Mambo Graphics Pty Ltd v the Herbal Tea Company Pty Ltd

[2003] ATMO 5

TRADE MARKS ACT 1995

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

Re:Opposition by Mambo Graphics Pty Ltd to registration of trade mark application 852260(3) - mambo - filed in the name of The Herbal Tea Company Pty Ltd.

Background

On 29 September 2000, The Herbal Tea Company Pty Ltd (Herbal), of Mont Albert in the State of Victoria, applied for registration of the following trade mark:

mambo

The application covered the following goods in class 3: skin care preparations; body care preparations; cosmetics; hair care including shampoos, conditioners, hair colors and tints; bleaching preparations; toothpastes; aromatherapy products; essential oils, massage oils; soaps; bath salts; perfumes; deodorants.

The application was duly examined and accepted for registration.  The acceptance was advertised in the Australian Official Journal of Trade Marks on 1 February 2001.

On 30 April 2001, Mambo Graphics Pty Limited (Mambo) of Rushcutters Bay in the State of New Sought Wales lodged a notice of opposition to the registration of the trade mark. The grounds contained in the notice of opposition relied on sections 42, 43, 44, 58 and 60 of the Trade Marks Act 1995 (the Act).

In due course, the matter progressed through the evidentiary stages and then to hearing in Sydney on 25 October 2002 before me, as delegate of the Registrar of Trade Marks.

Herbal was represented at the hearing by Mr Peter Hallett of Griffith Hack.  Mambo was represented by Ms Katrina Osgerby who was assisted by Mr Geoff Davidson.

Evidence

The evidence relied on at the hearing is as follows:

Name	Date	Exhibits	Referred to as
Evidence in Support
Andrew Frederick Rich	06.08.01	AFR1-A through AFR1-K	Rich 1
Katrina Jane Osgerby	14.08.01	KJO1-A	Osgerby 1
Evidence in Answer
Andre Michael Hopfner	14.06.02	AMH-1 through AMH-3	Hopfner
Evidence in Reply
Katrina Jane Osgerby	29.08.02	KJO2-A through KJO2-D	Osgerby 2
Andrew Frederick Rich	30.08.02	AFR2-A	Rich 2

By way of summary, Mr Rich is the International Director of Mambo.  He has been associated with Mambo since 1984, and has held his current position since March 2000.  Mr Rich's evidence sets out the history of Mambo and its trade activities (including trade marks, promotions and sales).  He also provides his opinion on the extent of the general reputation of Mambo and its trade marks.  The Exhibits to his declarations provide examples of trade mark registrations, promotional activities materials and press reporting of Mambo's activities and clothing. 

Ms Osgerby acts on behalf of Mambo in this matter.  Her evidence sets out the results of various trade mark searches.  The trade mark searches cover not only the current parties, but also other manufacturers who could be described as members of the same trade as Mambo.

Mr Hopfner is a director of Mambo Cosmetics Pty Ltd (MCPL) and states that he is authorised to make the declaration on behalf of Herbal.  Mr Hopfner states that MCPL uses the applied-for trade mark under licence from Herbal.  He also states that he was the person responsible for the selection of the applied-for trade mark and that he decided on mambo because it was a Latin American dance, it was vibrant and exciting, suggestive of colour, movement and the sophistication of 1950s night clubs. Mr Hopfner states that at no stage did he or Herbal intend to associate Herbal's products with Mambo or take advantage of any reputation which Mambo had in its own field.  Mr Hopfner also provides photographs of MCPL's mambo toiletries.  While many of these photos are blurred, the following products can be ascertained:

• Mambo sexMagnet Glamour Babe Kit

• Mambo beachBabe After Sun Cooling Gel

• Mambo beachBabe Tropical Body Scrub

• Mambo hotPassion Massage Oil

• Mambo Bubble Bath

• Mambo hotPassion Romantic Nights Kit

• Mambo beachBabe Best Body on the Beach Kit

It is not clear from Mr Hopfner's evidence whether these products represent the whole of MCPL's product range, or what the "Kits" include.

Mr Hopfner also provides some opinion evidence on the likelihood of deception or confusion occurring as the result of MCPL's use of mambo on cosmetics.

In reply to Mr Hopfner's assertion that he and Herbal came to the trade mark mambo innocently and without any intention to associate MCPL's products with Mambo or to trade off Mambo's reputation, Mr Osgerby exhibited a trade mark search which indicated that Herbal had applied for the trade mark oshkosh b'gosh on the same day as the present application was filed.  The oshkosh b'gosh application (number 852384) covered roughly the same goods as the mambo application.  The application for oshkosh b'gosh has now lapsed.  In so far as this information might have been relevant to the current dispute, for the reasons that follow, I have not found it necessary to have recourse to the information, nor to make any findings in relation to it. 

Grounds and Findings

Because of the particular way that the case was argued, I will address the grounds of opposition in the order in which they were argued at the hearing.

Section 60
Section 60 provides:

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.

Mambo asserts that the applied-for trade mark:

1. is substantially identical with its registered MAMBO trade marks (Nos. 528575, 547908, 595330 and 624148) or deceptively similar to its registered 100% MAMBO trade marks (Nos. 438874, 442834, 493610, and 496512);

2. that at least one of those trade marks had acquired the requisite reputation prior to 29 September 2000; and

3. because of that reputation, use of the trade mark mambo would be likely to deceive or cause confusion.

If Mambo is able to establish these elements, then the s.60 ground would be made out.

I am satisfied, for the reasons that follow, that the ground is made out in relation to surf, beach and watersports related goods.  I am satisfied that while Mambo's reputation may have been originally garnered in relation to surf clothing and surf accessories, by the time the application was filed the reputation was much broader.  The reputation was sufficiently wide and well known, and consumers were sufficiently cognisant of the general concept of brand extension to the same type of goods, that there was and remains a real, tangible risk that a reasonable number of consumers will be deceived or confused in the sense that they will be caused to wonder whether the Herbal or MCPL's goods are in some way produced by, connected with or in some way endorsed by Mambo when those goods are sold in a certain way and through certain trade channels.

My reasons for these findings are as follows.

The trade marks on which Mambo relies are as follows:

Trade Mark No.	Trade Mark	Priority Date	Goods
528575	MAMBO	09.02.90	Class 25 Clothing, footwear and headgear
547908	MAMBO	19.12.90	Class 24 Textiles and textile goods in this class including furnishing and curtain fabrics, bed linen; all other goods in this class
595330	MAMBO	05.02.93	Class 14 Horological and chronometric instruments including watches and clocks; jewellery; all other goods included in this class
624148	MAMBO	04.03.94	Class 18 Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; luggage; handbags; wallets; backpacks; umbrellas, parasols and walking sticks; all other goods included in this class
438874	100% MAMBO	07.01.86	Class 25 Manufactured clothing
442834	100% MAMBO	26.03.86	Class 28 Surfboards in this class, surfskis, sailboards and any other watercraft in this class
493610	100% MAMBO	19.08.88	Class 18 Goods made of leather or imitations of leather; all other goods included in this class
496512	100% MAMBO	30.09.88	Class 9 All goods in this class including spectacles and sunglasses and parts and accessories therefor included in this class

In s.60 terms, there is no need to rely on only registered trade marks, however Mambo has chosen to do so.

The relevant tests for determining substantial identity, deceptive similarity and the likelihood of deception or confusion are the well known ones laid down in cases such as Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[1], Australian Woollen Mills Ltd v F.S. Walton & Co Ltd[2], Pianotist Co's Appn[3], and Woolworths v Registrar of Trade Marks[4]. 

[1] (1963) 109 CLR 407, 415

[2] (1937) 58 CLR 641 at 658

[3] (1906) 23 RPC 774

[4] 45 IPR 411

Applying the tests for substantial identity and deceptive similarity, I am satisfied that the applied-for trade mark mambo is substantially identical with MAMBO and deceptively similar to 100% MAMBO.

In terms of reputation, both parties are in agreement that Mambo enjoys a reputation in the mark MAMBO for surf clothing, and that the reputation preceded the application. However, the parties do not agree as to the extent of that reputation - either in terms of the breadth of goods in which the reputation subsists, or the depth of penetration of that reputation amongst consumers. 

Herbal submits that the reputation is limited to one of "loud" or "colourful" shirts and surf clothing generally.  It disputes that Mambo has established, on the evidence, any reputation for surf accessories (including articles such as watches).  In turn, as there is no evidence that the reputation extends beyond colourful shirts, Mambo has failed to establish how or why consumers would be deceived or confused if the trade mark mambo was used in relation to the applied-for class 3 goods.

Mambo argues that its reputation can be reasonably inferred from the volume of past sales, advertising and promotion, and the trade marks' "iconic" status in Australian culture.  Further, the reputation extends not only to the colourful shirts to which Herbal referred, but also includes surf clothing and accessories generally. 

On the basis of the evidence provided by Mr Rich, I am satisfied that Mambo has a reputation which stretches beyond being known as the "loud shirt people" as Mr Hallett described it.  Taking into account the brochures and advertising material showing a variety of products, the various print articles (including those which appeared in Australian newspapers at various times, including the Sydney Olympics), and the dollar value of Australian and worldwide sales in the years before the application date,  I am satisfied that Mambo has a substantial Australian reputation which covers "surf, beach and watersports related products" rather than merely "surf related clothing".  The reputation had been garnered in both their MAMBO and 100% MAMBO trade marks.  The reputation existed at the application date, and it still continues. 

The next question is therefore, whether, as a result of the reputation, consumers, when presented with the applicant's goods carrying the trade mark mambo, would be deceived or confused in the sense that they will be caused to wonder as to whether Mambo products and the applicant's products are closely related or share the same trade source - per French J in Registrar of Trade Marks v Woolworths supra.

Herbal submits that it is inappropriate for a Hearing Officer, in the absence of evidence, to speculate or rely on subjective personal knowledge or belief as to whether the goods in question might be sold in specialist stores, such as surf stores,  or where the goods will be placed in those stores.  I do not disagree with that submission, except to the extent that it is open to Hearing Officers to determine the notional use of the goods and trade mark in question.  In assessing normal use, the Hearing Officer must take into account the breadth of opportunities which are open to the trade mark owner.  Therefore, the goods in question and the trade channels through which they are sold must be interpreted liberally, although reasonably.  Here, I am satisfied that the applied-for trade mark has already been applied to "surf" or "beach" type products.  By the applicant's own evidence, the applied-for trade mark has been used in relation to the following products:

• Mambo beachBabe After Sun Cooling Gel

• Mambo beachBabe Tropical Body Scrub; and

• Mambo beachBabe Best Body on the Beach Kit.

There is nothing subjective or personal in my determination that these products allude to surf or beach culture.  Rather, my determination rests on the evidence put before me by the applicant.  I do not believe, on the basis of this evidence, that it is unreasonable or fanciful to conclude that these particular products may be sold in surf stores, or in close proximity with surf clothing and accessories.  I believe that this is line with the "fair and normal use" test to which Evershed J referred to in Smith Hayden & Co Ltd's Application[5] in relation to goods.  I am satisfied that it is reasonable to conclude that one or more of the trade channels for the applicant's products will be the same as the opponent's.  It is in these overlapping channels where the likelihood of deception or confusion occurring will be the highest.  I am not at liberty to ignore this risk simply because the trade channel forms only one of what could be many trade channels.  

[5] (1946) RPC 97 (Ch.D.)

In terms of the evidence of use to date, the High Court found in Campomar Sociedad, Limitada & Anor v Nike International Ltd & Anor[6] that the inclusion of qualifying or descriptive elements on products will be sufficient to transform a non-infringing use of a trade mark into an infringing one.  Specifically, the High Court confirmed the decision of Burchett J in the Full Federal Court in finding that while NIKE solus did not infringe the rights of Nike International Limited in the particular circumstances of the case, NIKE SPORTS FRAGRANCE did.  Here, while MAMBO solus may not lead to deception or confusion amongst consumers, mambo used in conjunction with the word "beach" or words which allude to beach, surfing or watersports culture or activities, is reasonably likely to. 

[6] 169 ALR 677

In terms of the method of sale, the Courts in Campomar had specific evidence before them as to how the goods were actually sold.  The evidence established that the NIKE SPORTS FRAGRANCE had been sold in pharmacies, in close proximity to ADIDAS branded fragrances.  As a result, the Court found that consumers would be likely to wonder whether there was some connection between Campomar's product and Nike International.  In the present case, there is nothing before me here to show use of the applied-for trade mark in that way.  Herbal submits that in the absence of such evidence, Mambo has failed to satisfy its onus of establishing that Class 3 goods will be typically sold alongside or near clothing.  As a consequence, Mambo cannot meet its onus in showing that consumers were reasonably likely to be mislead or deceived into thinking that the applicant's goods were in some way connected with Mambo.  To my mind, Herbal's submission is based on two unsupportable presumptions - that the reputation in MAMBO and 100% MAMBO is limited to clothing, and that the opponent must show that the applicant's products will typically be sold alongside clothing. 

I have already indicated that the reputation in MAMBO and 100% MAMBO extends beyond clothing, and encompasses surf, beach and watersports related products. 

I have already also found that it is not unreasonable or fanciful to conclude that at least some of the applicant's products will be sold in close proximity to surf related products.  The quantitative "typical sale" test which Herbal seeks to apply to the present case is too limited, and fails to have proper regard for the more appropriate, qualitative "fair and normal" test.  The more appropriate test is whether, in the normal course of trade, and looking at the normal practices of manufacturers and retailers, the applicant's goods would be sold in close proximity to surf related products.  I believe that they would.

In terms of the practices of other manufactures and the education of consumers in relation to brand extension, Mambo submits, and the evidence demonstrates, that various surfwear clothing companies have taken out trade mark registrations for Class 3 goods.  The companies include Rip Curl, Stussy and Quicksilver.  Mambo has also provided details of trade mark registrations for Class 3 goods owned by other clothing manufacturers, including Mossimo, Sportsgirl and Country Road.  While these are useful in showing that other traders have taken steps to protect the  reputation of their clothing trade marks and/or they intend to broaden their range of products to include Class 3 goods, the registrations do not satisfy me that there has been actual use.  Therefore, they are not evidence of a general, consumer-recognised practice of brand extension by surfwear and clothing manufacturers into Class 3 goods. The one example of actual use which is provided, a lipstick released by Quicksilver under their "Roxy" brand (Exhibit AFR2-A), is insufficient to satisfy the onus.  As there is no other evidence to support an assertion that consumers are cognisant of brand extension by clothing manufacturers into Class 3 goods generally, I am not prepared to find that deception or confusion will occur generally. 

However, I am satisfied that the real, tangible risk of deception or confusion occurring will arise in relation to goods which are sold in surfwear stores, in close proximity to surf clothing or which allude to a beach, ocean or surf connection.  This arises out of the general reputation of MAMBO and 100% MAMBO, rather than an expectation amongst consumers that Mambo will extend their product range.  In these limited circumstances, I am satisfied that reasonable consumers will be caused to wonder whether there is some connection between the applicant's goods (or those produced by their licensees) and the opponent.

The final matter for determination in this ground is whether the application can proceed, albeit with appropriate conditions or restrictions on use.  In Campomar, the High Court restrained use of the expression NIKE SPORT FRAGRANCE, but not NIKE solus.  I am minded to apply the same logic and method here, to limit the applied-for goods to goods which are not "surf, ocean or watersport related products".  In that way, the likelihood of deception or confusion is minimised, and falls below a real, tangible risk.  I will allow the applicant a period in which to agree to a condition of registration in the following terms:

It is a condition of registration that the trade mark will not be used on or in relation to surf, beach or watersports related products, including sun protection products.

If the applicant does not seek the amendment as proposed, I am satisfied that use of the applied-for mark on the applied-for goods will give to rise to a real, tangible risk of deception or confusion.  If that were to occur, the ground of opposition would be made out.

Section 44
Section 44 relevantly provides that an application for registration must be rejected if the applied-for trade mark is substantially identical with, or deceptively similar to trade marks which have an earlier priority date and which cover similar goods .

Mambo relies on its registered MAMBO and 100% MAMBO trade marks to which I referred in the s.60 ground. I have already found that MAMBO and mambo are substantially identical and 100% MAMBO and mambo are deceptively similar.  Each of the MAMBO and 100% MAMBO trade marks have earlier priority dates. 

The question therefore is whether the applied-for goods and the goods covered by the various registrations are "similar goods".  "Similar goods" is defined in s.14 of the Act as follows:

(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.

There is no obvious overlap between the applied-for goods and the goods covered by Mambo's registrations.  However, Mambo submits that the goods are similar, in the sense that they are all fashion/lifestyle products purchased by the same consumers for the purpose of beautification or adornment of the person.  I am not convinced by this argument.  I am not satisfied that simply because goods may be sold to the same types of people, for the same general purpose, through some common trade channels, that this is sufficient to satisfy the tests laid down in cases such as Re John Crowther & Sons (Milnsbridge) Ltd's Application[7] and Reckitt and Colman (Aust) Ltd v Boden[8].  There must at least be some similarity in the product before those elements will be determinative of the matter.  I see no such similarity here.

[7] (1948) RPC 369 at 372

[8] (1945) 70 CLR 84 at 94

Therefore, I dismiss this ground.

Section 43

Section 43 reads as follows:

Trade mark likely to deceive or cause confusion

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.

The section requires me to consider whether the applied-for trade mark contains a connotation which is likely to deceive or cause confusion.   It is accepted that this can occur in either of two ways.  Firstly, there may be something in the trade mark which, on its face, gives a misleading impression of the attributes of the product to which the trade mark is applied.  The connotation must arise from the trade mark itself, rather than any other source (such as another trade mark).[9]  Here, there is nothing obviously deceptive or confusing about the expression mambo.

[9] T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 (31 May 2000) at paragraph 43

Secondly, a connotation of sponsorship, endorsement, affiliation, or connection with another entity may arise.  However, in such a case, the other entity must have a degree of notoriety.  The degree of notoriety may be in relation to a certain field of endeavour[10], or result in entry of the expression comprising the trade mark into common usage[11].  In the present case, I am not satisfied on the evidence that the opponent's trade marks have the requisite degree of notoriety.  While they may have become very well known, there is nothing before me to indicate that when the expression "Mambo" is used, consumers will automatically think of the opponent.  In cases such as Amalgamated Television Services Pty Ltd v Pickard & Ors[12] and Amalgamated Television Services Pty Ltd v Clissold[13], evidence was presented of television ratings, merchandising activities (including brand extension) by the relevant opponent and market recognition.  In Down to Earth (Victoria) Co-operative Society v Schmidt[14], evidence was provided as to the recognition of the relevant expression.  Here, there is no such evidence.  What evidence there is indicates that MAMBO might have become, as the opponent describes it, "iconic", but there is nothing to establish that it actually has (or had at the date of application).

[10] Down To Earth ( Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632

[11] Durkan v 20th Century Fox Film Corporation (2000) 47 IPR 651

[12] 48 IPR 133

[13] 52 IPR 207

[14] (1998) 41 IPR 632

I am not satisfied that Mambo has met its onus, and this ground is dismissed.

Section 58
Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In order to establish this ground, it is incumbent upon an opponent to show that the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show, at a minium, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods.

Here, the MAMBO is substantially identical to mambo.  However, for the reasons I have already provided, I do not believe that there is sufficiently similarity in the goods covered by the registrations.  There is nothing in the evidence to show that the MAMBO trade mark has been applied to any other products which would establish first use in trade in Australia.

This ground fails.

Section 42
Section 42(b) of the Act provides that an application for registration must be rejected if use of the applied-for trade mark would be contrary to law. "Contrary to law" is not defined in the Trade Marks Act.  However, it is clear that breaches of the Trade Practices Act 1974 (TPA) which prohibits misleading or deceptive conduct, or the common law tort of passing off, would be sufficient to bring s.42(b) into effect. The opponent relies on s.52 of the TPA.

According to the decision of Madgwick J in Advantage Car Rental[15], the Registrar is obliged to determine whether use of the trade mark would, rather than could, amount to a contravention of the relevant law. Accordingly, I am to determine whether, on the balance of probabilities, use of the applied-for trade marks would be likely to mislead or deceive consumers. There is no evidence before me that anyone has been, or is likely to be, misled or deceived in the requisite manner. There are no examples of actual deception, nor any examples of how consumers might be affected. In these circumstances, I am not satisfied that the opponent has met its onus in establishing that use could, let alone would, be contrary to law except insofar as this issue merges into s.60.

[15] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683

This ground is therefore dismissed.

Summary

I have found that, if the application remains in its present form, there is a real, tangible risk that reasonable consumers will be deceived or confused. This would be contrary to s.60. However, I have also found that, if the applicant amends its application to exclude surf, ocean and watersports related products, the risk of deception or confusion would be so low as to fall below a real, tangible risk.

If the applicant amends its application within 21 days of this decision, I direct that subject to the payment of any outstanding fees and the expiry of the relevant appeal period, this application may proceed to registration. If the amendment is not made within 21 days of the date of this decision, then the s.60 ground will be made out, and the application will be refused registration.

Costs

Both parties have sought costs.  However, both parties have, to an extent, been successful.  Therefore, I direct that each party bear their own costs of these proceedings.

Geoffrey Purvis-Smith
Hearing Officer
Trade Marks Hearings
22 January 2003