British American Tobacco Australasia Limited v Sean Ngu
[2002] ATMO 15
•18 February 2002
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by British American Tobacco Australasia Limited to registration of trade mark 817137 (34) – LONGFIELD – in the name of Sean Ngu.
Background
This issue arises out of the filing, on 13 December 1999, by Sean Ngu, (‘the applicant’) of Enmore, New South Wales, of application 817137 in Class 34 of the International (Nice) Classification of Goods and Services to register the word LONGFIELD in plain script in respect of the goods, ‘All types of tobacco and cigarette products’.
Following examination of the application, it was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks on 21 September 2000.
On 20 October 2000, within the time allowed, British American Tobacco Australasia Limited (‘BATAL’) of North Sydney, New South Wales, filed Notice of Opposition (‘Notice’) to the registration of the trade mark. The Notice states several grounds of opposition:
1. The applicant is not the owner of the trade mark;
2. The applicant does not intend;
(a) to use, or authorise the use of; the trade mark in Australia; or,
(b)to assign the trade mark to a body corporate for use by the body corporate in Australia,
in relation to the goods specified in the application;
3.The trade mark is not capable of distinguishing the applicant's goods in respect of which registration of the trade mark is sought by the applicant from those of other persons;
4.The use of the trade mark would be likely to deceive or cause confusion and registration of the trade mark would be contrary to Section 43 of the Act;
5.The use of the trade mark would be likely to deceive or cause confusion and registration of the trade mark would be contrary to Section 60 of the Act;
6.In the light of the reputation the opponent has in its trade marks, the use of the trade mark the subject of the application in relation to the goods for which registration is sought would be likely to mislead or deceive and pass off the goods as being those of or associated with the opponent;
7.Registration of the trade mark by the applicant would be contrary to Section 44 of the Act;
8.The trade mark is not a sign used, or intended to be used to distinguish goods or services dealt with or provided in the course of trade by the applicant from goods so dealt with or provided by any other person; and,
9.Registration of the trade mark ought to be refused in the exercise of the Registrar's discretion, by reason of the conduct of the applicant and/or the nature of the mark and/or of its use and/or on such other grounds as the Registrar of the court, on appeal, may see fit to allow.
BATAL has served and filed evidence in support of its opposition; the applicant has not served and filed evidence in answer. BATAL’s evidence, which was served and filed on 20 April 2001, comprises two statutory declarations: one by Trevor Stevens, of Davies Collison Cave, solicitor for BATAL, made on 16 February 2001. The other is by Dale Gregory McLean, who is head of Brand Marketing for BATAL.
A hearing of the matter was scheduled for 26 November 2001. The applicant did not appear or submit written argument. Mr Stevens, for BATAL, did not appear and submitted written submissions prior to the hearing.
The Evidence
In brief, Mr McLean deposes to the reputation of the WINFIELD brand of cigarettes in Australia. The trade mark WINFIELD has been used by BATAL and its predecessor in title since July 1972 in relation to cigarettes. Mr Mclean gives sales figures for cigarettes carrying the WINFIELD trade mark – these are quite high. Mr McLean also draws my attention to a number of registrations of the trade mark WINFIELD, the most relevant of these is:
Number: 369487
Priority Date: 18 December 1981
Class: 34
Goods: Cigarettes
Trade Mark: WINFIELD (word)
BATAL also owns registrations that incorporate the word WINFIELD in a number of other classes. I will not detail these, as they were not relied on by BATAL in argument.
I turn now to the statutory declaration made by Mr Stevens. Mr Stevens attests to his knowledge of the tobacco industry in Australia which he has established, he deposes, through acting for many years as trade mark representative for a number of tobacco companies including BATAL and its predecessor.
Mr Stevens attests that the tobacco industry is a multi-million dollar enterprise with a relatively small number of large companies. The establishment in the market of a new brand of cigarettes is, says Mr Stevens, costly with a high capital investment in equipment and marketing. Mr Stevens appends a study[1] to his declaration which concludes that there are three major players in the market and that most of the successful new brands are extensions of existing ones.
[1] Does Smoking Make Cents? Victorian Office of Prices. Melbourne. 1990.
Mr Stevens notes that the address of the applicant is specified on the application as being a residential address in Enmore; Enmore is, says Mr Stevens, a mainly residential and retail suburb in the municipality of Marrickville. Mr Stevens avers that enquiries within the tobacco industry have not revealed use of the word LONGFIELD as a trade mark by the applicant. Mr Stevens also states that further enquiries conducted through the Internet, in telephone directories and in directories related to the tobacco industry have failed to produce any use of the word LONGFIELD as a trade mark by the applicant.
Mr Stevens concludes that, in view of the above factors and, as the applicant is an individual living at a residential address, there is little likelihood that the applicant intends to use the opposed trade mark on the goods specified in the application.
Reasons
Preamble
The arguments submitted by Mr Stevens go to sections 44, 59 and 60 of the Trade Marks Act 1995 (‘the Act’). The argument in terms of section 44 relies in large part on a trade mark registration not adverted to in the evidence. This registration is:
Number: 333709
Owner: Philip Morris Products SA
Priority Date: 4 June 1979
Class: 34
Goods: Cigarettes
Trade Mark: LONGBEACH
Mr Stevens submits that, in terms of regulation 21.15(8), and my knowledge of the Register of Trade Marks, I may take this registration into account when considering this matter – he refers me to Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd (1987) 7 IPR 16 and Dow Chemical Co v CH Boehringer Sohn KG (1987) 9 IPR 360.
However, while the Registrar may inform himself on anything, and may take into account the state of the Register, he should also afford the parties procedural fairness. In Sterling Winthrop Pty Ltd v Herron Pharmaceuticals Pty Ltd [1994] ATMO 65 (23 August 1994), Deputy Registrar Hardie addressed the same issue in removal proceedings[2]. The Deputy Registrar said in relation to the issue of the applicant’s locus standi:
[2] Proceedings under section 23 of the Trade Marks Act 1955.
Mr Halford addressed me on this point by referring to two trade marks registered in the name of Sterling Winthrop. Neither mark is mentioned in Sterling Winthrop's evidence and Mr Anese vigorously objected to their inclusion at this point in proceedings. He said that there were rulings that registered trade marks could only be relied on in inter parte proceedings if they were formally adduced in evidence. Mr Halford responded with reference to three decisions (Konckier -v- Amco Wrangler Limited, 1987 AIPC 90-385 at 456 and 457; Dow Chemicals Co -v- C.H. Boehringer Sohn KG, 9 IPR 360; and Prosimmon Golf (Aust) Pty Ltd -v- Dunlop Australia Ltd, 9 IPR 425). In Prosimmon, the delegate, Mr Terry Williams, comments that the Registrar is entitled to have regard to his own general knowledge and in Dow Chemicals he states that the Registrar is not precluded from taking account of reference material at his disposal, circumstances which his own enquiries show to prevail in a particular trade or place, the state of the Register of Trade Marks or to material contained in his own records
Mr Williams points out, however, that the Registrar's prerogative to turn to these sources is constrained by the rules of natural justice.
[…]
Thus the unexpected introduction of support for standing fundamentally changes the nature of this case. In addition, of course, support which relies on the applicant's standing as a proprietor of a portfolio of registered trade marks, breaks new ground. A change of the evidence on this point is clearly very different from the minor correction to the text of the 1993 James declaration that I dealt with above. The evidence supporting the removal action has failed to address the primary factor of locus standi, and the applicant cannot expect at the hearing to turn the case around merely by pointing to a few of its registered trade marks (of which, I note, there are a total of some 200). The fact that these registrations are available to the public is beside the point. So, I think, is the reputation of the trade mark PANADOL. The opponent needs due notice of the grounds. If, as here, the evidence give no information about the applicant's standing, not even to the extent of defining its business or its interest in the removal action, it is unreasonable to expect the proprietor to anticipate the removal strategy and prepare accordingly. Neglect of that due notice smacks of ambush; it does not accord with the rules of natural justice and, I might add, it does not assist with the orderly conduct of the hearing. If the locus depends entirely on the applicant's position as the owner of certain marks, that claim should be made known in the evidence. If it is not, then the applicant should be prepared to satisfy the criteria of Ladd -v- Marshall (supra).[3] [Parenthesis: material omitted]
[3] The threefold test for the admission of further evidence developed from Lord Denning's judgment in Ladd -v- Marshall [1954] 1 WLR 1489, is first, it should be shown that, with reasonable diligence, the evidence could not have been obtained earlier; second, it should be shown that the evidence is likely to have an important effect on the outcome; and ,third. the evidence should be credible
I conclude that BATAL may not rely on registration 333709 in the name of Philip Morris SA as there is no mention of this trade mark in the evidence.
Section 59
Section 59 of the Act provides:
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a)to use, or authorise the use of, the trade mark in Australia; or
(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note:For applicant see section 6.
There is no evidence from the applicant concerning his use of the trade mark.
While BATAL, in its evidence, avers that it has performed various searches to discover whether the applicant has used the trade mark, exactly what, when and where those searches were performed is not stated, nor are the results of those searches exhibited to either of the declarations. In Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), French J said:
The condition of refusal of an application is that the Registrar is satisfied that there are grounds for rejection. If not so satisfied the Registrar must accept the application.Unless the Registrar thinks that the proposed trade mark is likely to deceive or to cause confusion then all other things being equal, the application must be accepted. Subject to such weight as it gives the Registrar's decision, the Court is placed in the same position in its approach to evaluation of deceptive similarity.
I believe that the same standard must be applied to section 59 of the Act. There is no requirement that an applicant has used a trade mark in order for it to be registered. However, the evidence filed by BATAL concerning the applicant’s use of the trade mark is not well supported and is in vague terms: as such I cannot be satisfied that the applicant has not used the trade mark.
In its evidence, BATAL also places reliance on the fact that it is one of the three major cigarette manufacturers in the Australian market. It is very difficult, Mr Stevens argues, for anyone outside this group of three to launch a new brand of cigarette onto the Australian market – the price of setting up machinery and marketing apparatus militates against the prospects of anyone else entering the market. Who the group of three major traders are is not stated in the evidence, nor what proportion of the market place that they share between them, nor the cost of launching a new brand, nor any evidence that it is beyond the means of the applicant to launch a new brand.
Moreover, I do not consider that the evidence specifically addresses the state of the marketplace - to my general knowledge of the marketplace, there are a number of smaller traders in the field and this is born out by the state of the Register of Trade Marks. This portion of the evidence lacks sufficient clarity or detail for me to conclude with any certainty what the state of the market place is.
Neither does the fact that the applicant resides at a residential address mitigate against the prospects of his producing cigarettes at a factory elsewhere, or the fact that he may intend to license the use of the trade mark to another person, or assign it to a body corporate.
Accordingly, BATAL has not established this ground of opposition.
Section 44
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.
Section 10 reads:
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.
The goods (cigarettes) are the same goods and the priority dates of the BATAL registrations are earlier than the priority date of the opposed application.
As BATAL concedes that the trade marks are not substantially identical, the remaining issue is whether the trade marks WINFIELD and LONGFIELD are deceptively similar.
Mr Stevens refers me to the words of Windeyer J in Shell Co. v. Esso Standard Oil (1963) 109 CLR 407 (at 415):
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is the question The marks are not now to be looked at side by side The issue is not abstract similarity, but deceptive similarity Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand1 the impression based on recollection of the plaintiffs mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant's television exhibitions.
[And, at 416, that the]
deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances
Thus, it is clear, submits Mr Stevens, from the cases that the market context of the comparison is important. In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ stated it as follows:
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 market context of the comparison of the trade marks, says Mr Stevens, also emerges in Re Application by the Pianotist Co Ltd (1906) IA IPR 379 at 380; 23 RPC 774 at 777, where Lord Parker (then Parker J) said;
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. Your must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or, rather, you must refuse the registration in that case.
Mr Stevens further submits that the single major difference in the trade marks LONGFIELD and WINFIELD is between the initial “words” LONG- and WIN-. Each trade mark has in common the word FIELD. He submits that the prefixes WIN- and LONG- are "soft" words and that a greater emphasis is likely to be placed on the word FIELD in verbal use. It also seems to him that the visual impact of the word FIELD is especially conspicuous.
In terms of the market place, Mr Stevens refers to the following factors which, he argues, affects the sale of cigarettes:
Cigarettes and tobacco products are relatively cheap items, often purchased "en route” in a hurry and without close scrutiny.
There are legal restrictions on the display and advertising of the goods at issue in these proceedings. As a result of those restrictions, the goods are displayed or offered for sale in ways which might give rise to confusion - for example, in shops the goods are displayed only at some distance from purchasers and elsewhere, in coin-operated machines.
Certain environments in which the goods are purchased include outlets such as pubs, nightclubs and clubs - usually noisy and not well lighted - and in such environments clear vision or clearly spoken words are less likely to occur, thus again contributing to a likelihood of confusion between similarly looking cartons or packaging with similar sounding words.
If the word LONGFIELD is used in a manner normal or fair in the context of cigarette or tobacco packaging, a container or carton of LONGFIELD products might well be displayed in the same or very similar packaging as that of the opponent’s packaging.
With some reservations, I agree with the above observations; however, I believe that they lead to a conclusion that the trade marks are not deceptively similar. I am to assume that the trade marks will be used in a fair and normal manner and, as such, this precludes consideration of the effects of the applicant putting his goods into the same guise of packaging as that of BATAL. Such conduct by the applicant would be questionable in terms of Payton and Co v Snelling, Lampard and Co. (1901) AC 308 and thus outside “in a fair and normal manner”.
The marketing of cigarettes is tightly controlled and these controls mean that cigarettes and tobacco product are not, usually, sold from behind the bars in pubs, hotels, nightclubs and clubs. In such establishments, where cigarettes are still sold, the proprietors normally meet the legislation by selling cigarettes from dispensing machines. As such, the effects of background noise blurring a spoken request for a certain brand of cigarette are irrelevant.
In my general knowledge, cigarettes are often not on display in the places where they are sold; they are in racks over the counter where they are visible to the sales assistant and not to the customer. In other establishments, cigarettes are in racks behind the sales assistant. Hence, when cigarettes are sold, they cannot be self-selected by the customer – a sales assistant is invariably interposed between the customer and the goods. Thus, it is virtually impossible to purchase the goods in a hurry and without much scrutiny of the goods. In fact, it might be fairly observed that two people check the purchase.
Against such a marketplace background, any likelihood of deception or confusion is remote. The trade mark LONGFIELD, although it shares the world FIELD with the BATAL trade mark, is conceptually distinct from it, brings different things to mind and is likely to be remembered and recalled in a different way. The initial syllable in each word is different and is a word with its own meaning in the English language. The pronunciation of the words is likely to be unstressed with an equal weight on both syllables in both words.
Mr Stevens also argues that there might be contextual confusion and says it is also relevant that many well known brands of cigarettes in Australia include, and are identified by, descriptors such as SLIM, KINGS etc. which refer to the width, size or length of the cigarette products. The word LONG is, says Mr Stevens, likewise a descriptor and clearly refers to the length of a cigarette. In this context - and given the reputation enjoyed by the trade mark WINFIELD - there is, argues Mr Stevens, likelihood that the word LONGFIELD will be interpreted by some consumers as a “long” WINFIELD cigarette.
This approach, to my mind, draws a long bow. BATAL has not adduced any evidence as to whether it markets the cigarettes sold under the WINFIELD trade mark in ‘longs’ or whether any other trader sells ‘longs’ in Australia. Thus, the likelihood of the public viewing the opposed trade mark in this way is difficult to assess. Further, the spoken effect of a request for such cigarettes would not be for a packet of “long FIELDS” but rather for a “a packet of WINFIELD longs”. The putative "WINFIELD ‘longs’" would recalled and remembered by purchasers as such; thus, any confusion between the trade marks from this source is unlikely as the expressions LONGFIELD and WINFIELD ‘longs’ are quite different from each other.
Thus, I am not satisfied that there is a likelihood of deception and confusion and, accordingly, the trade marks LONGFIELD and WINFIELD are not deceptively similar. Accordingly, BATAL has not established this ground of opposition.
Section 60
Section 60 provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
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.
In terms of section 60, the trade marks must, as a minimum, be deceptively similar for BATAL to establish this ground, and I have found that the trade marks are not deceptively similar in terms of section 44 of the Act, above. Accordingly, BATAL has not established its ground of opposition in terms of section 60 of the Act.
Decision
As BATAL has not established its grounds of opposition, the opposition must fail.
I note that another party opposes registration of this trade mark and the outcome of those proceedings is still pending. Accordingly, the Registrar’s direction concerning whether the opposed trade mark may proceed to registration will flow from the outcome of that opposition.
Costs
The applicant has not made any submission as to costs and I make no order.
Ian Thompson
Hearing Officer
18 February 2002
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