NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited
[2011] FCA 1051
•9 September 2011
FEDERAL COURT OF AUSTRALIA
N.V. Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051
Citation: N.V. Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 Parties: N.V. SUMATRA TOBACCO TRADING COMPANY v BRITISH AMERICAN TOBACCO AUSTRALIA SERVICES LIMITED ACN 004 069 649 File number(s): QUD 260 of 2008 Judge: GREENWOOD J Date of judgment: 9 September 2011 Catchwords: INTELLECTUAL PROPERTY – consideration of an appeal under s 56 of the Trade Marks Act 1995 (Cth) from a decision of the Registrar’s delegate in opposition proceedings – consideration of a cross‑appeal – consideration of grounds advanced under ss 43, 44 and 60 of the Trade Marks Act 1995 (Cth) – consideration of whether the trade marks LUCKY DREAM and LUCKY DRAW are deceptively similar to registered trade marks LUCKY STRIKE and LUCKIES – consideration of the principles to be applied in determining deceptive similarity – consideration of the principles to be applied in determining the standard of proof to be discharged by the opponent in discharging the opponent’s onus of proof
TRADE MARKS - consideration of an appeal under s 56 of the Trade Marks Act 1995 (Cth) from a decision of the Registrar’s delegate in opposition proceedings – consideration of a cross‑appeal – consideration of grounds advanced under ss 43, 44 and 60 of the Trade Marks Act 1995 (Cth) – consideration of whether the trade marks LUCKY DREAM and LUCKY DRAW are deceptively similar to registered trade marks LUCKY STRIKE and LUCKIES – consideration of the principles to be applied in determining deceptive similarity – consideration of the principles to be applied in determining the standard of proof to be discharged by the opponent in discharging the opponent’s onus of proof
Legislation: Trade Marks Act 1995 (Cth), ss 10, 14, 33, 35, 52, 54, 55, 56, 197
Evidence Act 1995 (Cth), ss 76 and 79Cases cited: Blount Inc. v Registrar of Trade Marks (1998) 83 FCR 50; (1998) 40 IPR 498 at 506 - cited
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 - cited
Health World Ltd v Shin‑Sun Australia Pty Ltd (2010) 240 CLR 590 - cited
Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60 – cited and quoted
Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 – cited and quoted
Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 – cited and quoted
Lomas v Winton Shire Council [2002] FCAFC 413 – cited and quoted
Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 132 FCR 326 - cited
Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 209 ALR 93 - cited
Health World Ltd v Shin‑Sun Australia Pty Ltd (2005) 64 IPR 495 - cited
BP plc v Woolworths Ltd (2004) 62 IPR 545 - cited
Woolworths Ltd v BP plc (No. 2) (2006) 154 FCR 97 - cited
Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd (2003) 61 IPR 130 - cited
Pfizer Products Inc v Karam (2006) 237 ALR 787 – cited and quoted
McCorquodale and Others v Masterson (2004) 63 IPR 582 – cited and quoted
Kowa Company Ltd v NV Organon (2005) 66 IPR 131 - cited
Hills Industries Limited v Bitek Pty Ltd (2011) 90 IPR 337 – cited and quoted
Project Blue Sky Inc. v Australian Broadcasting Authority (1998) 194 CLR 355 - cited
Astley v Austrust Ltd (1999) 197 CLR 1 - cited
Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 218 CLR 273 - cited
Alcan (NT) Alumina Pty Ltd v Commissioner of Territory Revenue (Northern Territory) (2009) 239 CLR 27 - cited
Australian Securities Commission v Marlborough Gold Mines Ltd (1993) 177 CLR 485 - cited
Farah Constructions Pty Limited v Say‑Dee Pty Limited (2007) 230 CLR 89 - cited
Tay v Minister for Immigration and Citizenship (2010) 183 FCR 163 - cited
Australian Woollen Mills Limited v F.S. Walton and Company Limited (1937) 58 CLR 641 – cited and quoted
Cooper Engineering Co. Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 – cited and quoted
Jafferjee v Scarlett (1937) 57 CLR 115 - cited
Johnson & Johnson v Kalnin (1993) 114 ALR 215 - cited
Shell Co. of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 - cited
Campomar Sociedad Limited v Nike International (2000) 202 CLR 45 - cited
Berlei Hestia Industries Ltd v Bali Co. Inc (1973) 129 CLR 353 – cited and quoted
Aristoc Ltd v Rysta Ltd [1945] AC 68 - cited
de Cordova v Vick Chemical Co. (1951) 68 RPC 103 - cited
Re Rista Ltd’s Application [1943] 1 All ER 400 - cited
C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 - cited
Gardenia Overseas Pty Ltd v Garden Co. Ltd (No. 2) (1994) 29 IPR 485 - cited
Coca‑Cola Co. v All‑Fect Distributors Ltd (1999) 96 FCR 107 - cited
Wingate Marketing Pty Ltd v Levi Strauss & Co. (1994) 49 FCR 89 - cited
Pacific Publications Pty Ltd v IPC Media Pty Ltd (2003) 57 IPR 28 - cited
New South Wales Dairy Corp. v Murray Goldburn Co‑operative Co. Ltd (1989) 14 IPR 26 - cited
Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 - cited
Companhia Souza Cruz Industria E Comercio v Rothmans of Pall Mall (Australia) Ltd (1998) 41 IPR 497 - cited
N.V. Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated (2010) 86 IPR 206 - cited
Longhurst v Hunt [2004] NSWCA 91 - cited
Ordukaya v Hicks [2000] NSWCA 180 - cited
Short v Crawley [2003] NSWSC 1158 - cited
Gray v National Crime Authority [2003] NSWCA 111 - cited
Citibank Ltd v Liu; ABN Amro Bank NV v Liu [2003] NSWSC 569 – cited
Makita (Australia) Pty Ltd v Sprowles (2001) 52 NSWLR 705 - cited
R v Tang (2006) 65 NSWLR 681 - cited
Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd (2007) 245 ALR 15 - cited
McKay v Commissioner of Main Roads [2009] WASC 353 ASIC v Vines (2003) 48 ACSR 291 - cited
Australian Cement Holdings Pty Ltd v Adelaide Brighton Ltd [2001] NSWC 645 – cited
R v P (2001) 53 NSWLR 664 – cited
N v Sumatra Tobacco Trading Company v British American Tobacco Australia Services Limited [2011] FCA 255Date of hearing: 14, 15, 16, 17 and 18 March 2011 Date of last submissions: 25 March 2011 Place: Brisbane Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 325 Counsel for the Applicant: Mr S.C.G. Burley SC with Mr A.D.B. Fox Solicitor for the Applicant: Bennett & Philp Lawyers Counsel for the Respondent: Ms K.E. Downes SC with Mr B Le Plastrier Solicitor for the Respondent: Corrs Chambers Westgarth Lawyers
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
QUD 260 of 2008
BETWEEN: N.V. SUMATRA TOBACCO TRADING COMPANY
ApplicantAND: BRITISH AMERICAN TOBACCO AUSTRALIA SERVICES LIMITED ACN 004 069 649
Respondent
JUDGE:
GREENWOOD J
DATE OF ORDER:
9 SEPTEMBER 2011
WHERE MADE:
BRISBANE
THE COURT ORDERS THAT:
1.The decision of the delegate of the Registrar of Trade Marks made on 31 July 2008 is varied such that the trade marks of the applicant appellant, LUCKY DRAW and LUCKY DREAM be registered in respect of goods described as ashtrays (not made of precious metal), lighters, matches and smokers’ articles.
2.The application is otherwise dismissed.
3.The application of the respondent by way of cross‑appeal is upheld as to the ground reliant upon section 60 of the Trade Marks Act 1995 (Cth) by reason of the deceptive similarity of the trade marks LUCKY DRAW and LUCKY DREAM to the respondent’s registered trade mark LUCKIES, subject to the registration of LUCKY DRAW and LUCKY DREAM in respect of the goods described in Order 1.
4.The application by way of cross‑appeal is otherwise dismissed.
5.The costs of and incidental to the application and cross‑application are reserved.
6.The parties file and serve written submissions in relation to the question of the costs of the appeal and cross‑appeal within 21 days.
7.The parties indicate by their written submissions in relation to costs whether they wish to be heard orally in relation to costs in which event the Court will nominate a date for hearing oral submissions otherwise costs will be determined on the papers.
Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
QUD 260 of 2008
BETWEEN: N.V. SUMATRA TOBACCO TRADING COMPANY
ApplicantAND: BRITISH AMERICAN TOBACCO AUSTRALIA SERVICES LIMITED ACN 004 069 649
Respondent
JUDGE:
GREENWOOD J
DATE:
9 SEPTEMBER 2011
PLACE:
BRISBANE
REASONS FOR JUDGMENT
Background
These proceedings concern an application in the original jurisdiction by way of an appeal under s 56 of the Trade Marks Act 1995 (Cth) (“the Act”) brought by N.V. Sumatra Tobacco Trading Company (“NVS”) from a decision of the delegate of the Registrar of Trade Marks, made under s 55 of the Act, to refuse to register two trade marks of NVS namely, LUCKY DRAW (Application No. 963426) and LUCKY DREAM (Application No. 963428).
Each application was filed on 25 July 2003 in respect of goods in Class 34 of the Register described as “cigarettes, cigarette filters, kretek cigarettes, cigarette papers, white cigarettes, ashtrays (not made of precious metal), cigars, tobacco, lighters, matches, smokers’ articles”. LUCKY DREAM was accepted on 20 November 2003 and LUCKY DRAW was accepted on 1 December 2003.
The registration of each NVS trade mark was opposed by the respondent, British American Tobacco Australia Services Limited (“BAT”) on the footing that at the priority date of 25 July 2003 each NVS trade mark was deceptively similar to BAT’s registered trade marks LUCKIES (Trade Mark 81923) registered 31 July 1944 and LUCKY STRIKE (Trade Mark 151409) registered on 5 November 1958, both of which are registered in respect of Class 34 goods described as “manufactured tobacco”: the s 44(1) ground of opposition.
BAT also contended that by the priority date each registered trade mark had acquired a reputation in Australia and because of that reputation the use by NVS of each of its trade marks, said to be deceptively similar to BAT’s registered trade marks, would be likely to deceive or cause confusion: the s 60 ground of opposition.
BAT also contended that each NVS trade mark contained a particular connotation such that use of each trade mark in relation to the field of goods for which registration was sought would be likely to deceive or cause confusion: the s 43 ground of opposition.
Although it will be necessary to consider the precise findings of the Registrar’s delegate, it is sufficient for present purposes to note these matters. The delegate concluded that no apparent basis had been established “… 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” (para 26 of the delegate’s decision) and thus deceptive similarity had not been established. However, the delegate concluded that having regard to the opponent’s evidence, each of NVS’s trade marks proposed for registration were deceptively similar to BAT’s LUCKIES trade mark (para 28). The delegate found at para 27 that the “prospect of outright mistake” by some salespersons becomes significant, as a request for “a packet of Luckies” would mean LUCKY STRIKE or the product sold under the trade marks LUCKY DRAW or LUCKY DREAM.
The delegate found it unnecessary to consider the extent of BAT’s reputation for the purposes of s 60 of the Act (para 29).
The delegate understood the s 43 argument to be that the word “LUCKY” is singular, unusual and entirely fanciful in the context of cigarettes and tobacco products and thus “has connotations of being a product of [BAT]” and inferentially the trade mark LUCKY STRIKE was said to have that connotation at the priority date. The delegate concluded that use of the trade mark would not be likely to deceive or cause confusion because only a “particularly credulous consumer would speculate that [LUCKY DRAW or LUCKY DREAM], implicitly or explicitly, indicated a connection with [BAT]” (paras 31 and 32 of the delegate’s decision).
Accordingly, the delegate refused to register either trade mark having found the s 44 ground of opposition established in relation to BAT’s LUCKIES registered trade mark.
The Notice of Appeal
By its Notice of Appeal, NVS seeks orders that the decision of the delegate (so far as BAT’s opposition was upheld), be set aside; the opposition be dismissed; and each trade mark be registered. The grounds of appeal are these:
3.1The Delegate erred in finding at para [28] that [NVS’s] Trade Marks LUCKY DRAW and LUCKY DREAM (“the Opposed Marks”) were deceptively similar to [BAT’s] Trade Mark 81923 LUCKIES.
3.2The Delegate erred in concluding at para [27] that the Opposed Marks would be shortened or abbreviated to or mistaken for LUCKIES.
3.3 The Delegate erred in applying Section 44 in:
(a)Failing to have regard to the Opposed Marks in the form applied for; and
(b)Having regard to the trade reputation claimed by [BAT] to subsist in [its] trade marks 81923 LUCKIES and 151409 LUCKY STRIKE rather than the marks as registered.
3.4The Delegate erred in finding at para [27] that the Opposed Marks were deceptively similar to [BAT’s] Trade Mark 81923 having regard to his findings:
(a)At para [17] that the Opposed Marks would not ordinarily be shortened to “Luckies”;
(b)At para [18] that buyers of tobacco products in Australia are not “uninvolved consumers”;
(c)At paras [21, 22, 26 and 32] that the Opposed Marks look and sound different to [BAT’s] Trade Marks, have different meanings and are not likely to be considered by consumers to be connected with [BAT’s] Trade Marks.
The Notice of Cross-Appeal
By its Notice of Cross‑Appeal, BAT seeks orders that the delegate’s decision be varied such that the grounds of opposition under ss 43 and 60 are found to be established. Having regard to all of the subparagraphs within some of the grounds, there are 33 grounds of cross‑appeal relied upon by BAT.
As to the s 60 grounds, BAT says that the delegate ought to have considered s 60; a finding ought to have been made that each opposed trade mark is deceptively similar to the LUCKY STRIKE trade mark; each of BAT’s trade marks had acquired a reputation in Australia before the priority date; because of that reputation, use of the opposed marks would be likely to deceive or cause confusion; and, having regard to findings of fact that ought to have been made, s 60 required consideration (grounds 5(a) to (e)).
As to s 43, BAT says that s 43 was made out because both opposed marks are deceptively similar to the LUCKIES trade mark (as found) and also to the LUCKY STRIKE trade mark; the delegate failed to have regard to the reputation subsisting in LUCKIES and LUCKY STRIKE in rejecting the notion that a consumer would implicitly or explicitly find a connection between LUCKY DREAM, LUCKY DRAW and BAT; and, having regard to findings of fact that ought to have been made, s 43 has been established (grounds 6(a) to (e)).
The remaining grounds recite a series of matters that BAT contends ought to have been the subject of findings of fact. It is not necessary to set out all of those matters in these reasons particularly since an appeal under s 56 is a hearing de novo: Blount Inc. v Registrar of Trade Marks (1998) 83 FCR 50 per Branson J at 59; (1998) 40 IPR 498 at 506; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 per French J at [32] and [33]; (1999) 45 IPR 411.
However, a synthesis of the grounds of cross‑appeal is this: the delegate wrongly found that LUCKY DRAW and LUCKY DREAM would not ordinarily be shortened to Luckies (for the reasons recited at ground 7(a) to (e)); LUCKY DRAW and LUCKY DREAM would ordinarily be abbreviated to Luckies (ground 8); uncommitted casual smokers and third party purchasers of cigarettes are likely to be more error‑prone in the purchase transaction than other smokers (grounds 9 and 10); even though some people know LUCKIES is an abbreviation for LUCKY STRIKE, those people will nevertheless be deceived or confused by use of LUCKY DRAW or LUCKY DREAM (grounds 11 and 12); LUCKY DRAW and LUCKY DREAM sound and look like LUCKY STRIKE (ground 14); each of LUCKY DRAW, LUCKY DREAM and LUCKY STRIKE have comparable meanings and all three connote “good fortune” and “chance” (grounds 15, 16, 17, 18 and 19); a likelihood of confusion between LUCKY STRIKE and LUCKY DREAM would arise out of the use of LUCKY DREAM by NVS (grounds 20 and 21); because the meanings are not distinctly different, a suggestion of sub‑branding by BAT arises (grounds 22 and 23); and, because the meanings of LUCKY DRAW, LUCKY DREAM and LUCKY STRIKE are comparable, potential consumers may think that LUCKY DRAW and LUCKY DREAM are a deliberate variation of LUCKY STRIKE or LUCKIES thus suggestive of a common trade origin within BAT’s broader family of “LUCKY” trade marks.
The standard of proof in an application (appeal) under s 56 of the Act
Section 33(1) of the Act casts an obligation upon the Registrar to accept (after examination) an application unless he or she is satisfied that there are grounds for rejecting it or the application is not properly made. If so satisfied, the application must be rejected: s 31(3). The applicant may appeal to this Court under s 35 of the Act against a rejection decision or a conditional or limited acceptance decision. Such is the first stage of ensuring the integrity of the Register: Health World Ltd v Shin‑Sun Australia Pty Ltd (2010) 240 CLR 590 per French CJ, Gummow, Heydon and Bell JJ at [22] – [26].
Once accepted, a person may oppose the registration of an accepted trade mark by invoking proceedings under Division 1 of Part 5 of the Act. Section 54 opposition hearing proceedings are conducted in accordance with the Regulations made under the Act and the proceeding must, at its end, result in a decision made in accordance with s 55 which, relevantly, is in these terms:
55 Decision
(1)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.
An applicant or opponent may appeal to this Court under s 56 of the Act from a decision of the Registrar under s 55.
Because the determination of the s 56 application is by way of re‑hearing conducted as a hearing de novo (according respect and weight to the delegate’s opinion as an experienced and skilled administrative decision‑maker), the Court is required to determine on the merits the same question that was before the decision‑maker, namely, whether or not the trade mark should be registered, and in doing so the Court applies the same legal criteria that the Registrar was required to apply: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 per French J at [33]; Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60 per Sundberg J at [14]. No presumption of correctness in the delegate’s decision arises under the Act.
Under s 55, the Registrar must make a decision. He or she has two equally weighted options (so far as the words qualifying those options are expressed), either to refuse to register the trade mark, or to register it with or without conditions or limitations, in respect of the relevant goods or services. The statutory consideration that informs the decision as to either outcome is the extent (if any) to which any ground on which the application was opposed (ss 43, 44 and 60) has been established.
The opposition proceedings under Division 1 of Part 5 and the resolution of those proceedings by a decision under s 55 represents a second stage procedure for ensuring the integrity of the Register: Health World Ltd v Shin‑Sun Australia Pty Ltd (2010) 240 CLR 590 per French CJ, Gummow, Heydon and Bell JJ at [22] – [26].
Section 55 unlike s 33, does not start from the position that the Registrar must take the relevant administrative step unless satisfied of statutory matters. Under s 55, the Registrar must in the end “decide” and he or she will do so having regard to whether any ground of opposition has been established. Nothing in s 55 suggests that the standard to be applied by the Registrar in deciding whether any ground of opposition has been established in the course of opposition proceedings is anything other than on the balance of probabilities. Nothing in ss 55, 56 or 197 of the Act suggests either in their terms or in the context of the Act overall that in quelling the controversy raised by an appeal, as an exercise of original jurisdiction, the Court ought to apply a dispositive standard of proof of the relevant matters other than on the balance of probabilities.
Plainly enough, the opponent bears the onus and the relevant matters must be established at the priority date of 25 July 2003: Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 per Kitto J at 594 (at proposition (i)); Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 per Keane CJ, Stone and Jagot JJ at [28], [32] and [34].
Notwithstanding the terms of ss 55, 56 and 197 of the Act and the nature of the appeal proceedings, NVS contends that in determining whether a ground of opposition has been made good by BAT, the Court must be satisfied that the opposed trade marks “should clearly not be registered”. That standard of proof is said to arise out of the observations of Cooper, Kiefel and Emmett JJ in Lomas v Winton Shire Council [2002] FCAFC 413; [2003] AIPC 91‑839 per the Court at [17] to [19] and [36]; [2003] AIPC 91‑839, as applied either as a matter of principle (in terms of construction) or as a matter of comity, in a number of single judge decisions. However, according to other single judge decisions, their Honours’ opinion in Lomas as to the standard to be applied might be regarded as obiter and may place an impermissible gloss upon the clear text of s 55.
The decisions that apply the Lomas or “higher” standard of proof in an s 56 appeal include these: Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 132 FCR 326 per Bennett J at [22]; Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 209 ALR 93 per Finn J at [4]; Health World Ltd v Shin‑Sun Australia Pty Ltd (2005) 64 IPR 495 per Cooper J at [6]. Although the question of standard of proof was alive for the purposes of leave to appeal from the judgment of Finkelstein J in BP plc v Woolworths Ltd (2004) 62 IPR 545, the question was ultimately not required to be resolved by the Full Court in Woolworths Ltd v BP plc (No. 2) (2006) 154 FCR 97.
In Lomas, on an application under s 195(2) of the Act for leave to appeal from orders of the primary judge (and the determination of the substantive appeal itself), the Full Court observed at [17] (in the absence of any controversy on the point between the parties or submissions on the point) that the standard of proof to be applied in considering an appeal under s 56 is whether the trade mark should clearly not be registered, and at [36], the opponents would be required to discharge their onus “at least on the balance of probabilities” and “on one view” they “may be required” to establish [the ground] on the should clearly not be registered formulation.
As it turned out, the Full Court was not persuaded (at [45]) on the balance of probabilities and was “certainly not persuaded” (also at [45]) that the opposed application should “clearly be registered”. Although the observations at [17] to [19] seem to be expressed in unqualified affirmative terms, the observation at [36] suggests some degree of equivocation as to the standard. In any event, the Full Court in Lomas did not receive submissions on the point and was not satisfied on either basis.
In Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd (2003) 61 IPR 130, Gyles J at [13] observed that his Honour found it difficult to see how s 55 could be read in a manner which imported a higher standard although his Honour found that it was not necessary to form a view about that matter in order to determine the matter before him. In Pfizer Products Inc v Karam (2006) 237 ALR 787, Gyles J at [6] to [26] analysed the authorities and concluded at [26] that Lomas did not represent a binding authority of the Full Court and having regard to the clear words of the statute, “the opponent has to establish a ground of opposition, although not clearly establish such a ground”. In Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60, Sundberg J observed at [26] that “[i]n my view, there is nothing in the relevant provisions that supports the imposition of a higher standard, even at the acceptance stage”.
In McCorquodale and Others v Masterson (2004) 63 IPR 582, Kenny J at [24] notes the observations of Bennett J in Torpedoes Sportswear as to the standard of proof at [15] – [22]. At [24], Kenny J also notes the observations in Lomas at [36] (which seem to me to be equivocal) and no reference is made to [17] in Lomas. At [24], Kenny J observes that the opposition is to be “upheld only if the court is satisfied that the trade mark should not be registered because it is satisfied that a ground of opposition is made out”. At [63], Kenny J was satisfied that the “s 43 ground of opposition is made out”. There is no suggestion that her Honour is disposing of the controversy on the footing that the opponent must demonstrate a higher standard of proof than that actually applied by her Honour. In BP plc v Woolworths Ltd (2004) 62 IPR 545, Finkelstein J at [8], although discussing a different topic, simply notes the comments of the Full Court in Lomas at [17] to [19] and notes Torpedoes Sportswear at p 330 of the Federal Court Report (132 FCR 326) which contains [22] as to the standard adopted by Bennett J, and observes that his own approach may be inconsistent with the views expressed in those authorities, largely on the footing that the analysis “may have impermissibly borrowed from patent law”.
In Kowa Company Ltd v NV Organon (2005) 66 IPR 131, Lander J reviewed the authorities and concluded at [140] that his Honour ought to follow the Full Court decisions in Lomas (and also Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365) and as a matter of comity follow the decision of Bennett J in Torpedoes Sportswear even though his Honour doubted the correctness of those decisions for the reasons expressed by Gyles J and Finkelstein J. Lander J also noted in Hills Industries Limited v Bitek Pty Ltd (2011) 90 IPR 337 at [52] that Gyles J had further considered the matter in Pfizer and Gyles J and expressed the view that Lander J was in error in applying the decision in Lomas and Torpedoes Sportswear, in Kowa Company Ltd v NV Organon.
My own view is this.
There is nothing in the language of s 55 of the Act either by its terms or in the context of the Act generally having regard to the nature of opposition proceedings and ss 56 and 197 of the Act that suggests a standard of proof other than on the balance of probabilities. I accept that in construing the relevant provisions of the Trade Marks Act there is ultimately no persuasive utility in seeking to achieve symmetrical reconciliation with processes and procedures that prevail under a different Commonwealth Act, namely, the Patents Act 1990 (Cth). The provisions of the Trade Marks Act must be construed consistent with the well known approach to construction adopted by the High Court: Project Blue Sky Inc. v Australian Broadcasting Authority (1998) 194 CLR 355 at [69] to [71] and [78] per McHugh, Gummow, Kirby and Hayne JJ; Astley v Austrust Ltd (1999) 197 CLR 1 at [49] per Gleeson CJ, McHugh, Gummow and Hayne JJ; Network Ten Pty Ltd v TCN Channel Nine (2004) 218 CLR 273 at 280‑281 per McHugh A‑CJ and Gummow and Hayne JJ (Kirby J in dissent at 305‑306 although not as to the principle of construction); and Alcan (NT) Alumina Pty Ltd v Commissioner of Territory Revenue (Northern Territory) (2009) 239 CLR 27 at [47] per Hayne, Heydon, Crennan and Kiefel JJ.
Although it seems to me as a question of construction that the standard of proof to be applied in s 56 proceedings requires the opponent to establish the relevant ground on the balance of probabilities, four considerations suggest to me that the disposition of these proceedings requires the imposition of the “higher” standard.
First, an intermediate Court of Appeal in Lomas has expressed an affirmative view as to the standard at [17] notwithstanding the apparent equivocation at [36]. Although it may well be (and probably is) the position that the observations in Lomas at [17] are obiter, the remarks nevertheless represent an expression of opinion by an intermediate Court of Appeal that ought not to be put to one side lightly.
Secondly, the Full Court in Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 per Keane CJ, Stone and Jagot JJ had occasion to consider Lomas in the context of which party bears the onus in the proceedings (in the course of dealing with the heterodoxy advanced in that case by the opponent that the applicant for registration of the trade mark bears the onus), and although on the question of the standard of proof, the Full Court at [32] found that it was not necessary to determine whether the standard of proof required of an objector is higher than proof on the balance of probabilities, the Full Court did not cast doubt upon the observations in Lomas on that issue. Although, plainly enough, the observations at [32] are not an affirmation of the correctness of the comments in Lomas on the standard of proof, it is not irrelevant that the Full Court in the context of a discussion of Lomas did not expressly elect to cast doubt on that aspect of those observations.
Thirdly, the observations in Lomas as to the standard of proof have been applied in single judge decisions of this Court and although it is true, of course, that a different view has also been expressed, there is nevertheless a body of authority which expressly applies the observations in Lomas.
Fourthly, even though the observations in Lomas as to the standard of proof may be obiter, the expression of opinion ought to be given considerable weight as an expression of opinion of an intermediate Court of Appeal: Australian Securities Commission v Marlborough Gold Mines Ltd (1993) 177 CLR 485 per Mason CJ, Brennan, Dawson, Toohey and Gaudron JJ at 492; Farah Constructions Pty Limited v Say‑Dee Pty Limited (2007) 230 CLR 89 per the Court (Gleeson CJ, Gummow, Callinan, Heydon and Crennan JJ) at [135]; and Tay v Minister for Immigration and Citizenship (2010) 183 FCR 163 per the Court (Dowsett, Stone and Bennett JJ) at [13].
Accordingly, in determining the questions alive in the present proceedings I propose to determine whether BAT has established a ground of opposition on the footing that it must be shown that the NVS trade marks should clearly not be registered rather than whether the particular ground of opposition has been established on the balance of probabilities. The question of whether a higher or lower standard is to be applied in s 56 proceedings is a matter that must be determined by the Full Court of this Court.
The statutory provisions
Section 52(1) of the Act at the priority date provided that if the Registrar has accepted an application for the registration of a trade mark, any person may oppose the registration by filing a notice of opposition and s 52(4) provided that the registration of a trade mark may be opposed on any of the grounds specified in Division 2 of Part 5 and on no other grounds. Those grounds included any ground upon which the application might be rejected (s 43 and s 44 grounds) and on the further ground described in s 60.
Sections 43, 44 and 60 of the Act were, so far as relevant in these proceedings at the priority date, in the following terms:
43 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.
[emphasis added]
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 [emphasis added]
(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.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
[emphasis as to italics added]
…
60Trade 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. [emphasis added]
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
The reference in s 44(1) to the operation of that subsection being subject to subsections (3) and (4) of s 44 does not raise any matter for consideration in these proceedings.
By s 10, the term deceptively similar has the following meaning:
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. [emphasis added]
By s 14, the notion of similar goods has the following meaning:
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. [emphasis added]
(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 framework principles guiding the application of these sections of the Act
Although the proceedings in Australian Woollen Mills Limited v F.S. Walton and Company Limited (1937) 58 CLR 641 concerned a suit for infringement, Dixon and McTiernan JJ observed at 658 that “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 that question of fact, their Honours also said this in the well‑known passage at 658:
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 may 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.
[emphasis added]At 659, their Honours also said this:
The main issue in the present case is a question never susceptible of much discussion. It depends on a combination of visual estimation and judicial estimation of the likely effect to be produced in the course of the ordinary conduct of affairs.
[emphasis added]
In Cooper Engineering Co. Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, the question concerned an appeal by Cooper Engineering from a decision of the Registrar dismissing its opposition to the granting of an application by Sigmund Pumps for registration of the trade mark “Rainmaster” in respect of water spraying installations for horticultural and agricultural purposes on the footing that the applicant’s mark so nearly resembled the opponent’s trade mark “Rain King” as to be likely to deceive or alternatively the use of the applicant’s mark would be likely to deceive. The sole question (at 538) to be determined by Dixon, Williams and Kitto JJ was whether the word “Rainmaster” so resembled “Rain King” as to be likely to deceive.
In determining that question, their Honours said this in a passage which is also well‑known, at 538:
The proper approach to the answer to this question is well settled. It was summed up by Lord Parker in [the Pianotist Company Application], “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. You 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 confusion – that is to say, not necessarily that one man will be injured and the other will gain elicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods, then you … must refuse the registration in that case. …
It is sufficient if persons who only know one of the marks and have perhaps an imperfect recollection of it are likely to be deceived.
[emphasis added]
The two marks in contest must be considered and judged “as a whole” to determine the measure of their distinction (at 538): see also Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [92]. In the comparison of the marks as a whole, their Honours in Cooper Engineering concluded that “Rainmaster” does not look like nor sound like “Rain King” with the result that reliance was placed by the opponent upon the notion that deception arose out of the two marks “conveying the same idea”. As to that, their Honours observed at 539:
But it is obvious that trade marks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trade mark a complete monopoly of all words conveying the same idea as his trade mark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.
[emphasis added]
It follows that although words conveying the same idea cannot enable a de facto monopoly to arise, the fact the two marks convey the same idea can be taken into account in deciding whether the two marks which look and sound alike are likely to deceive or cause confusion. The presence of a common idea may be more likely to be recalled in connection with the relevant transaction than the precise details of the mark: Jafferjee v Scarlett (1937) 57 CLR 115 at 121 and 122. However, everything depends upon context as the suggestion of differing ideas may also serve to reduce the risk of confusion: Johnson & Johnson v Kalnin (1993) 114 ALR 215 at 219.
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: Shell Co. of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 416 per Windeyer J; C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 per Ryan, Branson and Lehane JJ at [42].
Two other considerations emerge from Cooper Engineering. Their Honours noted that a purchaser of spray nozzles and sprinklers would not be likely to be lacking in “discernment”. He would not be “in a hurry to buy”. He would not be likely to “pay any attention to the presence of a common word like rain in the combination”. Secondly, the prefix “rain” appeared in other trade marks for goods of the same description. The examples were Rainwell, Rainmaker, Rain Queen and Rainbow.
In Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J considered the principles to be applied in determining whether the use of the mark “Southern Cross” in respect of gas absorption refrigerators, electric refrigerators and component parts would be likely to deceive (or cause confusion) by reason of the pre‑existing registration of the opponent’s “Southern Cross” trade mark in respect of a range of particular goods. As to the principles, Kitto J said this in another well‑known passage at 595:
It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing off. While a mere possibility of confusion is not enough – for there must be a real, tangible danger of its occurring … - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt. … In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods: …) … In applications for registration, the rights of the parties are to be determined as at the date of the application. … The onus must be discharged … in respect of all goods coming within the specification in the application … of the goods or class of goods in respect of which registration is desired, and not only in respect of those goods on which [the applicant] is proposing to use the mark immediately. And the onus is not discharged by proof only that a particular method of user will not give rise to confusion. The test is, what can the applicant do if he obtains registration?
…
Of course, it is in relation to commercial dealings with goods that the question of confusion has to be considered, and the persons whose state of mind is material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark. References to these persons as purchasers or customers, and to buying and selling, in the Reckitt & Coleman case … indicate nothing more than a recognition of this fact.
[emphasis added]
In Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [50], French J interpolated that Kitto J’s observations as to persons caused to wonder results in 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 in question come from the same source and at [47] his Honour explained that the trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection might be regarded as effecting a prophylactic support for commercial distinctiveness. It would be enough, whether prophylactic or not, having regard to all the surrounding circumstances, if the ordinary person entertained a reasonable doubt as to the source or origin of the goods: Campomar Sociedad Limited v Nike InternationalLtd (2000) 202 CLR 45 per Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ at [83].
In Berlei Hestia Industries Ltd v Bali Co. Inc (1973) 129 CLR 353, Mason J (Stephen J agreeing) considered (for expungement purposes) whether the respondent’s use of the trade mark “BALI‑BRA” in connection with brassieres would be likely to deceive or cause confusion having regard to the appellant’s longstanding registration and use of the trade mark “Berlei” for its brassieres and in doing so considered the likelihood of confusion arising out of the phonetic similarity between Burley (appellant) and Barley (respondent) for similar goods otherwise distinguishable by quality of manufacture. Mason J at 362 reaffirmed the principle in Cooper Engineering and Southern Cross that a likelihood of confusion is to be answered not by past use but by reference to the use to which the mark can properly be put. His Honour observed that the issue is whether that use will give rise to a “real danger of confusion”. Although, of course, the evidence in every case is different, the evidential factors remain relevant and worthy of consideration. At 362 and 363, Mason J said this of those factors:
The evidence indicates that, in general, brassieres are bought and sold after a fitting or over the counter when the article is inspected by the customer, thereby reducing the likelihood of confusion arising from phonetic similarity. But the risk is not eliminated. … And in considering the likely reaction of a customer it is important to take into account, not the person whose knowledge of the two marks and the goods sold under them enables her to distinguish between them, but the person who lacks that knowledge. As Luxmoore L.J. said in Rysta Ltd’s Application; … “It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused”.
A factor to be taken into account is that no case of actual deception was established. Its significance is diminished by the circumstance that there has been a marked difference in the price and character of the goods manufactured by the parties.
Allowance must be made for imperfect recollection. As to aural or phonetic similarities, first impressions upon hearing references to the registered trade mark compared with the sound of the opposed trade marks in the context of the uses to which the opposed trade marks can be put, may be significant: Re Rysta Ltd’s Application [1943] 1 All ER 400 at 407 per Luxmoore LJ, adopted by Viscount Maugham (Lords Thankerton and Wright agreeing), Aristoc Ltd v Rysta Ltd [1945] AC 68.
In the context of the sound of the registered trade marks as compared with the sound of the opposed trade marks in hypothetical use in transactions for the oral sale and purchase of cigarette products and other goods the subject of the Class 34 applications, the notion of an “essential feature” of the registered trade mark may be important. In de Cordova v Vick Chemical Co. (1951) 68 RPC 103 (an infringement case) the Privy Council (Lord Radcliffe) addressed the significance of the word “VapoRub” in the registered proprietor’s trade mark “Vicks VapoRub Salve” (together with a triangular device) and the word mark “VapoRub” in the context of the use by the contended infringer of the description “Karsote Vapour Rub”. Lord Radcliffe observed at 106 that a trader infringes another’s trade mark if:
… he uses one or more of its essential features. The identification of an essential feature depends partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it. A trade mark is undoubtedly a visual device; but it is well‑established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has been long accepted that, if a word forming of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result. … [After having discussed the circumstances or conditions in which orders might be placed] – It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.
[emphasis added]In the result, “VapoRub” was regarded as an essential feature of the mark.
The question of imperfect recollection therefore is likely to be informed by, in part at least, the extent to which phonetic similarities arise and whether some part of the registered trade mark reflects an essential feature adopted by the applicant for the new mark. Two things inform imperfect recollection in transactions in which goods are bought and sold in oral transactions apart from broader contextual considerations. First, the degree of phonetic similarity is important. For example, in Berlei, the phonetic similarity was very significant as the phonetic pronunciation of the two marks exhibited the sounds Burley and Barley and in Rysta Ltd’s Application, the similarity was between Rysta and Aristocrat, with Viscount Maugham accepting Luxmoore LJ’s view of a tendency in speech to slur a word beginning with “a” resulting in a phonetic similarity of Rysta and Ristoc. Secondly, a part of the registered trade mark may be shown to be such an essential feature that it dominates the immediacy of recollection and may give rise to confusion. NVS contends that “LUCKY” is an essential feature of the mark LUCKY STRIKE.
Deceptive similarity by s 10 has at its centre the notion of resemblance. A trade mark is by that section taken to be deceptively similar to another mark if it so nearly resembles that mark that it is likely to deceive or cause confusion. The notion of resemblance involves an assessment by the Court of the visual and aural impressions made by the two marks but the likelihood of deception or confusion involves an assessment of what would be the probable visual and aural impressions on customers and potential customers which would arise if the marks were being used properly and within the scope of the registration: Shell Co. of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 416 per Windeyer J; C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 per Ryan, Branson and Lehane JJ at [42]; Gardenia Overseas Pty Ltd v Garden Co. Ltd (No. 2) (1994) 29 IPR 485 at 493; and Coca‑Cola Co. v All‑Fect Distributors Ltd (1999) 96 FCR 107 at 122. In Gardenia, the differentiating circumstances in the aural reception of the words “garden” and “gardenia” involved the syllable structure of the words and the emphasis in pronunciation of the words.
Although a person might be caused to wonder about the source or origin of goods in the course of aural references to a word or mark in the course of a transaction, the question ultimately is whether there is a real and tangible risk of confusion occurring. In considering aural comparisons the Court has regard to the natural and ordinary pronunciation of the words in question although evidence is admissible to establish a pronunciation that departs from the orthodox pronunciation. Such evidence might be called from participants in the relevant trade, or consumers: Wingate Marketing Pty Ltd v Levi Strauss & Co. (1994) 49 FCR 89 at 129 per Gummow J; and Pacific Publications Pty Ltd v IPC Media Pty Ltd (2003) 57 IPR 28 at 56 per Bennett J.
One further matter should be mentioned in relation to reputation in the registered trade marks against which the application for the opposed marks is considered. At [44], the Full Court in C A Henschke & Co. v Rosemount Estates Pty Ltd (2000) 52 IPR 42 observed that what is required is, essentially, a comparison between the mark of the registered owner and that of the alleged infringer or, alternatively, the applicant for registration. A wider enquiry of the kind that might be undertaken in a passing off action is not appropriate. See also New South Wales Dairy Corp. v Murray Goldburn Co‑operative Co. Ltd (1989) 14 IPR 26 at 67 per Gummow J emphasising that deceptiveness flows not only from the degree of similarity itself between the marks but also the effect of that similarity considered in relation to the circumstances of the goods, prospective purchasers and the market relevant to the monopoly attached to the registered trade mark. Thus, the Court is not looking to the totality of the conduct in the same way as in a passing off suit. Here, of course, the question of deceptiveness involves a consideration of the degree of similarity between the registered marks and the trade marks proposed for registration assuming the natural use of NVS’s trade marks across the full field of goods for which registration is sought having regard to the effect of that similarity taking account, particularly, of all of the considerations mentioned in the passages quoted at [44], [45], [47], [48] and [52] of these reasons and [44] to [65] generally.
As to the considerations more generally, I note the observations of the Full Court (Moore, Sackville and Emmett JJ) in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 at [72] to [90] and the review of the authorities by Bennett J in Torpedoes Sportswear at [72] to [80] which I adopt.
Finally, although, as I have already said, the facts of each case are different especially having regard to the evidence called in each controversy, some reference should be made to illustrative examples of the application of the accepted factors, in cases dealing particularly with trade in cigarettes and manufactured tobacco. In Companhia Souza Cruz Industria E Comercio v Rothmans of Pall Mall (Australia) Ltd (1998) 41 IPR 497, Wilcox J considered an opposition by Rothmans to an application for registration of Companhia’s trade mark “FREE” on the footing that the mark was said to be deceptively similar to Rothman’s registered trade mark “FREEDOM” in respect of the same class of goods. As to the importance of the sound of the marks, Wilcox J observed that sound remained important. The name would normally be spoken by the purchaser to the sales assistant. Cigarettes were often retailed in places of entertainment such as hotels, clubs and the like where considerable ambient noise occurred. Any substantial similarity between the sound of the brand names was likely to cause confusion. Further, any substantial similarity between the sounds of the trade marks was not negated by any differences in underlying ideas as the names communicated, in that case, the same idea. The second syllable in “freedom” was found to be a weak syllable that could be lost in speech in the circumstances of the sale transactions. As to the evidence of a linguistic expert, Wilcox J said this at 504:
Each party filed an affidavit made by a linguistic expert as to the similarities and dissimilarities between the words “free” and “freedom”. Without any disrespect to these experts, their evidence was unnecessary. It does no more than spell out the detail of what any reasonably well‑informed non‑expert already knows. I think judges may be allowed (and expected) to know the meaning of ordinary English words and their methods of pronunciation. It would be unfortunate if the notion got about that it was necessary for parties to go to the trouble and expense of retaining a linguistic expert in order to present an argument that a particular trade mark is, or is not, deceptively similar to another mark. The courts have proved well able to reach conclusions about that question without the assistance of linguists.
See also In the Matter of an Application by the United Kingdom Tobacco Company Ltd 29 RPC 489 per Parker J as to the likelihood of deception or confusion not because the trade marks “Stateroom” and “State Express” were not distinctly different but because of the tendency, on a substantial body of evidence, of the public to abbreviate and to use the abbreviation of a brand as the ordinary designation in common parlance of that brand.
See also the observations of the New Zealand Court of Appeal in N.V. Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated (2010) 86 IPR 206 although, of course, it must be remembered that every case turns upon the particular evidence adduced in the proceedings.
The decision of the Registrar’s delegate
At [17], the delegate observed that “LUCKY” is an adjective and a natural function of the word is to shift focus on to the word which it would ordinarily qualify. Hence, in the delegate’s view, a “lucky shot is not a lucky star, nor is a lucky day a lucky guess”. The delegate, at [17], said that he did not believe that either LUCKY DREAM or LUCKY DRAW would ordinarily be shortened to “Luckies”. At [18], the delegate said this:
Smoking is, in Australia, a habit or pastime that is restricted by law … 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.
At [19], the delegate observed that he was not convinced that casual smokers not committed to any particular brand are necessarily any more error‑prone that any other smokers. On the evidence before the delegate, the delegate concluded at [19] that the third party purchase of cigarettes on behalf of others was not a “significant part of the market”. At [19], the delegate accepted that the packaging of tobacco products may often not be readily seen or inspected by customers at places like service stations and supermarkets. The delegate also accepted at [19] that “there is no other trade mark in use in respect of tobacco in Australia that incorporates the word LUCKY”. The delegate regarded these matters as setting the “context of the comparison”.
At [21], the delegate “fully accept[ed] that LUCKIES can be an abbreviation for LUCKY STRIKE”. The delegate at [21] considered that “those who know that LUCKIES is an abbreviation of LUCKY STRIKE will simply not be deceived or confused by LUCKY DREAM or LUCKY DRAW”. The delegate found at [21] that neither of those trade marks “look like LUCKY STRIKE, nor do they sound like them”.
As to meaning, the delegate found at [22] that “[n]or is the meaning of either of the applicant’s trade marks at all comparable to either of the opponent’s trade marks”. At [22], the delegate said this:
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 lucky draw may be, those things are not a lucky strike. LUCKY STRIKE has … 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.
Although the delegate accepted that there are no other trade marks in Australia in respect of tobacco products incorporating the word LUCKY, the delegate considered that the normal function of the word lucky is as an adjective qualifying the noun that follows it, in the case of the applicant’s trade marks, DREAM or DRAW. At [22], the delegate said this:
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 reduced the weight because of the likely effect that the word “lucky” would have on the recollection of the user.
Having regard to the evidence, the delegate concluded at [25] that within the niche market of smokers, particularly if both products are present for selection, the delegate did not believe that there is “any particular risk of the confusion of a packet of LUCKY STRIKE with one of LUCKY DREAM”. Further, at [26], the delegate concluded that the meanings of the words LUCKY DREAM, LUCKY DRAW and LUCKY STRIKE are clearly different and any suggestion of sub‑branding seems unsupportable and “[t]here is no evidence at all of sub‑branding of tobacco products involving the variation, in a primary brand, of words that are distinctive”. The delegate at [26] concluded that there was no evidence before him that BAT or any other tobacco manufacturer was “known to make fundamental changes to its trade marks by the variation of a strong and memorable element”. Thus, it followed for the delegate that:
… 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.
At [27], the delegate addressed the question of deceptive similarity in relation to BAT’s LUCKIES trade mark and said 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”, … and given over, in significant part, to compulsory and very graphic health warnings that vary between packets but may be in common between brands.
In the result, the delegate concluded at [28] that both of the applicant’s trade marks are deceptively similar to BAT’s LUCKIES trade mark. At [29], the delegate found it unnecessary to consider s 60 of the Act.
At [32], the delegate concluded that the s 43 ground could not be established and found that “[w]hen 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 [exhibiting the singular, unusual and fanciful word LUCKY in the context of cigarettes and other tobacco products], implicitly or explicitly, indicated a connection with the opponent.
Both applications were refused on the footing that the delegate was satisfied that the s 44 ground had been established having regard to BAT’s prior registered LUCKIES trade mark.
The evidence relied upon by BAT
BAT relied upon a series of affidavits from industry participants, personnel from BAT, a report of an expert Professor John Hajek who is Professor and Reader in the School of Linguistics at the University of Melbourne and Director of the Research Unit for Multiculturalism and Cross‑cultural Communication within the School of Languages and Linguistics of the University of Melbourne, and affidavits from lawyers within the firm of solicitors representing BAT as to particular matters.
The evidence of Mr Gary Irwin Mack
Mr Mack’s first affidavit is dated 28 April 2009.
Mr Mack is the principal BAT witness as to the history of the marketing and sale of cigarette products under and by reference to the trade marks LUCKY STRIKE and LUCKIES.
He is a former employee of BAT. He ceased to work for BAT in 2007. Prior to his retirement, he worked in the Australian tobacco industry for approximately 30 years. He first began work in the tobacco industry on 1 March 1976 working at Leo Hemmingway and Picket (“LHP”). LHP was at that time a distributor of tobacco products including the products of WD & HO Wills and a range of “Phillip Morris” tobacco products. The WD &HO Wills products sold by LHP included what Mr Mack described as the “‘Lucky Strike’ range of cigarettes”.
Mr Mack’s role at LHP between 1976 and 1982 was that of a “cash van salesperson”. He worked in the company’s vans visiting tobacco retailers on a daily basis, taking orders and delivering tobacco products. He says that the LHP vans carried a range of cigarette brands including “Lucky Strike cigarettes”. His role involved a level of “salesmanship” in promoting and selling tobacco products to retailers serviced by the vans. Mr Mack worked either as a salesperson operating his allocated van or as a relief driver for other drivers. Mr Mack first became acquainted with the “Lucky Strike” brand of cigarettes when performing this role. He says he personally sold Lucky Strike cigarettes to retail outlets.
During the period 1976 to 1982, Mr Mack was aware from his employment at LHP that LHP had approximately 95 to 100 vans on the road in Victoria. Each cash van salesperson had a designated geographical error they serviced. Mr Mack serviced an area described as the “Northern suburbs of Melbourne” including Fawkner, Broadmeadows and Craigieburn.
In his role as a relief driver which he performed regularly in the period between 1979 to 1982, Mr Mack relieved approximately 30 to 40 drivers in their designated areas in Victoria including Wangaratta, Shepparton, Alexandra and Gippsland. Mr Mack says that at least once a day, on average, as a cash van salesperson, he visited retailers who displayed and sold “‘Lucky Strike’ cigarettes”. He says that during his time as a cash van salesperson including when relieving other drivers, “Lucky Strike” non‑filter variety of cigarettes was the best selling variant of “‘Lucky Strike’ cigarettes”. He says that on average during this period, he sold approximately 10 to 15 cartons of “Lucky Strike” cigarettes per week to a variety of retailers throughout Victoria.
He says that in 1982 his role at LHP changed to that of Training and Development Manager. He performed this role until 1985. The new role involved travelling with new cash van salespersons to provide field training to them. Between 1982 and 1985 LHP vans continued to stock and sell “Lucky Strike” cigarettes. He says that he observed that the level of sales of these cigarettes to retailers was about the same as it had been when he had been a cash van salesperson (that is, 10 to 15 cartons per week sold to retailers).
In the training and development role, Mr Mack says he visited retailers displaying and offering for sale “Lucky Strike” cigarettes on almost a weekly basis throughout Victoria and southern New South Wales.
In 1985, Mr Mack commenced work for WD & HO Wills in Papua New Guinea as a Regional Manager and continued in that role until 1988. Mr Mack trained sales representatives on various selling and operational techniques.
In 1988, Mr Mack resumed the role of Training and Development Manager in Australia with LHP based in Mulgrave, Victoria, where WD & HO Wills located its Head Office. This role was not unlike the earlier role although more “classroom” style training was undertaken. Nevertheless, Mr Mack says that he went out on the road with cash van salespersons on average one week every month. In doing so, he says he saw “Lucky Strike” cigarettes being displayed, offered for sale and sold by a large number of retailers throughout Victoria which he visited in the course of his training role.
In 1990, Mr Mack was appointed as a Distribution Area Manager for LHP. He held this position until 1995. This role involved training and developing cash van salespersons who reported to him about their selling activities within each geographical territory. A large part of his role involved “in‑field training” which required him to visit tobacco retailers within the various geographical areas within Victoria. He says that at many tobacco retailer sites that he visited in undertaking in‑field training (that is in the period 1990 to 1995), he saw “Lucky Strike” cigarettes being displayed and offered for sale. He says that he also saw retailers selling “Lucky Strike” cigarettes. He says that he also saw replacement stock of “Lucky Strike” cigarettes being sold to tobacco retailers by cash van salesperson.
In 1995, Mr Mack was appointed an Area Manager for WD & HO Wills and in this role he was responsible for managing a number of his employer’s trade marketing representatives who marketed the company’s cigarette products and who undertook the distribution and merchandising of those products including “Lucky Strike” cigarettes.
He says that in about late 1996, WD & HO Wills focused upon a “channel structure” whereby it attempted to sell products through specific classes of retailing activity. He says that segments of the market were identified. These segments involved what he describes as “geographical‑type channels” and “channels according to vendor type”. The classes of vendor were these: Convenience Independent which was comprised of independently owned convenience stores such as corner shops and newsagents; Grocery Organised which was comprised of the supermarket chains such as Woolworths, Coles, Franklins, and Bi‑Lo which had centralised management control; Convenience Organised which was comprised of convenience stores within chains such as Shell, BP, Mobil, Caltex, Ampol and 7 Eleven (these convenience organised stores were often, but not always, attached to petrol outlets and in some cases included liquor outlets); Grocery Independent which was comprised of independently owned supermarkets such as IGA Stores many of which were located in rural locations; Independent Price Cutters (Specialists) which was comprised of specialist tobacconists sometimes described as “IPCs”; and the HORECA channel which was comprised of hotels, restaurants and cafes and hence the acronym HORECA.
At the time of the adoption of the channel structure, Mr Mack’s title changed from Area Manager to Convenience Channel Manager with the result that Mr Mack managed convenience stores in Melbourne, Adelaide and the Perth metropolitan areas including 7 Eleven stores, service stations and mixed businesses.
Mr Mack says that in the period in which he was the Convenience Channel Manager (from 1996 to 2000) he continued to visit tobacco retailers one week in each month. He says that during these visits he saw “Lucky Strike” cigarettes being “promoted, displayed, offered for sale and sold” by tobacco retailers across Melbourne, Adelaide and Perth. He says he visited retail premises in each of these cities accompanied by sales representatives and area managers in the course of their visits to the particular retail premises in each city. He says he observed the sales representatives performing their duties and, during this time, he “often saw and heard sales representatives and Area Managers talking about ‘Lucky Strike’ cigarettes with these retailers”.
Mr Mack says that in these exchanges the “sales representatives, Area Managers and retailers sometimes referred to ‘Lucky Strike’ cigarettes as ‘Luckies’ in these discussions”.
In 2000, Mr Mack became State Manager for BAT for both Victoria and Tasmania. He was responsible for overseeing all sales‑related matters within those States.
At the end of January 2002, Mr Mack was promoted to the position of National Field Manager for BAT based in Sydney. In this role he was responsible for managing State managers who in turn were responsible for managing a large number of sales representatives. Mr Mack was responsible for all brands sold by BAT in Australia. In that role, Mr Mack prepared and oversaw the marketing, promotion, distribution and presentation of “Lucky Strike” cigarettes from 2002 until 2007. This particular role involved responsibility for promotional activities and the implementation of various marketing campaigns.
Mr Mack says that he estimates visiting in the period from 1976 when he commenced with LHP to 2007 when he retired from BAT, thousands of retail outlets around Australia of “an extraordinarily wide and diverse nature in terms of size, type, geographical location, and style, which outlets were displaying, offering for sale and selling ‘Lucky Strike’ cigarettes”.
Mr Mack says that in nearly “all retail outlets” that he saw where “Lucky Strike” cigarettes were offered for sale, the packets were displayed in retail display units which allowed consumers to clearly see the name LUCKY STRIKE on the packet.
He says that, in addition, BAT operated and owned many thousands of vending machines and in his position as State Manager, he was aware that there were approximately 3,000 vending machines in various locations in New South Wales and about 1,200 vending machines throughout Victoria. He was aware, when State Manager, that there were vending machines operated by BAT throughout the rest of Australia although he cannot recall the numbers of machines in other States or Territories.
He says that when he assumed the role of National Field Manager at the end of January 2002, he was responsible for managing the vending division of BAT throughout Australia and he received monthly reports from each State and Territory. He also assisted in deciding in what manner the machines would be branded. He says that one form of branding adopted by BAT involved endorsing the “LUCKY STRIKE” emblem, colours and words on the outside of the machine. This method of branding had been adopted by WD & HO Wills and then by BAT from about 1995. A photograph of one such machine so branded is in evidence.
Mr Mack says that he is aware from his various roles including that of National Field Manager that “LUCKY STRIKE” cigarettes and tobacco products have been sold in Australia in a variety of packet sizes, shapes and forms, including filtered and unfiltered soft packets of 20 cigarettes; hard flip‑top packets of 20 filtered cigarettes, “Lights” cigarettes and “Menthol Lights” cigarettes; and in cartons, tins of 20 cigarettes; a limited edition silver coloured packets of 20 cigarettes; further tins; and loose roll‑your‑own tobacco. Each of these variants bore the names “LUCKY STRIKE” and “LUCKIES” on the packaging. He says that some of these variants were sold by him in 1976 when he first started in the tobacco industry.
Mr Mack says that during the course of his career in the Australian tobacco industry (1976 to 2007), he observed that “the name LUCKIES always appeared on packets of ‘Lucky Strike’ cigarettes, whether in the ‘fine print’ on the side, on the back of the packet or on the top front lid of each hard flip top packet”. He says that in 1994, health warnings took the place of the name “LUCKIES” on the top front lid. He says that packets of “LUCKY STRIKE” cigarettes bearing the name LUCKIES on the top front of the lid were nonetheless displayed and sold by retailers throughout 1995 in what was known as the “sell‑out period”.
Mr Mack says that in the late 1990s, WD & HO Wills devoted significant advertising and promotional expenditure to the promotion of the “Lucky Strike” brand. He says that as a general rule, brand campaigns extended over an eight to 12 week period. One significant campaign for “Lucky Strike” cigarettes occurred in the first quarter of 1999. It represented a brand re‑launch on a national scale. As a part of that re‑launch, new promotional messages for the Lucky Strike brand were devised and a full advertising campaign was introduced. It was a national campaign. Mr Mack was responsible for overseeing the arrangements sales representatives made with tobacco retailers for “Lucky Strike” cigarettes to be positioned in dispenses on counters within tobacco retailers. Mr Mack says that this made the name Lucky Strike more visible. Photographs taken in a retail store; an IGA supermarket; a Shell service station, a BP service station and in other tobacco specialists are attached as Annexure C to Mr Mack’s affidavit. Mr Mack says that these photographs illustrate the way in which “Lucky Strike” cigarettes were typically displayed to members of the public as part of the 1999 sales campaign. Mr Mack also says that these photographs are substantially reflective of displays that he oversaw throughout Victoria and Tasmania in the grocery and convenience channels during “this time” (being the 1999 re‑launch campaign).
Mr Mack says that in addition to these steps, more prominent “Lucky Strike” signage was introduced for cigarette dispensers and packet counter units in stores.
Mr Mack also says that the 1999 re‑launch campaign included other point of sale material devised in order to promote “Lucky Strike” cigarettes including various sized posters bearing the names “Lucky Strike” and “Luckies”; signage; mobiles hung from the ceiling; and signs for shelving within retail sites. Mr Mack says that all of these promotional devices bore prominent images of the names “Lucky Strike” and often “Luckies”. Mr Mack says that as part of the campaign, it was intended that material of this kind be distributed to every retailer selling “Lucky Strike” cigarettes around Australia during the period of the re‑launch. He says that he saw various retailers in the States under his control display at that time the point of sale material described above including cigarette dispensers. He says that the image of the “Lucky Strike” name and red emblem was the key or centrepiece of the advertising campaign.
Mr Macaro was cross‑examined about these matters.
Mr Macaro described Lucky Strike going back to 1995 as a “niche product”. He could bank on the customers who bought them. He said that overall sales of Lucky Strike cigarettes amounted to about 1 to 1½% of sales. He says he was asked to estimate how many packets he sold for the purposes of his affidavit rather than percentage. He said that his franchise agreement with the buying group requires the retailer to “stock every product that’s available” and when a new brand is introduced, the manufacturers adjust the “planogram” to locate the relevant product in the relevant place. As to restrictions upon display, Mr Macaro said his recollection was that the restrictions were more pointed in 2005 although there were restrictions in 2003 as well. He seems to recall changes in the legislative arrangements in about 2005. Mr Macaro said that although he did not have any particular reason to pay more or less attention to Lucky Strike than any other brand, he just made sure that the brand was stocked because he was concerned about the whole portfolio and did not want to be out of stock.
As to his recollection, Mr Macaro was challenged about his estimates of sales of 120 packets of Lucky Strike cigarettes each week. He said that he did not go back and check his records from 1995 to see if his estimates were correct because he was very familiar with the purchasing patterns and he was responsible for ordering stock. He rejected the notion that he might have been incorrect or slightly wrong about his estimates and said that he had used the word “approximately” because “on average” 120 packets of Lucky Strike cigarettes were sold each week. It could have been a couple more or a couple less but he recalls that he was ordering 12 cartons every week and said “… we have set limits … our stock holdings, per brand, and part of my job – twice a week, I do the orders. So basically I had to make sure at any given time that I had 120 packets of Lucky Strikes on hand, because, roughly, we would sell somewhere in the order of about 11 and 11½ cartons of Luckies a week” (T 216, lns 13 to 18).
As to the pattern, Mr Macaro was asked whether he sold Lucky Strike in carton lots to the odd customer and said: “Yes, … Probably, you know, more than half – we’re a tobacconist … so we sell a lot of cartons and we sell a lot of packets. So if they are a weekly customer, they will purchase their carton at the beginning of the week, or at the end of the week, and if they are a daily, they will buy it daily” (T 216, lns 19 to 26), and so far as Lucky Strike was concerned about half of that went to customers who bought them by carton‑load, that is to say, approximately “five or six would be carton sales and the rest would be packet sales” (T 216, lns 32 to 33).
As to the use of the nickname Luckies, Mr Macaro accepted that he was aware that BAT promotes that name and said that Luckies was on the pack. Mr Macaro accepted that he could identify Lucky Strike by the colours and packaging.
As to the sequence of the transaction as at 2003, Mr Macaro said that the steps were these. The customer might come in and ask for a packet of Lucky Strike. Mr Macaro would turn to the place where he knew Lucky Strike was located in the planogram. He would see that place by looking for the bullseye in the middle of the packet. Before doing that, he would ask the customer for the variant. He would select the cigarettes and put the packet on the counter. The customer would look at it and then pay him but sometimes “they would just chuck it [the packet] straight in their bag or in their pocket” (T 218, lns 10 to 12) and when asked whether Mr Macaro would expect the consumer to look at the packet, he said “Not always – it’s a pretty busy shop, so things happen very quickly … a lot quicker than you just described” (T 218, lns 11 to 14). When asked “You were too busy to see what they were doing?”, Mr Macaro said (T 218, lns 15 to 25):
No, no. Look, we are a busy store. We’re a strip shop; a lot of people double park, and things like that. So basically, you know, we grab the smokes, we put them down, we take their money and off they go, and it happens very quickly … if they want to look at it, they will look at it. If they don’t, they don’t.
Mr Macaro also accepted that it was not his job to worry about how consumers were thinking when buying a packet of cigarettes “… but I would like to, at least, make sure that they are getting what they are asking for. And, sometimes, they don’t know how to ask for it. They, themselves, are confused. So we have to try and get more information about of them” (T 218, lns 30 to 35).
As to whether the place in the planogram where Lucky Strike might sit is kept on full vision for the purchaser to see, Mr Macaro said that that was not always so because, in Victoria, the area allowed for display behind the counter in the planogram is four metres square and Mr Macaro carries seven and a half metres of stock with the result that anything beyond four metres has to be covered and so the customer is not going to see it.
As to nicknames, Mr Macaro said that it was especially the younger smokers that created or adopted nicknames and the nicknames he could recall were those set out in the affidavit “including obviously, at that time, Luckies” and by using the phrase “at that time”, Mr Macaro accepted that he was directing his mind to the time when he swore his affidavit in 2009.
Mr Macaro also accepted that packaging was important.
As to mistakes, Mr Macaro said that mistakes generally arise in two situations the first being when a customer asks “for the usual” and the retailer does not get that right and the second mistake occurs when the retailer is told the brand but not the variant and the retailer might get that wrong. Mr Macaro said that those were the mistakes “from our side of the counter” although the consumer might make a mistake about what he or she wants. Mr Macaro said that those type of mistakes are not necessarily corrected by the customer before he or she leaves the store and “[n]ormally it happens when they’re outside just about to open it, to have a smoke, that they realise and then come back and say, ‘excuse me, I was …’” (T 222, lns 26 to 28). That happens about once a week in Mr Macaro’s store. Mr Macaro serves 200 customers a day and the store serves 500 customers a day over six days a week. Mr Macaro accepted that a mistake once a week in the context of those numbers is not a very large number of mistakes.
As to the question of confusion, Mr Macaro was asked whether he had had any experience of confusion in his experience as a tobacconist and he said (T 223, lns 45 to 48; T 224, lns 1 to 14):
Well, I have and that’s what I was trying to say before. When they relaunched John Players in 2009, then there was a complete and utter confusion because people don’t ask for Peter Jacksons they ask for PJs … and the John Player customers are asking for JPs … and the customers are getting JPs and PJs back to front, sideways, whatever. So between me, my staff and the consumer, I would like it to be like foolproof if we could … but it doesn’t happen that way and that’s why when I looked at this and saw Lucky Draw, Lucky Dream, Lucky Strikes, as a retailer, I don’t like that scenario because it’s just – it’s messy. We’re either going to have Lucky Strikes or we’re going to have a mixture of all three in one.
As to the proposition that Mr Macaro could train new staff members and less experienced staff members in selling cigarettes, Mr Macaro said, “… but I can’t train the customers. I can train my staff but I can’t train customers that well so … it’s a difficult one – it’s just communication of, you know, products, product knowledge and, you know, sometimes you might have younger staff, part time staff, you know” (T 224, lns 34 to 40).
Mr Macaro, like the other tobacco retailers, swore an affidavit in which he expresses opinion evidence about the question of confusion in the mind of consumers. Evidence of this kind was also put on in that form by BAT from Mr George Georgas, Mr Sarris and Mr Behrendt. Although I propose to admit into evidence all of the affidavits of these witnesses, I do not accept that any of them has established a foundation for the giving of expert opinion evidence because they have not established a proper body of specialised knowledge for the purposes of s 79 of the Evidence Act.
However, I do accept that at least in terms of their own experience as retailers they are entitled to not only give evidence of their direct observations of behaviour but that they are entitled to give evidence of whether they, as very experienced retailers, would be confused if asked to sell a packet of cigarettes in response to a request for a packet of Luckies in circumstances where a packet of cigarettes was available for sale under the name Lucky Draw or Lucky Dream. In doing so they are not offering expert opinions about how customers would behave but giving evidence borne out of their own experience, upon the relevant hypothesis.
Mr Mack is entitled to give such evidence as well.
I do not propose to review the remaining evidence from the tobacco retailers.
I will simply set out the conclusions arising from all of the evidence.
The evidence of Professor Hajek
Before doing so, it is necessary to address the admissibility of the expert evidence called by BAT from Professor Hajek. I propose to admit Professor Hajek’s affidavit material and expert observations. Professor Hajek is a Language Scholar. His qualifications and expertise are set out extensively in his affidavit of 29 April 2009. His expert report is contained at pp 43 to 45 of his affidavit of 29 April 2009. It is in quite brief terms. He observes that Australian English is well‑known for its speakers’ marked tendency to use nicknames often formed by abbreviating words, frequently by adding short suffixes to a word. Examples include: Australian reduced to Aussie; Costume/cozzie; present/prezzie; cigarette/ciggie; cardigan/cardie; barbecue/barbie; cockatoo/cocky; dockworker, doctor/docky.
Professor Hajek says that this tendency to shorten and create nicknames is more common in Australian English than in other varieties of English even though other varieties may also show similar nicknaming types.
Professor Hajek says that a statistical analysis of a database of 1,740 items by Simpson (2008) finds it by far the most common pattern observed among nine different types of patterns and occurs in almost half of all cases (824 items, 47%). Professor Hajek says that there are numerous references to Australian nickname formation in official documentation prepared by federally funded organisations and some examples are given.
Professor Hajek was asked whether it is more common for Australians to shorten words or use slang or nicknames in spoken language than people in other countries. He says that by reason of his experience, “I observe that the phenomenon is much more common in Australian English than elsewhere, and is often identified as a mark of it, when compared to British and American English”. Professor Hajek was asked whether he had heard of a product called Lucky Strike. He said he had, for cigarettes. He was asked:
Have you heard of a nickname/slang term for “Lucky Strike”? If yes, what is it and why do you think this nickname/slang term is used for Lucky Strike? If no, what nickname or slang term do you think Australian consumers of “Lucky Strike” would be likely to use for “Lucky Strike” and why?
Professor Hajek responded:
I cannot recall if I have directly heard the use of a slang term for Lucky Strike, at least in recent memory – I have little direct contact these days with smokers. However, I would fully expect the term Lucky/Luckies to be used. It is an easy and logical shortening for Australian speakers to make. The first word is already perfectly shaped according the frequent slang formation observed for Australian English (cozzie, prezzie, cocky). It is also paralleled by other cigarette brand names, eg. Winnies for Winfield cigarettes.
Professor Hajek was also asked:
Is there a nickname/slang term that you would think Australian consumers would be likely to use for cigarettes called “Lucky Draw”? If yes, what is it and why do you think this nickname/slang term is likely to be used?
Professor Hajek responded:
The nickname Australian consumers would be likely to use is Lucky (sg), Luckies (pl). Such a use is to be fully expected – for the reasons given in the preceding paragraph.
Professor Hajek gave the same answer to the same question framed in relation to Lucky Dream.
Professor Hajek swore a further affidavit on 24 March 2010 in which he provided a further brief report at pp 1041 and 1042. Professor Hajek was asked to assume, contrary to his earlier predictions in the earlier report, that Australians, would not, in practice, shorten “Lucky Strike”, “Lucky Draw” and “Lucky Dream” to “Lucky” or “Luckies”. Assuming those facts, Professor Hajek was asked whether either word, in these two‑word “brand names”, would receive more emphasis than the other or be more likely to be remembered by consumers than the other.
Professor Hajek said this:
In cases where two words are used together with the structure such as Lucky Draw, Lucky Strike or Lucky Dream where in each case the 1st element is a modifier such as an adjective or a noun functioning as an adjective followed by the second element (also known in grammatical terms as the head of the phrase), usually a noun, it is likely that the first element will receive more emphasis. The reasons for this are as follows:
(a)the structure is specific + generic. The first element provides additional, specific information that helps identify or narrow down a specific kind of noun. So in the case of “Lucky Draw” or similar the second element could be any kind of “draw”, while the first element identifies only the draws that are lucky, as opposed to anything else;
(b)in English phonology such phrases (adjective + noun, adjectival noun + noun) are often subject to predictable destressing and reduction of the second element [examples are given]. In these cases we see greatest prominence is given to the first element which retains stress – confirming it to have more emphasis (as measured phonetically by greater loudness, duration and pitch);
(c)further evidence for (a-b) is to be found in the fact the Australians often elide the more generic element and retain and modify the first, e.g. [examples are given]. In the case of either “black man” or “Blackman”, any informal reduction by Australians leads to “blackie”.
As to the second aspect of the matter, Professor Hajek said this:
The first element in constructions such as “Lucky Draw” – given its more specific, identifying nature – is more likely to be remembered and linked to a specific item product or brand name. Additional confirmation of this point is given in (c) above which shows that it is the first element that is retained.
The highly positive connotation of “lucky” will also increase the likelihood that consumers will favour the remembering of it over a second element. A similar effect can be seen with other brand names, such as Silk Cut which, following the patterns observed in Australian English, is likely to be reduced to Silks or Silkies. The emphasis placed here on the first element is reinforced again by the positive and luxurious connotation of the word “silk”. In the case of brand names such as Benson & Hedges, the principles outlined above and in my previous report, do not apply. In cases such as these the grammatical structure is completely different. We have here two personal nouns with equal status, connected by the ampersand (&), and neither modifies the other. In this case reduction, if it occurs, is more likely to be the result of abbreviation, ie. B & H. A reduced form such as Bensies seems impossible.
As stated in my previous report, and based also on the evidence given above, it is worth reiterating that any two word brand names that share the first element Lucky are equally likely to be reduced to the single term “Lucky” or “Luckies”.
The objection to the reception into evidence of Professor Hajek’s reports is put on the basis that Professor Hajek has no expertise in matters of branding, marketing or brand names; he was not provided with any information or assumptions of fact in relation to the context for the words he was asked to consider and his evidence does not disclose any assumptions of fact to support his conclusions. Nor do his reports reflect, it is said, any contextual description of the environment within which the terms might be used.
I accept into evidence Professor Hajek’s affidavits and reports.
However, I accept that as an expert in linguistics, Professor Hajek is in a position to express opinions about language structure and grammatical and syntactic analysis. However, on the question of the disposition of market participants engaged in consumer transactions in relation to particular goods in a particular environment within the context of particular behavioural experience all conditioned by a particular regulatory environment, I am not persuaded that Professor Hajek’s predictive opinion about the propensity of consumers to abbreviate Lucky Dream and Lucky Draw in the way he suggests is authoritative in terms of the field of his expertise.
I regard the experience of the retailers and Mr Mack engaged, as they are, as ordinary persons using ordinary language in the context and settings of the commercial transactions in question, as much more compelling. Professor Hajek expresses his opinions in quite short form and although I do not criticise him for that, it seems to me that there is some force in the criticisms made by NVS in their objections to his evidence.
Conclusions and findings
Accordingly, I have reached these conclusions and make these findings.
I do not regard Lucky Draw or Lucky Dream as words which bear any visual or phonetic resemblance to Lucky Strike.
I accept that Lucky Strike is a trade mark which has been used for many years in the context of the sale of cigarettes and although the market share for Lucky Strike cigarettes over time, its revenue contribution and profit contribution may be insubstantial measured against the benchmarks of other brands, the trade mark is nevertheless a feature of the market, albeit a segment of the market which might be described as urban sophisticates or well‑educated people seeking a point of differentiation. In making that observation, it seems to me that the presence of Lucky Strike in the market is one of the contextual market circumstances, independently of any question of the nature or extent of the reputation that the trade mark might enjoy.
The evidence demonstrates that there are no other cigarettes in the market which contain the word “Lucky” as a trade mark.
I also accept that over a long period of time the word Luckies has been used as a nickname for Lucky Strike or an abbreviation or shorthand way by which consumers in the ordinary course of cigarette purchase transactions sometimes seek out a packet of Lucky Strike cigarettes.
I accept that in many retail sites, whether specialist tobacconist sites or in the sites described by Mr Mack (including petrol station sites and the other diversified places of sale of cigarette products), that often the transaction will involve environments which are noisy or busy and engage circumstances where either or both the retailer or the consumer, from time to time (although, of course, not always), is under pressure to move through the transaction quickly by reason of the pressure of the daily events of selling.
I also accept that although the packaging, get‑up, colouration and other factors representing the livery or presentation of the product to the market is important and that manufacturers are astute to the importance of brand prominence and get‑up integrity, the sale and purchase of cigarettes is dominated by an oral transaction in which the customer asks for a packet of cigarettes by reference to the name of that product. The consumer was not in a position in 2003 to select a packet of cigarettes or pick up, look at or inspect a range of cigarette products on the shelf to exercise some sort of deliberative selection of a product. The consumer would ask the retailer for a packet of the nominated cigarettes by the name of that product or, where relevant on occasions, by reference to one of the abbreviations described by the retailers in their evidence as their common experience of those particular abbreviations, including Luckies.
The retailer in these transactions hears the description and responds to it by turning to the planogram behind the counter and selecting the product or, where the retailer carried a range of stock which meant that not all stock could be contained within the planogram, the retailer would take stock from beneath the counter or from some other area where the consumer had no visual experience of the product. Even where, in 2003, the consumer had a visual point of reference to the planogram, the transaction was dominated by the oral elements of the engagement involving the oral request and a response.
I accept that from time to time mistakes occurred.
They were not frequent but they were systemic in the sense that they occurred with some degree of regularity notwithstanding that in the scheme of the totality of the transactions they were small. They were however real and not illusory. Some of the examples given in evidence by the retailers suggested some degree of confusion immediately at the point of sale and other evidence suggested not simply confusion but transactions in which a packet of cigarettes other than the one asked for by the customer was supplied. Mostly, that was by reference to a mistake in the variant, but not always. Sometimes customers picked up the packet of cigarettes from the counter and placed them quickly in their pocket or in a bag and on other occasions the retailer might place the product into a bag (with or without other products) and hand the bag to the customer. Many times, no doubt, the customer looked carefully at the packet.
Such were the dynamics in the ordinary way between ordinary people engaged in ordinary transactions of this kind.
I accept that the introduction into the market of tobacco products bearing the trade marks Lucky Dream and Lucky Draw in circumstances where cigarette products are sold under the trade mark Lucky Strike might bring about what Mr Macaro described as a “messy” situation which, as a retailer, he would not like. Nevertheless, because I am not satisfied that there is any aural or phonetic resemblance or similarity between Lucky Draw and Lucky Strike or Lucky Dream and Lucky Strike, I am not satisfied that there is a real and tangible risk of confusion in the course of the oral transactions described in the evidence.
I also accept that smokers tend to have some degree of affection or affinity for a particular brand and, in the main, they will seek out that brand and, by and large, take steps to ensure that they have “their brand”. I accept that smokers who purchase cigarettes on their own behalf tend to be loyal to brands and are more likely than not to be discerning. They are likely to look at the counter and the packet of cigarettes and, quickly or not, satisfy themselves that they have got “their brand”. However, sometimes from the customer’s side of the counter, mistakes occur and also, mistakes occur, on the retailer’s side of the counter. The experience of the retailers in this regard is entirely unsurprising in the context of the purchase and sale of cigarette products in environments which are diversified and sometimes noisy and busy and the participants may be in a hurry to move on. Perhaps, as Mr Macaro observed, they are double‑parked in the street or perhaps there are just a lot of people in the shop and the retailer wants to complete the transaction as quickly as possible without being rude.
However, although there is considerable brand loyalty, the promotional activities undertaken by BAT are, plainly enough, directed to winning customers to brands as an exercise in product substitution in a competitive market economy and the sales statistics given by Ms Wallace show movement, and at times significant movement, in the numbers of sticks of Lucky Strike cigarettes sold across the period. Those statistics evidence substitution and switching
I accept that on the evidence the name Luckies is demonstrated to have been used by customers in the abbreviated sense earlier mentioned not only because the term Luckies was used up to one point in the chronology of the use of Lucky Strike and Luckies on the packaging and at a later point on the back of the packet and not the front of the packet (and in that sense WD & HO Wills and BAT educated the market to the use of that name) but also because customers and retailers came to use that name, for whatever reason, as a common description of Lucky Strike cigarettes. I infer that this was a combination of the education in the use of that name by BAT and behavioural characteristics of customers, consciously or unconsciously, of abbreviating Lucky Strike to Luckies in much the same way as other abbreviations were adopted in the tobacco trade as reflected in the evidence.
Notwithstanding the systematic way in which the manufacturers went about deploying product and new brands and the systematic way they went to retail sites and loaded the planograms with product in accordance with the particular layout selected by them to be implemented in the retail sites (by the retailer’s sales representatives), I am not satisfied that the planogram arrangements inevitably and necessarily meant that a retailer could simply turn behind him and select a product on hearing the oral request without any likelihood of confusion or mistake.
I accept that manufacturers of cigarette products manage the livery and get‑up of the brand and although changes occur in get‑up (see [145]), manufacturers assert controls over get‑up and try to maintain consistency in the look and feel and get‑up for cigarette products.
It seems to me that the regulatory environment reflected in the documents put to Mr Mack and accepted by him meant that the progressive reduction in the capacity of customers to independently engage with the product directly, and increased the propensity for mistake. The retailer acts entirely as an intermediary between the product and the customer through the mechanism of a relatively quick oral purchase transaction.
I accept that in the ordinary course of use of the English language in descriptive sentence structure, a person might describe events with the conjunction of the words my “lucky day” or my “lucky car” or that was a “lucky guess” or I was born under a “lucky star” or I hit the mark with a “lucky shot”. However, excising those descriptive terms from the orthodoxy of conversation or narrative dialogue and transposing words into the context of the role of commercial badges of origin, commands different considerations. It seems to me that Lucky Draw, in a commercial context, embodies two equally weighted words which identify a product and its origin. So too do the words Lucky Dream and the words Lucky Strike. I am not persuaded that there is a real and tangible likelihood of confusion between Lucky Dream and Lucky Strike or between Lucky Draw and Lucky Strike notwithstanding that, “Lucky” is common to all; the word “Lucky” is only used in relation to cigarettes as Lucky Strike; and transactions take place in what are often noisy, busy environments where the transaction can occur quickly.
I accept that although there are a range of possible meanings of these words, the adoption of the term Lucky does convey some field of common meaning in the nature of general good fortune, although there may be other non‑overlapping meanings (see the descriptions attributed to the terms “strike”, “draw” and “dream” in the Macquarie Dictionary, 5th Edition, 2009).
However, I am satisfied that there is a real likelihood of confusion between Luckies and Lucky Dream and Lucky Draw having regard to aural considerations. Contextually, in the market for cigarette products, Luckies is treated as an abbreviation of Lucky Strike whether by education by BAT or by reason of a disposition in that market of some consumers and retailers to abbreviate, or both. A retailer hearing a request for a packet of Luckies might well reach to the planogram or below the counter for a packet of Lucky Strike cigarettes or, on the hypothesis that a product is in the planogram or under the shelf called Lucky Draw or Lucky Dream, the retailer hearing the reference to Luckies might (in a real and tangible sense rather than a fanciful remote sense), respond to that request by reaching for the rival’s product. Alternatively, from the consumer’s side of the counter, a buyer might seek out the purchase of a packet of Lucky Dream or Lucky Draw cigarettes and use the term Luckies with the result that a retailer might supply that consumer with a packet of Lucky Strike cigarettes. I accept, in this context, that a packet of cigarettes bearing the trade mark Lucky Dream or Lucky Draw would reflect differentiating get‑up and that the use of the term Luckies by a consumer seeking out a packet of Lucky Draw or Lucky Dream cigarettes is a less likely source of confusion than a retailer hearing a request for Luckies (as a reference to Lucky Strike) and mistakenly selecting the rival’s product.
A number of the retail witnesses have given evidence of their experience over the period of their working life in the retail side of the tobacco industry including matters which relate to the period as at July 2003. However, in expressing their views specifically of mistakes or their experience of confusion from their own perspective (rather than the opinions they gave of the reactions of consumers in the hypothetical presence of trade marks Lucky Draw and Lucky Dream) they have placed their observations or views at the time and date of the swearing of their affidavits in 2009 rather than expressly turning their attention to events as at the priority date of July 2003. I infer however that their evidence remains good for the period at July 2003 as I have no reason to believe that circumstances or events, at least as they relate to the transactions, greatly altered between 2003 and 2009, so as to put that evidence to one side and entirely discard it.
I also accept that the evidence demonstrates that cigarettes are also bought by third parties for others. The third party purchasers may not be smokers and the “once removed” consideration suggests a greater likelihood of confusion emerging in respect of those transactions.
I accept that the promotional material described by Mr Mack (see [117]) was distributed into the market. I infer that if the manufacturer went to the trouble and expense of producing a range of promotional material of that kind, it must have been used and distributed in the way suggested in the evidence.
Notwithstanding the acceptance by Mr Mack and Ms Wallace of the limitations in the health and standing of the brand Lucky Strike, I accept that a reputation has been demonstrated by reference to sales of a significant absolute number of sticks over a long period of time in both names. I also accept that notwithstanding the importance of get‑up, colouring and livery, the dominant feature in the mind of retailers and consumers governing the sale, selection and purchase of the product is the name and it seems to me that even though the livery has, in one sense, a persona, the product is known, that is to say the reputation, resides in the brand name, albeit in a stylised or crafted way.
I am satisfied that the s 44 ground is made out as Lucky Dream and Lucky Draw are deceptively similar to BAT’s registered trade mark “LUCKIES” subject to the question of “similar goods”. I am also satisfied that the s 60 ground is made out on the footing that each of NVS’s trade marks are deceptively similar to BAT’s “LUCKIES” mark and because of the reputation subsisting in “LUCKIES”, each NVS trade mark would be likely to deceive or cause confusion.
Similar goods
Section 44(1)(a)(i) refers to “similar goods”.
Section 14(1) provides that goods are similar to other goods if they are the same as the other goods or if they are of the same description as that of the other goods. BAT’s LUCKIES trade mark is registered in respect of “manufactured tobacco”. NVS has applied for registration of its trade marks for goods in Class 34 in respect of a range of goods described as “cigarettes, cigarette filters, kretek cigarettes, cigarette papers, white cigarettes, ashtrays (not made of precious metal), cigars, tobacco, lighters, matches, smokers’ articles”. The term “manufacture” (Macquarie Dictionary, 5th Edition, 2009) means “the making of goods or wares by manual labour or by machinery, especially large scale; the making of anything; a thing or material manufactured”, and “manufactured” means “to make produce by hand or machinery or especially by large scale”. Tobacco is defined to mean: “any plant of the genus Nicotiana, especially one of those species as N. tabacum, whose leaves are prepared for smoking or chewing or as snuff; the leaves so prepared; any of various similar plants or other genera [Spanish tobacco, from Arawak (from Guarani) pipe for smoking, or roll of leaves smoked, or plant]”.
It is difficult to see how “ashtrays (not made of precious metal), lighters, matches or smokers’ articles” could be described as “manufactured tobacco”. Accordingly, neither Lucky Draw nor Lucky Dream is prohibited from registration in respect of those physical articles mentioned above, by reason of s 44 of the Act and nor is BAT’s opposition made out under s 60 in respect of those goods.
Section 43
I am not satisfied that the evidence demonstrates “some connotation” within s 43 of the Act which either of the trade marks LUCKY DREAM or LUCKY DRAW has and therefore I am not satisfied, for the purposes of s 43, that because of some unidentified particular connotation the trade marks are said have, use of the trade marks in relation to the goods for which registration is sought, would be likely to deceive or cause confusion.
Remaining matters
Gary James Courtney
The respondent also seeks to rely upon the affidavit of Gary James Courtney sworn 29 April 2009. Since swearing his affidavit, Mr Courtney has died. He died on 13 October 2009. At the time of swearing his affidavit, Mr Courtney was the State Business Manager (Western Australia and Tasmania) at TSG Franchise Management Pty Ltd. TSG is the franchisor for approximately 237 tobacconist franchises throughout Queensland, New South Wales, Victoria, Tasmania and Western Australia that trade under the name “Tobacco Station”. Mr Courtney was also the Manager at “Cigarette Express” which is a division of TSG and franchisor for approximately 18 smaller retail premises.
On 23 February 2010, BAT advised NVS of its intention to serve a Notice of Intention to Adduce Evidence of a Previous Representation under Order 33, rule 16 of the Federal Court Rules and s 67 of the Evidence Act 1995 (Cth). That notice was served on NVS on 1 February 2011.
As appears from the above short description, Mr Courtney’s evidence concerns the same field of issues addressed by the other retail witnesses. BAT seeks admission of Mr Courtney’s affidavit as an exception to the hearsay rule under s 63 of the Evidence Act. NVS opposes the admission of the affidavit into evidence on the footing that the affidavit ought to be excluded in the exercise of the Court’s discretion under s 135 of the Evidence Act because, it is said, its probative value is substantially outweighed by the danger that the evidence might be unfairly prejudicial to NVS (s 135(a)) and might be misleading or confusing (s 135(b)).
The unfair prejudice is said to arise out of NVS’s inability to cross‑examine Mr Courtney on critical issues and NVS is prevented from challenging the reliability of the witness: Longhurst v Hunt [2004] NSWCA 91 at [46]; Ordukaya v Hicks [2000] NSWCA 180 at [6]. In addition, NVS contends that Mr Courtney’s evidence simply repeats the evidence of BAT’s trade witnesses and in that sense Mr Courtney’s evidence is not either central or primarily the source of probative evidence on the questions in issue. Other witnesses deal with the topic.
It seems to me that Mr Courtney’s affidavit ought to be admitted into evidence and I will do so. However, having regard to the cross‑examination of Ms Hands, it also seems to me that little weight ought to be attributed to Mr Courtney’s affidavit as NVS has no opportunity to test the contentions advanced by Mr Courtney. I have carefully read Mr Courtney’s affidavit material. I note its contents but in reaching the conclusions I have reached, I have afforded Mr Courtney’s assertions very little weight: Short v Crawley [2003] NSWSC 1158 at [8]; Gray v National Crime Authority [2003] NSWCA 111 at 174; Citibank Ltd v Liu; ABN Amro Bank NV v Liu [2003] NSWSC 569 at [21] as the field of the contentions simply cannot be tested.
Standard of proof
In reaching the conclusions I have reached, I am satisfied that the opponent has established the higher standard of proof required of it as discussed in these reasons.
The affidavit of Stephen Marcus Stern
Mr Stern is a partner of Corrs Chambers Westgarth, the solicitors for BAT. BAT relies upon an affidavit of Mr Stern sworn 29 April 2009. The affidavit of Mr Stern was admitted into evidence subject to any objections that might later be articulated by BAT or identified in submissions. No such objections have been pressed and the affidavit is admitted into evidence.
The affidavits of Chrystal Sheila Dare
Ms Dare is a lawyer employed by the solicitors for BAT. Ms Dare filed an affidavit electronically on 10 March 2011 and a further affidavit was filed on 14 March 2011. Both of these affidavits are admitted into evidence as no objections have been taken to the affidavits although NVS reserved the opportunity to do so if thought appropriate, in final submissions.
The affidavit of David Tristan Pitt
Mr Pitt is a lawyer employed by Bennett & Philp Lawyers who act on behalf of NVS. Mr Pitt filed an affidavit on 5 November 2009 which contains an extensive analysis throughout Australia of legislation regulating the tobacco industry and particularly the sale, distribution and promotion of tobacco products. I accept that review as an accurate one.
The orders
It follows that the appeal by NVS is to be upheld to the following extent. The decision of the Registrar’s delegate is to be varied so as to enable the trade marks Lucky Dream and Lucky Draw to be registered in respect of goods confined to “ashtrays (not made of precious metal), lighters, matches and smokers’ articles”. The cross‑appeal by BAT is to be upheld in relation to the contentions relating to “Luckies” going to the s 60 ground of cross‑appeal subject to the registration of LUCKY DREAM and LUCKY DRAW in respect of the goods mentioned above. The parties will be ordered to make written submissions in relation to the question of costs.
I certify that the preceding three hundred and twenty‑five (325) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood. Associate:
Dated: 9 September 2011
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