Dunhill Tobacco of London Limited v Wuhu Cigarette Factory

[2006] ATMO 94

TRADE MARKS ACT 1995

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

Re:Opposition by DUNHILL TOBACCO OF LONDON LIMITED to protection of international registration designating Australia 998867 (International Registration No. 822027) (34) - D DEVICE - in the name of WUHU CIGARETTE FACTORY (WUHU JUANYAN CHANG).

Delegate:

Rachel Dunn

Representation:

Opponent: Trevor Stevens of Davies Collison Cave

Holder: Unrepresented and did not appear or file written submissions

Decision:

Regulation 17A.29 opposition:

Grounds under sections 44 and 60 established – protection refused.

Background

1.     Wuhu Cigarette Factory Wuhu Juanyan Chang, (‘Wuhu’), requested protection in Australia for the following international registration designating Australia (‘IRDA’):

Application Number:	998867
Priority Date:	3 March 2004
Goods:	2.     Class 34:  Cigarettes, tobacco leaves, cut tobacco, cigars, cigarette papers, tobacco pipes, cigarette cases, cigarette tips, lighters for smokers
Trade Mark:
Acceptance Advertised:	8 July 2004

3.     Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29.

4.     Dunhill Tobacco of London Limited, (Dunhill), filed a notice of opposition on the first of October 2004 citing all possible grounds under the Trade Marks Act 1995, (the Act).

5.     Dunhill filed evidence in support of the opposition.  However, as Wuhu has not nominated an address for service in Australia, there was no requirement for the evidence to be served.  Wuhu did not file or serve evidence in answer.

6.     As a Delegate of the Registrar of Trade Marks, I heard the matter in Sydney on 21 July 2006.  Dunhill was represented by Trevor Stevens of Davies Collison and Co.  Wuhu was unrepresented and did not appear or file written submissions.

Grounds of Opposition

7.     Regulation 17A.31 sets out the grounds for opposing an IRDA. These include sections 39 to 44 of the Act (by virtue of 17A.31(1) and 17A.28(1)), and sections 58 to 61 of the Act (by virtue of 17A.31(3)).  Regulations 17A.28(2) and 17A.31(3) establish that:

• Where the relevant section refers to an “application” an IRDA is to be understood; and
• Where an “applicant” is referred to, the holder of the IRDA is to be understood.

8.     Only grounds of opposition under the provisions of sections 44 and 60 of the Act were pressed at the hearing and I formally find that none of the other grounds have been established.

Submissions and the Law

Deceptive Similarity

9.     As deceptive similarity is necessary to establish a ground of opposition pursuant to both sections 44 and 60, I will deal with this question first.  Dunhill owns a number of registrations incorporating the letter D, however for the purposes of this opposition registration 888731 is relied upon and has the following details:

Application Number:	888731
Priority Date:	10 September 2001
Goods:	10.   Class 34:  Cigarettes, tobacco, tobacco products, smokers' articles, matches
Trade Mark:

11.   Dunhill submits that the essential feature of its registration and the subject trade mark is the capital letter D, however substantial identity between the trade marks is not pressed.  Deceptive similarity was argued strongly though, and it was submitted that the principle of imperfect recollection is particularly relevant with two trade marks that are essentially the letter D.

12.   Deceptive similarity is found when the trade marks so nearly resemble each other that deception and confusion is likely to occur.  I need to consider the likely effect or impression produced on and retained by the ordinary run of customers and potential customers, and this needs to be a first, overall impression rather than a careful comparison.[1]

[1] Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd [2004 FCAFC 201]

13.   The first overall impression of the trade marks is that they are both the letter D.  Wuhu’s D contains a semi-circle or ‘baby D’ within the loop of the capital D, however this does not change its identity away from the capital letter D.  If anything the baby D enhances the idea of the letter D, as it by itself can also be seen as a letter D.

14.   The trade marks would be pronounced in an identical fashion.  Cigarettes and smoker’s articles can be obtained from tobacconists, general retailers and grocers by verbal request in person, whereby the trade marks would both be referred to as the letter D.  The goods involved are relatively low cost items and may well be purchased on the run or in a hurry.  The other popular method of purchase for cigarettes is through vending or slot machines, both of which may not display the entire packaging clearly, and may lead to consumers mistakenly purchasing the wrong D branded goods.

15.   Dunhill submits there is a narrow market in Australia for cigarette products.  This submission combined with the tight restrictions on the advertising of these products, I believe, makes the dominant feature of cigarette trade marks even more important in consumer recognition of trade source.  A consumer who knew of Dunhill’s D products and who was faced with Wuhu’s  products may well be caused to wonder about the trade source.

16.   I believe the likely impression produced on and retained by consumers to be one of similarity.  There is a significant possibility of deception and confusion occurring between these trade marks, and I am satisfied that they are deceptively similar.

17.   Now that I have found the trade marks are deceptively similar, the other issues pursuant to sections 44 and 60 may be discussed.

Section 44

18.   In addition to being deceptively similar, the trade mark of the opponent needs to have an earlier priority date than that of the application, and the goods involved need to be the same or similar, before a ground of opposition pursuant to section 44 can be established.

19.   The trade mark registration that Dunhill relies upon has a priority date earlier than that of the subject application.  The trade marks both claim goods in Class 34 and these are clearly the same goods, revolving around cigarettes and tobacco products.

20.   The ground of opposition under section 44 has been established.

Section 60

21.   In order to establish a ground of opposition pursuant to section 60, the opponent’s trade mark needs to have acquired a reputation in Australia, and that reputation needs to be of such an extent that deception and confusion would occur between the deceptively similar trade marks.

22.   The capital letter D has been adopted by Dunhill as an obvious derivation of its name and numerous registrations in many jurisdictions emphasize the letter or are composed entirely of the letter.  Dunhill has a stated policy to focus trade mark attention on the capital letter D, and it expects that this will overtake the reputation currently existing worldwide for the letter D in combination with the word Dunhill and/or in combination with the claret and gold colours.  Use of the letter D in the grey button, as relied upon by Dunhill, only began in Australia in 2003 and in an overseas market in 2002.  I need to assess Dunhill’s reputation in the letter D as of the priority date of the subject application – 3 March 2004.

23.   A reputation in a product that can not be advertised in the normal manner needs to be assessed carefully.  The normal manner of providing copies and details of media advertisements is simply not possible in this case.  Dunhill has submitted details of its company history, sponsorship, sales figures, company policy of focusing trade mark efforts on the letter D, and a list of worldwide registrations.  Additionally, an entry in a ‘Tobacco Encyclopedia’ lists Dunhill as an international brand and offers a short history of the brand and the company.  Some advertisements are submitted, however these are all for jurisdictions other than Australia or for in-flight magazines.

24.   Sales figures for Dunhill branded cigarettes are substantial, running into many millions of dollars per year in Australia alone.  The numbers of individual cigarettes produced per year were in the billions back in the early 1970’s and are well into many billions per year now.

25.   Dunhill submits there is significant customer recognition of the letter D trade mark and this combined with the international reputation it enjoys is enough to infer reputation.  I was referred to the discussion of reputation by Kenny, J in McCormick & Co. v McCormick 51 IPR 102 in which it is emphasized that a willingness to assess reputation from facts when taken together is an appropriate approach. When assessing international reputation it is important that the overflow of this into Australia is established. It is of no help to Dunhill if its reputation exists solely overseas and no appreciation of that reputation resides in the Australian market. The evidence does not clearly establish an appreciation of Dunhill’s international reputation by Australian consumers. What it does clearly establish however, is that there are a relatively small number of manufacturers offering the relevant goods, sales are very strong in Australia, and it is submitted that recognition of the letter D brand would be high even though it has only been in use since 2003.

26.   I have carefully considered the comments of Kenny J and also taken into account the special circumstances prevailing in the tobacco industry.  The combined effect of the material before me does not override the fact that the trade mark relied upon has only been in use for one year before the relevant date.  I am not satisfied that Dunhill has supported a claim for reputation as envisaged by this section of the Act.  This ground of opposition has not been established.

Decision

27.   Regulation 17A.34(1) provides:

17A.34 (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

28.   The ground of opposition in relation to section 44 of the Act has been established and I refuse to extend protection in Australia in respect of all goods listed in the IRDA.  The International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with Regulation 17A.34(2).

Costs

29.   As the successful party Dunhill is entitled to its costs and I award costs against Wuhu as per Schedule 8 of the Trade Mark Regulations 1995.

Rachel Dunn

Hearing Officer

Trade Marks Hearings

16 December 2006