British American Tobacco Australia Services Ltd v NV Sumatra Tobacco Trading Company

[2008] ATMO 68

TRADE MARKS ACT 1995

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

Re:Opposition by British American Tobacco Australia Services Ltd to registration of trade mark application 963426 - LUCKY DRAW, and 963428 - LUCKY DREAM - filed in the name of NV Sumatra Tobacco Trading Company.

Delegate:	Terry Williams
Representation:	Opponent Applicant
Decision:	2008 ATMO 68 S 52 opposition: s 43 and 60 not established - s 44 established, registration refused.

Background

1. NV Sumatra Tobacco Trading Company has applied to register two trade marks, LUCKY DRAW (application 963426) and LUCKY DREAM (application 9634298), in respect of “cigarettes, cigarette filters, kretek cigarettes, cigarette papers, white cigarettes, ashtrays (not made of precious metal), cigars, tobacco, lighters, matches, smokers' articles”.

2. The applications have been examined at the Trade Marks Office and advertised as having been accepted for possible registration. That, however, is opposed by British American Tobacco Australia Services Ltd (the opponent). Both parties have used the process under the trade mark regulations to file and serve evidence in support of, and answer to, the opposition. Ultimately, under section 55 of the Trade Marks Act 1995 ("the Act"), the Registrar of Trade Marks is required to decide whether to register the application.  I was assigned to hear and decide the matter.  What follows is my decision, made under delegation from the registrar.

3. At the hearing, the applicant was represented by Claude Anese, patent attorney, of the attorney firm Cullen and Co.  Trevor Stevens, solicitor, of the attorney firm Davies Collison Cave, represented the opponent.

4. Interestingly, more or less the same contest came recently before the Intellectual Property Office of New Zealand[1].  The applicant was successful there, though Mr Anese conceded that the decision has been appealed.  A final decision is awaited. 

   [1] , T41/2007.  I note, however, that the opponent may have been disadvantaged in that matter by the framing of the notice of opposition, which did not expressly refer to its registration for LUCKIES simpliciter.

   Grounds Considered

5. Mr Stevens sought to bring the opponent’s case within sections 44, 60 and 43 of the Act. The principal goods of interest to both parties are tobacco products. Neither advocate addressed the applications in respect of any other goods.

   Deceptive similarity – sections 44 and 60

6. As to the first two of those provisions, Mr Stevens noted the existence of prior registrations held by the opponent for, inter alia, LUCKY STRIKE and LUCKIES[2]. For the purposes of this decision, the applicant’s trade marks would be within the scope of the provisions of sections 44 or 60 if either of the opponent’s trade marks is “deceptively similar” to either of the applicant’s. Deceptive similarity is defined by s 10:

   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.

   [2] Registrations 151409 and 81923, with priority dates of 1958 and 1944 respectively.

7. As Mr Stevens put the matter at the hearing and in his written submissions:

   • The first word in both the Applicant's trade marks is the word LUCKY;

   • Because the word LUCKY is the first word in the respective trade marks – and because that word is entirely distinctive in the context of the goods – far greater emphasis should be placed on that word in any comparison of the Applicant's trade marks with the Opponent's trade marks.

   • In relation to the word LUCKIES registered by the Opponent under registration 81923 the degree of similarity is even closer, noting the risk of imperfect recollection and use of the word LUCKIES as an abbreviation.

   • Both the Applicant's trade marks are depicted in ordinary block type with no added distinguishing features.

   • There are similarities in meaning and in the idea of the marks as follows:

   Meaning:

   Within the phrase LUCKY STRIKE the word LUCKY has a clear and obvious meaning – that is, "good fortune" or "happening by chance".  The word LUCKY is not a word that has numerous different meanings.  It is a "strong" word in the sense that its meaning is immediately apparent. Furthermore, the presence of the word LUCKY in any phrase, or in combination with a second word, substantially influences the meaning of the phrase or the second word.

   The combination LUCKY STRIKE refers to "a stroke of good fortune".  In that same sense, the first word LUCKY in the combinations LUCKY DRAW refers to "good fortune" or "happening by chance".  The meaning of the words LUCKY DREAM likewise refers to success, good fortune and/or achievement.

   The idea of the mark:

   Coloured by the first word LUCKY, the words "strike", "draw" and "dream" convey closely similar ideas or images – that is, success, good fortune or chance.

   In particular the words "strike" and "draw" prefaced by the initial word LUCKY connote very similar images of chance or good fortune – for example, success at gambling and/or in a lottery.

8. Mr Anese countered that the element LUCKY was not as strong as Mr Stevens asserted.  It functioned with STRIKE to give a meaning to the trade mark as a whole.  LUCKY, he said, was an element that combined with DREAM or with DRAW to create a whole.  As a whole, each of the applicant’s trade marks had a meaning that was quite distinguishable from the meaning of either LUCKY STRIKE or LUCKIES.

9. There is little to be got from established case law.  The principles of appropriate allowance for imperfect recollection in the circumstances of each case are long established.  And, as both advocates noted from Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 416:

   [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.

10. Mr Stevens noted a number of cases which, he said, were close.  I agree with Mr Stevens that it is possible to see, in the authorities he relied on, just how close the present matter may be to the line.

11. Mr Stevens referred specifically to CA Henschke & Co v Rosemount Estates Pty Ltd, (2000) 52 IPR 42 at para 57. That case turned on whether the trade marks HILL OF GOLD and HILL OF GRACE were deceptively similar. The court noted the significant differences in meaning, as follows:

    “Hill of Gold” is, as senior counsel submitted, a metaphorical expression of the same general character as “Hill of Grace”.  The reference to a hill is not, in reality, a topographical reference any more than it is in the name “Hill of Grace”.  A real hill might be named “Gold Hill” or “Golden Hill”; it is highly unlikely that it would be named “Hill of Gold”.  If that is accepted, the presence in the market of a large number of wines branded “Hill”, “Ridge” etc is of little importance.  The imperfect recollection of the uninvolved consumer would not, we think, be of a brand of that general kind.  That being so, we are less confident of the outcome of the comparison that must be made than his Honour was of the result of the comparison which he was invited to make.  Both the metaphorical character of the names and the common “Hill of” are, we think, important matters to be taken into account in assessing the effect of the hill of gold mark on an uninvolved consumer who has an imperfect recollection of hill of grace.  They are two points of similarity and, we think, in a crowded market, reasonably striking ones.  But we do not think that any metaphorical “Hill of … ” mark would necessarily be an infringement. For example, we greatly doubt that “Hill of Frankincense” would be: both might be seen to have a vaguely biblical or religious connotation, but aurally, and as they strike the eye, the two are substantially different. “Hill of Enmity”, “Hill of Malevolence” or “Hill of Greed” are even less likely candidates for infringement.  Similarly, though both names are metaphorical, we agree with the learned judge in thinking that it is the word “Grace” which gives the appellant's mark its peculiar and distinctive character; the use of the word “Gold” turns the “Hill of … ” phrase into one of a significantly different character. “Grace” and “Gold” sound different and evoke, we think, quite distinct impressions.  Precise analysis may not help much in matters of this kind; but “Gold”, in our view, has a much more earth-bound, even mercenary, signification than “Grace”.  The amazement which may be evoked by grace is of a character quite different from any usual responses to gold.  Though we accept that it is a matter on which opinions could well differ, our view is that, applying the test established by the Australian authorities, “Hill of Gold” does not so nearly resemble “Hill of Grace” that it is likely to deceive or cause confusion: that is, to cause the uninvolved consumer to wonder whether the two wines may come from the same source.  For that reason, we would uphold the primary judge's decision on this aspect of the case.

12. Mr Stevens referred briefly to several more authorities.  Of these, WINFIELD EXPRESS and others and were allowed to co-exist with STATE EXPRESS for tobacco products.  See W.D. & H.O. Wills (Australia) Ltd v Riggio Tobacco Corporation Ltd 42 IPR 203. Conversely, HYDE PARK was found to be potentially in conflict with PARK DRIVE in the event that both were shortened to “park” or “parks”, though it is difficult to reconcile this case with the existence of the presumption inherent in s 33 of the current Australian legislation. Again, usage of SILK LEAF involved a passing off for SILK CUT. See, respectively, Application by Harrods Ltd 52 RPC 65 and Gallaher Ltd v International Brands Ltd (1976) 1 NZIPR 42.  To this list I would add the refusal of STATEROOM for cigarettes on the ground that that trade mark was liable to be confused with STATE EXPRESS if both marks were to be abbreviated to "State" or "States", see United Kingdom Tobacco Co. Ltd.'s Appn 29 RPC 489.

13. In both Harrods Appn and the United Kingdom Tobacco case there was, as here, evidence of a potential for purchasers, when ordering the opponents' products, to contract the respective trade marks, to "Park" and "State" respectively.  This was crucial to the decision in both cases.  In United Tobacco, Parker J said, at 496:

    … there is a danger of the registration of this new mark leading to confusion or deception, not because the word does not distinctively differ from the word already on the register, but because of the tendency of the public to abbreviate, and to use the abbreviation of a brand as the ordinary designation in common parlance of that brand.

14. It is clear from the judgment that, but for that evidence which was belatedly adduced on the appeal, Parker J would not have disturbed the original finding of the registrar that prima facie there was no reasonable likelihood of deception or confusion arising from the use and registration of "STATEROOM" and "STATE EXPRESS". 

15. Again, Mr Stevens noted that SOUTHERN MAID and WESTERN MAID were deceptively similar, as were ALKA-VESCENT and ALKA-SELTZER[3].  The former case is illustrative of contextual confusion, to which I will come, and the latter emphasizes the need to carefully weigh descriptive material.  Mr Stevens, however, urged that I should view in totality the cases on which he relied.  They indicated, he said, that where the common element was the first element of each trade mark, that was a cause for particular notice and scrutiny.  I fully accept this.

    [3] See Ahern’s application (1932) 2 AOJP 167, and Broadhead’s application (1950) 67 RPC 209

16. Mr Stevens argued that the opponent was entitled to rely on the notoriety of its trade mark LUCKY STRIKE.  He noted too the unsupported, but prima facie reasonable, assertions in the opponent’s evidence that:

    'LUCKIES' is used internationally as the abbreviation for LUCKY STRIKE by tobacco consumers worldwide, hence the trade mark registrations that the Lucky Strike Trade Mark Owners have obtained for this word, including in Australia.  

17. “Lucky” is, as I will come to below, an adjective.  This opposition will not be won or lost on grammatical issues but I think that the natural function of the word “lucky” is to shift focus onto the following word, the one which it would ordinarily qualify.  A lucky shot is not a lucky star, nor is a lucky day a lucky guess.  The fact that the opponent’s trade mark LUCKY STRIKE is shortened to LUCKIES is, as Mr Anese argued, perhaps due directly to the activities of the opponent, who uses it as a short-form for LUCKY STRIKE.  Either way, I do not believe that either LUCKY DREAM or LUCKY DRAW would ordinarily be shortened to “luckies”. 

18. Smoking is, in Australia, a habit or pastime that is restricted by law, as Mr Anese noted.  The availability of tobacco products is carefully regulated, as is their advertising.  It is not a field populated by what was called, in Henschke, “uninvolved consumers”.  The purchase of cigarettes is not at all analogous to the purchase of a bag of sweets on impulse at a service station.  The buyer takes the purchase of a packet of cigarettes a little more seriously than that, as would befit the fact that smoking is a habit that is entirely personal to, and for the gratification of, the smoker.  Nor is a packet of cigarettes a cheap throw-away item, at least until it is empty. 

19. There are, as Mr Stevens noted, casual smokers who are not committed to any particular brand.  However, I am not convinced that such smokers are necessarily any more error-prone than any other smokers[4].  There are also, as he noted, people who purchase cigarettes on behalf of others, though again there is no evidence that this is a significant part of the market.  It is true that, as Mr Stevens argued, cigarette packets may be “busy”, with many words in many differing sizes and fonts.  And finally, as he noted, the packaging of tobacco products may often not be readily seen or inspected by customers at places like service stations and supermarkets.  And, as the opponent has declared, I also acknowledge that there is no other trade mark in use in respect of tobacco in Australia that incorporates the word LUCKY.  Those things set the context of the comparison. 

    [4] Neither side made submissions about potential confusion among non-smokers dabbling in the market.  I conclude that this element of the market is numerically limited and commercially insignificant.

20. In that context, then, is either LUCKY STRIKE or LUCKIES deceptively similar to LUCKY DREAM or LUCKY DRAW? 

21. I fully accept that LUCKIES can be an abbreviation for LUCKY STRIKE.  However, those who know that LUCKIES is an abbreviation of LUCKY STRIKE will simply not be deceived or confused by LUCKY DREAM or LUCKY DRAW.  Those words, as Mr Anese argued, do not look like LUCKY STRIKE, nor do they sound like them. 

22. Nor is the meaning of either of the applicant’s trade marks at all comparable to either of the opponent’s trade marks.  LUCKIES, aside from being an abbreviation for LUCKY STRIKE, is an apparently meaningless word, at least in Australia.  It is conceptually a long step from either a “lucky dream” or a “lucky draw”.  The meanings of those things are themselves perhaps obscure, and perhaps many people would have slightly differing views on that question.  But whatever a lucky dream or a lucky draw may be, those things are not a lucky strike[5].  LUCKY STRIKE has, as Mr Anese argued, a single, fairly clear meaning, to do with a strike in a mining context, as in “to strike oil”.  To those who might be unfamiliar with that usage, a strike might be indicative of a union dispute, or might mean a blow, or the action of hitting.  Again, those are, in my view, far removed from a lucky dream or a lucky draw.

    [5] The Assistant Commissioner of Trade Marks in New Zealand noted that both LUCKY STRIKE and LUCKY DREAM “may have a connection with gambling”.  However, he too concluded that “the overall concept of each mark is different”.

23. I accept that there are no other trade marks in use in Australia in respect of tobacco products and incorporating the word LUCKY[6].  None the less, the normal function of that word is as an adjective, to qualify the noun that follows it.  That noun is the word DREAM or DRAW.  Thus, the matter is not directly comparable to the element “Hill of” in Henschke.  It might, however, be said that the first element in Henschke carried reduced weight because it was common to the trade whereas, in the present instance, I have already explained why I reduce the weight because of the likely effect that the word “lucky” would have on the recollection of the user. 

    [6] That situation is not reflected on the register of trade marks.  Proper weight, however, should be given to facts in the market.  Ocean Spray Cranberries Inc v Registrar of Trade Marks 47 IPR 579 at 35

24. Mr Stevens relied on the declaration of Ms Brunton-Reid.  The latter, in giving evidence for the opponent, argued that the meaning of “lucky strike” is something else, “a stroke of good fortune”.  I do not think that this is a fair reading of what Ms Brunton-Reid actually declares:

    I also maintain that "LUCKY DREAM[7]" is conceptually similar to "LUCKY STRIKE" on a plain reading and as a matter of first impression since both clearly make allusions to a positive concept of "a stroke of good fortune" or a "positive sense of hope and fulfillment".

    [7] And similarly in re LUCKY DRAW.

25. Ms Brunton-Reid is a senior trade mark manager for the opponent.  She goes to some length, under cover of a declaration, to set down her own opinion on these points but is not, apparently, a recognised authority on the meaning or comprehension of words.  I think she has perhaps over-abstracted the matter and I do not agree that such a generalised and unfocused view would be a likely recollection in the mind of the average purchaser of these goods.  Within the niche market of smokers, particularly if both products are present for selection, I do not believe that there is any particular risk of the confusion of a packet of LUCKY STRIKE with one of LUCKY DREAM.

26. Mr Stevens also addressed the possibility that consumers might, from the points of similarity and despite the points of difference, speculate on some other possible connection between the products bearing the two trade marks – contextual confusion, as it is sometimes known.  He argued that LUCKY DREAM or LUCKY DRAW might be seen as a sub-brand of LUCKY STRIKE.  The evidence does not shed much light on this prospect and I am forced to draw my own conclusions as best I can.  The meanings of the words are clearly different and any suggestion of sub-branding seems unsupportable.  There is no evidence at all of sub-branding of tobacco products involving the variation, in a primary brand, of words that are distinctive.  Words such as “filters” and “lights” are in evidence but there is no evidence that the opponent, or any other tobacco manufacturer, is known to make fundamental changes to its trade marks by the variation of a strong and memorable element[8].  Thus, there is no apparent basis for any potential customer to entertain a reasonable doubt that LUCKY DREAM or LUCKY DRAW was a deliberate variation of either LUCKY STRIKE or LUCKIES and intended to indicate a common trade source.

    [8] I note, consistently, the opponent has registrations that include the words LUCK STRIKE FILTERS, LUCKY STRIKE FLAVOR FLO FILTERS and LUCKY STRIKE UNTAMED FLAVOR.  See, among others, registrations 367392, 275360 and 365897.

27. However, there is more to the matter than this.  Deceptive similarity is a notional comparison but it must be approached in the light of the evidence and all of the surrounding circumstances of the case.  From the evidence, LUCKY is unusual, even singular, in terms of the trade marks in use for tobacco products.  In my own view it is not an obvious word to apply to them.  LUCKIES is a word by which the opponent’s products are, at least internationally, identified, and is, moreover, a registered trade mark in its own right.  When I allow for the possibility that many sales staff will be non-smokers, almost certainly unaware that LUCKIES means, to the cognoscenti, LUCKY STRIKE, the prospect of outright mistake becomes significant.  To a non-smoking salesperson, who might typically be an ordinary cashier at the tobacco counter of a busy supermarket or a service station, “a packet of Luckies” can mean either of two products, with no guarantee at all that both will be present for inspection.  Mistakes may well be made and, in the rushed transactions of such a venue, may go undetected.  This is particularly likely since cigarette packets are “busy”, as Mr Stevens noted, and given over, in significant part, to compulsory and very graphic health warnings that vary between packets but may be in common between brands.

1. My conclusion is that section 44 is triggered because the applicant’s trade marks are both deceptively similar to the opponent’s LUCKIES trade mark. However, I stress that this is a finding that I make in the light of the evidence put to me by the opponent, material which was not previously available to the examiner.

2. It will not be necessary to consider s 60, in relation to which I note that Mr Anese posed a number of questions with respect to extent of the opponent’s reputation.

   Misleading connotation - section 43

3. Mr Stevens went on to argue that a ground of opposition under s 43 was applicable. The relevant provision reads:

   43. 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.

4. Mr Stevens identified the position under this provision, relying on the decision of Spender J in Winton Shire Council v Lomas, 56 IPR 2002: “Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.”[9]  Put simply, he argued that, in the mind of potential customers, the word LUCKY has connotations of being a product of the opponent.  As he argued, that word is “singular and unusual because it is entirely fanciful in the context of cigarettes and other tobacco products”.  It is a word that, as I have already noted, is not used in Australia as part of any other trade mark in relation to such goods.

   [9] See also Big Country Developments Pty Ltd v TGI FridaysInc, 48 IPR 513 at 521.

5. The similarity of this argument to the contextual confusion argument that Mr Stevens put in reference to s 10 is obvious. Perhaps, none the less, this is a case that could be put under s 43. However, for much the same reasons I set down in relation to s 10, I do not consider the s 43 ground could be established. When the applicant’s trade marks are considered as wholes, I think it would be a particularly credulous consumer who would speculate that the trade mark, implicitly or explicitly, indicated a connection with the opponent.

   Conclusion

6. I find that the s 44 ground has been established against both applications and I refuse to register them. I award costs, at the scale, against the applicant.

   T.E. Williams
   Hearing Officer
   31 July 2008