outlets due to its positioning and relative size on the label.

Summary

I have found that the Class 25 goods of the parties are the same goods, or goods of the same description. I also satisfied that the trade mark MANGO of the opponent under registrations 384615 and 417238 is deceptively similar to the opposed trade mark. These registrations owned by the opponent have earlier priority dates than that of the opposed application. Gazal has therefore established its opposition in terms of section 44 of the Act in relation to the Class 25 goods.

Decision

I therefore refuse to register the application in its entirety.  However, if there is no appeal from these Reasons, Mr Greiss, the applicant, may, within two weeks of elapse of the appeal period, apply to delete the Class 25 claim and the goods therein from its application.  If Mr Greiss does this within the required time, the application may proceed to registration for the goods currently specified within Class 3 on the application. 

Costs

Section 221 of the Act provides:

221  Costs awarded by Registrar

(1)The Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her.

(2)A party desiring to obtain costs must apply to the Registrar in accordance with the regulations.

(3)If a party is ordered to pay the costs of another party, the costs may be recovered in a court of competent jurisdiction as a debt due by the first party to the other party.

The opponent has requested its costs in this matter.  As opponent has succeeded, I order that the applicant pay the opponent's costs according to the scale at schedule 8 to the trade mark regulations.

Ian Thompson
Hearing Officer

29 April 2002