Re: Opposition by W.D. & H.O. Wills (Australia) Limited to the registration of the following applications numbers:

[1998] ATMO 27

TRADE MARKS ACT 1955

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

Re:      Opposition by W.D. & H.O. WILLS (AUSTRALIA) LIMITED to the      registration of the following applications numbers:
           612705 in the name of RIGGIO TOBACCO CORPORATION LIMITED;
           612708 in the name of THE HOUSE OF EDGEWORTH INCORPORATED;      and 612706 and 613224, both in the name of ROTHMANS OF PALL MALL        (AUSTRALIA) LIMITED

Background
As provided in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

This matter concerns four applications numbers 612705, 612706, 612708 and 613224.  The details of these applications are set out hereunder: 

612705, lodged on 29 September 1993, in the name of Riggio Tobacco Corporation Limited, for a word trade mark WINFIELD EXPRESS, in respect of “cigarettes” (in class 34);

612706, lodged on 29 September 1993, in the name of Rothmans of Pall Mall (Australia) Limited, for the word trade mark ROTHMANS EXPRESS, in respect of “all goods in class 34”;

612708, lodged on 29 September 1993, in the name of The House of Edgeworth Incorporated, for the word trade mark HOLIDAY EXPRESS, in respect of “all goods in class 34”; and

613224, lodged on 6 October 1993, in the name of Rothmans of Pall Mall (Australia) Limited, for the word trade mark FREEDOM EXPRESS, in respect of “all goods included in class 34”.

In this decision, I will refer to the four companies in whose names the applications were lodged as “the applicants”.

Acceptance of the trade marks was advertised in the Australian Official Journal of Trade Marks as follows: number 612706 in the journal of 24 November 1994, numbers 612705 and 613224 of 15 December 1994 and number 612708 of 5 January 1995.

W.D. & H.O. Wills (Australia) Limited (the opponent), lodged notices of opposition to registration of the marks of applications numbers 612705 and 612706 on 23 February 1995 and, on 10 March 1995, in respect of applications numbers 612708 and 613224.  The grounds of opposition in relation to all four applications are identical.  At the hearing, the opponent mainly concentrated on the evidence and submissions based on section 33, that the opposed trade marks are substantially identical with, or deceptively similar to, a number of opponent’s identified registered trade marks for the same goods, or goods of the same description as those of the present applications; and on section 28, that use of the applicants’ trade marks would be likely to deceive or cause confusion in view of the use and reputation of the opponent’s trade marks, and that the applicant’s marks were not entitled to protection in a court of justice. 

The serving and lodging of the opponent’s and applicants’ evidence on all four applications were completed on 19 November 1997.  All four applications were heard together in Sydney.  Ms J.E. Stuckey-Clarke of Counsel, instructed by Mr Andrew Lockhart of Baldwin Shelston Waters, patent and trade mark attorneys of Sydney, appeared on behalf of the opponent.  Mr Trevor Stevens of Davies Collison Cave, patent and trade mark attorneys. also of Sydney, represented the applicant. 

Evidence
Evidence in support:

*     statutory declaration on each of the four opposed applications by Maxwell            Robert Bonner, national trade marketing development manager of the     opponent company, together with exhibits MB-1 to MB-4.

Evidence in answer:

*     statutory declarations on applications numbers 612705 and 612708 by      Michael Patrick Attride, authorised attorney of Riggio Tobacco Corporation        Limited and The House of Edgeworth Incorporated, with exhibits A to D;

*     statutory declarations on applications numbers 612706 and 613224 by      Michael Patrick McNulty, the marketing director of Rothmans of Pall Mall        (Australia) Limited, with exhibits A to D.

Evidence in reply:

*     statutory declaration on each of the four opposed applications by Robert    John Hoskings, national grocery manager of the opponent company, with            exhibits RJH1;

*     statutory declaration in relation to the four opposed applications by Andrew         Scott Lockhart, legal practitioner of the firm of patent and trade mark     attorneys, Baldwin Shelston Waters, acting for the opponent, together with          annexures ASL1 and ASL2.

The opponent is the proprietor of a number of registered trade marks in class 34 containing or comprising the words STATE EXPRESS, which are detailed in Mr Bonner’s declaration, where it is also stated that these words were inspired by the Empire State Express train, operated by the New York Central Rail Road in the United States of America.  The first STATE EXPRESS trade mark was registered in Australia in 1911 and has been used continuously for at least the last fifty years.  Mr Bonner deposes further that the cigarettes under the STATE EXPRESS trade marks are the largest selling brand of the British-American Tobacco group internationally, with annual sales in excess of 24 billion cigarettes in 1994.  He provides information on sales in Australia for ready-rubbed tobacco and cigarettes.

The applicants’ declarants, Messrs Attride and McNulty, attribute the choice of the word EXPRESS in the present marks to the applicants’ intention to develop a range of short cigarettes.  They point to the word EXPRESS occurring in many trade marks registered for cigarettes, tobacco and smokers’ articles in Australia and other countries, as exhibited to their declarations.  To substantiate their assertion that other manufacturers of tobacco and tobacco products use the word EXPRESS in a descriptive context, the declarants have attached examples of such use. 

With reference to annexures to his declaration, Mr Hoskings notes that the word EXPRESS has a variety of meanings as listed in the Macquarie Dictionary, but that the word does not appear in a tobacco dictionary to indicate a descriptive meaning in relation to tobacco, tobacco products or smokers’ articles.  He says he is not aware of tobacco products having been sold in Australia by reference to the word EXPRESS other than the products of his company under the trade marks such as STATE EXPRESS. 

Mr Lockhart deposes that the statements of goods for two registered trade marks containing the word EXPRESS, in the name of Venice Simplon-Orient Express, Inc, has been restricted, following the settlement of a non-use action and attaches exhibits to verify this. 

Submissions
At the outset, on behalf of the opponent, Ms Stuckey-Clarke explained that, although three of the applications were from different corporate entities, Rothmans of Pall Mall (Australia) Limited was intended to become the registered user of the trade marks of The House of Edgeworth Incorporated and Riggio Tobacco Corporation Limited, and that the four marks of the present applications were to be used by or under the control of Rothmans of Pall Mall (Australia) Limited.  For those reason the opponent sought to have the opposition to registration of the four trade marks heard together. 

Turning to the section 33 ground of opposition, Ms Stuckey-Clarke said she did not view the opponent’s and the applicants’ marks as being substantially identical, although the goods involved were goods of the same description.  Concerning the question of whether the marks were deceptively similar, Ms Stuckey-Clarke referred to the various tests applicable, which are set out in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 at 658 and the rules of comparison expounded in Pianotist Co’s Appn (1906) 23 RPC 774 at 777. She said that the applicants must satisfy the Registrar of no reasonable likelihood of deception or confusion and, in considering the probabilities, all the surrounding circumstances must be taken into account, and that the respective marks must be considered in the context of the use which could properly be made of them, as outlined in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. Furthermore, due allowance must be made for “imperfect recollection” - Rysta Ltd’s Appn (1943) 60 RPC 87 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84.

Looking at the exercise of comparison of trade marks the section 33 enquiry involves, she said the word EXPRESS in the opponent’s marks was a distinctive branding element, because it was the non-adjectival and substantive word element.  Within the opponent’s STATE EXPRESS registrations the discrete word EXPRESS was a more predominant branding element and a more essential feature than the other word STATE in those marks.  The word EXPRESS would be carried away and retained in the minds of the consumers as the distinctive branding element, as would the same word in the opposed marks.  For that reason, Ms Stuckey-Clarke submitted, there would be a real tangible danger of the public being deceived or confused into believing that the applicants’ goods came from the same source as those of the opponent’s STATE EXPRESS registrations.  While the applicants may argue that the existence of other words in their marks would be viewed by consumers as the essential features, no evidence of use of the associated marks had been presented, she said. 

By pointing out that, of the various different meanings of the word EXPRESS, the meaning attributed to it by the applicant was not ranked high in the dictionaries, that the word had been omitted from the exhibited Tobacco Encyclopedia, as well as the fact that Mr Hoskings was not aware of any descriptive meaning of the word in relation to the relevant products in Australia or elsewhere, Ms Stuckey-Clarke said that the separate word EXPRESS was distinctive.  The examiner had also noted this on her work sheet.  There was no evidence that the word connoted a short cigarette in Australia and, in any event, under section 33, notional use of the marks should be assumed as distinct from a particular use the applicant may have in mind. 

Similarly, the word EXPRESS did not take on a descriptive meaning in the combination STATE EXPRESS, nor did it in the various combinations in the applicants’ marks, Ms Stuckey-Clarke argued further.  Even though the opponent’s original mark had been derived from a particular State Express train, this did not mean the consumers would be aware of its meaning.  While the initial words in each of the opposed marks may have their own meanings, the discrete word EXPRESS used in all of these marks stood alone as a distinctive branding element. 

In submitting that the word EXPRESS was not common to the trade, Ms Stuckey-Clarke said that the only co-existing registered marks with the word EXPRESS were ORIENT EXPRESS and VENICE SIMPLON-ORIENT EXPRESS, but that their registration was restricted.  Furthermore, the applicants’ sample packaging of certain French tobacco goods was no evidence that the goods with this packaging had ever been sold in Australia, nor had the applicant led evidence of any descriptive use of the word EXPRESS in respect of tobacco products.

Discussing the issue of surrounding circumstances, Ms Stuckey-Clarke said that tobacco and tobacco products were not expensive goods, nor were they goods normally obtained with particular care.  Cigarettes were purchased in a hurry, therefore, on seeing the applicants’ goods marked with the word EXPRESS, the consumers could buy them thinking that those were the opponent’s goods.  In such circumstances, it was less likely that consumers would investigate or enquire as to the real trade origin of the goods.  It was also a significant surrounding circumstance that the four opposed trade marks were to be used under the control of the same corporate entity.  If notional fair use of the four trade marks were assumed, this would result in two competing EXPRESS series of marks with different prefixes available in the marketplace.  Since the word EXPRESS would be seen as the branding element in both the opponent’s and applicants’ marks, confusion would be inevitable, particularly in circumstances where the opponent has long established a family of EXPRESS trade marks.  In the opponent’s view, the antiquity of the opponent’s earliest STATE EXPRESS mark, the distinctiveness of the word EXPRESS, and the fact that the opponent’s marks form a series of EXPRESS marks, made the opponent’s marks particularly vulnerable to confusion with the applicants’ marks as the marks would appear to consumers to be related, as observed in John Fitton & Co Ltd’s Appn (1949) 66 RPC 110 at 113.

Ms Stuckey-Clarke then went on to discuss the case Derria AG v Dalli-Werke Maurer + Wirtz KG (1985) AIPC 90-204, which, she said, was very like the present one. In that case the opposition had been successful, it being held that the essential feature of the applicant’s mark was TABACCO and that of the opponent - TABAC and that, since the word TABAC was distinctive, not common in the trade, and because the opponent had a reputation in a family of series of related marks for particular goods, there was an increased likelihood that the applicant’s adoption and use of a mark containing the element common to that series would cause confusion. Applying these findings to the opponent’s situation, it was enough, Ms Stuckey-Clarke said, that the word EXPRESS was a common element in the marks under consideration, so long as the opponent’s series of marks had a substantial reputation in the market.

Ms Stuckey-Clarke also drew an analogy with the present case by citing R & C Products Pty Ltd v Bathox Bathsalts Pty Ltd (1991) 21 IPR 547, where the owners of the mark LORELENE BATH TIME successfully opposed registration of BATHOX BATH TIME on the basis that the words BATH TIME were not common to the trade, nor incapable of distinguishing the goods and that the relevant goods were of a kind not purchased with particular care.

Opening her submissions in relation to the section 28 ground, Ms Stuckey-Clarke said that the opponent was mindful of the practice laid down by the Registrar’s delegate in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613 and the comments in Chanel Ltd v Produits Ella Bache Laboratoire Suzy 27 IPR 243, to the effect that, in addition to showing that use of the applicant’s mark was likely to deceive or cause confusion under paragraph 28(a), it must also be shown that the mark was not entitled to protection in a court of justice within paragraph 28(d), because of the applicant’s blameworthy conduct at the time registration of the mark was sought. In this regard, she referred to Canon Kabushiki Kaisha v Robert James Brook and Rachel Brook trading as The Cannon Watch Company (1996) IPR 88, Nike International Ltd and Anor v Campomar Sociedad Limitada (1996) 35 IPR 385 and Sporoptic Pouilloux SA v Arnet Optic Illusions Inc 32 IPR 430.

The expression STATE EXPRESS once referred to a famous train, Ms Stuckey-Clarke said, which these days would not be linked with or remembered by most consumers as that particular train.  If the words did refer to some kind of express train, then, in that context, the word EXPRESS was a substantive element, but without a meaning in relation to the goods.  In developing her argument further, Ms Stuckey-Clarke said that the applicants had deposed to an intention to give the word EXPRESS a descriptive meaning, which would render the marks confusing in that the applicants did not sell short cigarettes.  Furthermore, the intention was to make the predominant branding element of the marks under consideration, EXPRESS, descriptive of the applicants’ goods.  Rendering the word descriptive and non-distinctive would cause confusion with the opponent’s marks and therefore it constituted blameworthy conduct, as per Dixon and McTiernan JJ in Australian Woollen Mills v Walton, supra, at 657:

When a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. 

By relying on the words of Grahame J in Textron Inc v Henry C. Stephens Ltd [1977] RPC 283 at 286, and what Gummow J said in Wingate Marketing Pty Ltd and Anor v Levi Strauss & Co and Anor 28 IPR 193 at 230, Ms Stuckey-Clarke submitted that, in opposition proceedings, the Registrar was entitled to take into account the effect of an applicant’s registration upon the opponent, owners of similar marks and the public interest in preventing confusion. Here, the use to be assumed by the applicants was one necessarily calculated to cause confusion and defeated the policies of the Act itself. Such an avowed intention, she said, amounted to blameworthy conduct.

Ms Stuckey-Clarke said that the concept of “blameworthy conduct” was closely allied to the notion of bad faith.  In Sterling Pharmaceuticals Pty Ltd v Johnson & Johnson Australia Pty Ltd (1989-1990) 18 IPR 307, Hill J at first instance had held that, in assessing whether the trade mark CAPLETS was infringed by TYLENOL CAPLETS, there was no paragraph 64(1)(b) defence available, because there was evidence of the respondent’s intention to render the mark CAPLETS generic, if its use was indeed an infringing use. Relying on the findings of his Honour, she submitted that the applicants were well aware of the opponent’s mark when they formulated their intention to use the word EXPRESS in relation to short cigarettes. It was a proper inference then that the applicants’ market strategy involved use of their proposed marks for the ulterior purpose of rendering the element EXPRESS descriptive, even perhaps generic, and therefore to damage the distinctiveness of the opponent’s marks and to create confusion in the marketplace. Such ulterior motive, she said, amounted to blameworthy conduct.

With reference to section 44 of the Act, Ms Stuckey-Clarke submitted that, if there existed a genuine doubt as to whether the applicants’ marks would cause confusion, the applications should not succeed.  In the present case, the opponent contended strongly that, should the marks be registered and the applicants be successful in their avowed marketing intentions as to the descriptiveness of the word EXPRESS of a certain size cigarette, then the public interest would suffer: confusion would be generated in the marketplace and the consumers would be misled.  Given these relevant considerations, the opponent was seeking exercise of the Registrar’s discretion under section 44. 

In responding to the opponent’s submissions, Mr Stevens first pointed out that, in line with the statement in Southern Cross v Toowoomba Foundry, supra, at 594-5, the circumstances to be considered were those as they existed at the date of the applications. 

In relation to the exercise of Registrar’s discretion, Mr Stevens said that the four applicants’ trade marks had gone through examination to formal acceptance.  Each of these marks had a strong distinctive first word element which has been separately registered in the relevant class for many years.  He said that the opponent was seeking to assert a monopoly in the word EXPRESS for which it had no registration and, more importantly, it had provided no evidence to establish that the word by itself was a distinctive trade mark.

Relying on the Registrar’s practice in relation to section 28, outlined in the Titan v Coyne case, supra, Mr Stevens vigorously submitted that no evidence had been lodged in the present proceedings making any allegation of blameworthy conduct.  In response to the opponent’s arguments as distinct from its evidence concerning the applicants’ purported intention in relation to the descriptive use of the word EXPRESS, Mr Stevens replied that the dictionary references already showed the descriptive meaning of the word.  In addition, the applicants in their evidence had included sample labels from elsewhere in the world illustrating use of the word in a descriptive context, particularly use of the term “Express size”, which was a reference to how quickly one might consume a cigarette. 

Turning to the issues arising under section 33 in the proceedings, Mr Stevens first made a reference to Mr Bonner’s declaration, submitting that the declarant’s concept of use of the word EXPRESS as the “most significant feature” did not apply to the twelve marks detailed in the declaration as eleven of them included additional matter besides the word STATE EXPRESS, those words themselves being in a stylized form, and the remaining mark clearly consisting of two words. 

In discussing the matter of deceptive similarity of the marks, Mr Stevens focussed on the criteria set out in Pianotist case, supra, in particular, on the look and the sound of the respective marks and the surrounding circumstances.  If one was to set aside the very obvious visual features of the bulk of the opponent’s trade marks and concentrate solely on the words, the most striking feature visually and the significant part phonetically would be the word STATE, he said, reminding me of the importance of the first syllable considered in London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279. In contrast, each of the applicants’ trade marks featured a strong distinctive word which was separately registered as a trade mark and, when considering the marks from the visual and aural viewpoint, there would be no basis upon which to claim that the words in the opponent’s marks were similar to the words comprising those of the applicants’ marks, Mr Stevens asserted.

As first of the surrounding circumstances, Mr Stevens discussed several of the meanings of the word EXPRESS listed in the Macquarie Dictionary, pointing out that, irrespective of the opponent’s marks and the opposed marks, the meanings of the word existed quite apart from what is on the Trade Marks Register and quite apart from whatever the purpose of the applicants might have been in relation to the particular trade marks.  Given that the word has the various meanings “plain, for a particular purpose, unusually fast”, there were on the Register of Trade Marks, in a number of different classes, something like in excess of 300 words which contain the word EXPRESS, he said.  Moreover, it was already in use in other countries by traders in relation to class 34 goods to describe one or other of the particular meanings.  If the applicant was planning to market a particular product, which can be consumed quickly or fast, it would only be common sense to adopt a word which has a better sound than “quick” or “fast”.  This type of product, he argued, would satisfy a need in the market place where people are required to exit a building to smoke a cigarette.  Thus, the selling point would be that one can enjoy the cigarette in half the time it normally takes to smoke a cigarette.   

Mr Stevens said he was not surprised that the word “Express” was not included in the Voges Tobacco Encyclopedia, which was out of date.  There had been significant developments in relation to the tobacco industry.  The omission of the word from the encyclopedia did not detract from the fact that it was listed in dictionaries with a descriptive connotation.  The word was used by other traders not only in trade marks in Australia but also traders throughout the world, as demonstrated by the existence of the word in many foreign trade mark registrations. 

A further surrounding circumstance, according to Mr Stevens, was the fact that each of the primary words of the applicants’ trade marks was separately registered as distinctive trade marks and had stood on the Register of Trade Marks for many years.  The opponent, on the other hand, did not have a registration for the word EXPRESS simpliciter, nor had it shown prior use of the word.  In this regard, Mr Stevens quoted the words of Cozens-Hardy M.R. from Joseph Crosfield & Sons Ltd’s Appn (1909) 26 RPC 837 at 854:

“Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure”.

That was precisely what the opponent was endeavouring to do, he said, for which it had no basis whatsoever in light of the evidence tendered in these proceedings.

In response to the opponent’s submission that tobacco and tobacco products were not purchased with particular care, Mr Stevens said that, although no evidence had been adduced in the present proceedings regarding how consumers reacted in relation to sale and purchase of the particular goods, in relation to cigarettes and tobacco products there was brand loyalty. 

Mr Stevens then discussed some decisions, which, he said, had a bearing on these proceedings.  He observed that, where the marks under comparison each comprise two words and, in particular, where the common element is the second word or suffix, the opponent bears a very heavy onus in establishing a likelihood of deception.  Further, where the common element conveys some form of descriptiveness, that burden is almost impossible to discharge.  To illustrate these propositions, Mr Stevens cited Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536, “Frigiking” Trade Mark [1973] RPC 739, Miss World (Jersey) Limited & Anor v Mrs of the World Pageants, Inc. (1988) AIPC 90-460 and Captain Icecream Pty Ltd v The Coca-Cola Co (1992) AIPC 90-881.

Both parties in the proceedings claimed costs. 

Discussion
Section 33 - substantially identical or deceptively similar
Sub-section 33 reads as follows:  

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods, or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

The details of the opponent’s registered marks which are alleged to be in conflict with the applicants’ marks are as follows:

Number   Trade Mark  Goods

1. Manufactured tobacco

   STATE EXPRESS

2. Manufactured tobacco
     

1. Manufactured  tobacco

1. Manufactured tobacco
     

1. Manufactured tobacco
     

1. Manufactured tobacco
     

1. Manufactured tobacco
     

1. Manufactured tobacco

   169131  Tobacco, raw or   manufactured; smokers’

   articles; matches
     

2. Tobacco, raw or
     STATE EXPRESS THREE SEVENS           manufactured; smokers’
     articles; matches

1. Tobacco, raw or
     STATE EXPRESS THREE THREES           manufactured; smokers’
     articles; marches

1. Tobacco, raw or
     manufactured; smokers’
     articles; matches
     

Bearing in mind a number of relevant considerations, I think it unlikely that the applicants’ marks would lead to deception or confusion of a substantial number of persons.  The reasons for my conclusions are stated below. 

The fact that the goods in respect of which the applicants are seeking registration of their marks are the same as those of the opponent’s has not been disputed.  Further issues for determination are whether the marks would be substantially identical or deceptively similar.  Comparing the marks side by side and noting their similarities and differences, in accordance with the guidelines in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, and having regard to the obvious differences between the marks, I do not believe there is any doubt that the marks are not substantially identical.

Applying the criteria set out in the cited case and a similar test in Australian Woollen Mills v Walton, supra, to decide whether the marks are deceptively similar, one must no longer compare the marks side by side, but consider them in light of the so called “imperfect recollection” principle, i.e. whether purchasers knowing of one mark are likely to be confused on seeing another mark - Rysta Ltd’s Appn, supra. 

Both Ms Stuckey-Clarke and Mr Stevens have already referred to the necessity to compare the conflicting word marks visually, aurally as well to take into account the surrounding circumstances - Pianotist case, supra.  In appearance, the applicant’s and the opponent’s marks display considerable differences  With the exception of the mark of the opponent’s registration 12014, all the other opponent’s trade marks contain other matter in addition to the words STATE EXPRESS, either in the form of some words, devices or numerals.  The combination of the words which comprises either the opponent’s marks or forms the most striking feature in its marks is entirely unlike the features constituting the applicants’ word marks.  Whilst, as argued by the opponent, the origin of the words STATE EXPRESS may not be known to a large number of the consumers of the goods, each of the words has definite meanings as does the combination of both words, which, I suggest, may convey a certain meaning, such as an express train or bus, or a fast delivery service, in any of the states in Australia.

The word EXPRESS has various different meanings, as shown in the Macquarie Dictionary.  It frequently occurs on the Trade Marks Register in trade marks registered in a number of different classes.  While the applicants’ choice of including the word EXPRESS in their marks is ascribed to an intention “to develop a range of comparatively short cigarettes which are capable of being smoked in half the time of the standard king size cigarette”, as stated by Mr Attride, that meaning having acquired acceptance amongst the relevant members of the community in Australia is not supported by any evidence, although the adopting of the word seems to be appropriate and logical for the applicants’ intended purpose, as submitted by Mr Stevens.  Mr Attride’s exhibits purported to illustrate such descriptive use appear to be of foreign origin and are of little assistance in showing its use in Australia in that context.  Notwithstanding this factor, given that trade marks must be considered in their entirety, in my opinion, different connotations are expressed by the applicants’ marks WINFIELD EXPRESS and ROTHMANS EXPRESS, where those words could be seen to describe an express service carried out by persons whose surnames are Winfield or Rothmans, whereas HOLIDAY EXPRESS is likely to be understood as a special holiday express train or coach service.  While the combination of the words FREEDOM EXPRESS perhaps does not lend itself to an obvious meaning, again each of the words is in common domain and clearly understood.  The first words in each of the applicants’ and the opponent’s marks display not only noticeable differences between their meanings but are also easily distinguishable in pronunciation.  Bearing in mind that, in pronunciation the first part of trade marks is generally regarded as more important than the ending, the second word EXPRESS in each of the marks becomes less significant for the purposes of aural distinction - London Lubricants, supra.  Thus, it seems to me that the opponent’s and the applicants’ marks are readily distinguishable on the basis of appearance, sound as well as different ideas generated by the marks.  In support, I rely on Cooper Engineering v Sigmund Pumps Ltd, supra, where the High Court held that the trade mark RAINMASTER did not so closely resemble the mark RAIN KING for the same type of goods as to be likely to deceive.  Another case cited by Mr Stevens, which also supports my above contention is “Frigiking” Trade Mark, supra, the marks under consideration being THERMO-KING and FRIGIKING.  Commenting on these marks, Whitford J said at 755:

.... I myself still, as a matter of first impression would say that it appears to me now, as it did before I was ever addressed upon the subject, that there is really no similarity between these marks at all other than the fact that they have both got the word “king” at the end of them.  I would say that, as a matter of first impression, it does not strike me now, as it did not strike me when I first saw the marks, that I could attach much significance to this particular fact, having regard to the descriptive nature of the word “king” in relation to all sorts of goods.  

It is common knowledge that smokers have individual preferences for a particular type of tobacco or cigarette.  While tobacco products and cigarettes are not expensive items, purchasers of such goods usually know exactly what brand they are seeking and, upon selecting and being satisfied with it, they invariably continue using the product bearing that trade mark.  Moreover, nowadays these products are not normally readily accessible to the public, but are purchased at a counter, for example, in supermarkets, tobacconist shops or newsagencies, by having to verbally enquire or identify the product of interest.  The fact that the first words of the present marks have been separately registered for many years, WINFIELD since 1960, ROTHMANS since 1919, HOLIDAY since 1959 and FREEDOM since 1991, must have achieved customer recognition and satisfaction of a product under those trade marks, so that these words, coupled with the word EXPRESS, are unlikely to be mistaken for the opponent’s trade marks.  I also note that, before the restriction of the goods based on a non-use action on registration number 373398 for the mark ORIENT EXPRESS and registration number 430640 for VENICE SIMPLON-EXPRESS in October 1997, the marks of those registrations had co-existed on the Register with the opponent’s trade marks for the same goods for periods of approximately fifteen and twelve years, respectively.   

The opponent has referred to John Fitton case, supra, in relation to the proposition that the applicants’ and the opponent’s marks could be seen to denote products from the same source.  Unlike the evidence presented in that case, which indicated that persons who knew the opponent’s mark JESTS, when encountering similar goods under a new mark EASYJEST, would assume that the goods were another product belonging to the proprietor of the JESTS, the opponent in the present proceedings has not shown whether the prospective purchasers would consider the allegedly conflicting marks to be related, or whether they would view the common element EXPRESS in the marks as the distinctive branding element.

Given the discernible aural, visual and conceptual differences between the marks under consideration as well as the applicants’ earlier registrations and the inclusion of the word EXPRESS in another proprietor’s marks, as discussed earlier, I believe the opponent has overestimated the significance of the element EXPRESS in its marks by emphasizing its predominance over the other word STATE in its marks.  The circumstances in Derria v Dalli-Werke case, supra, can be distinguished from those in the present proceedings, because the opponent does not appear to have a registration and reputation for what it considers to be the essential feature of its family or series of related marks, the word EXPRESS separately.  Nor is there any support for the submission that it would be this particular word in the opponent’s marks, rather than the other word or the combination of the two words that would be remembered and carried away by members of the purchasing public in the mistaken belief that the opposed marks are the same - Australian Woollen Mills v Walton, supra.  These factors, together with the circumstances of purchase and the consumer preference for a specially selected brand of the tobacco products and cigarettes lead me to the conclusion that the danger of deception or confusion of the marks in suit would only be minimal.

In light of the foregoing, I find the opponent has failed in relation to the grounds of opposition based on section 33.

Section 28 - deception and confusion
The provisions of this section are:

A mark -

(a)   the use of which would be likely to deceive or cause confusion;
(b)   the use of which would be contrary to law;
(c)   which comprises or contains scandalous matter; or
(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade marks.

In terms of paragraph 28(a), the opponent needs to show that, having regard to the reputation of the its marks in Australia before the lodgment of the subject marks, the result of use of the applicants’ marks would cause a number of persons “to wonder whether it might not be the case that the two products come from the same source” - Southern Cross v Toowoomba Foundry, supra.  In Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300, it was said that the likelihood of deception or confusion extended to a substantial number of people concerned with the goods of interest.

While I concede that, according to Mr Bonner’s information on sales of the ready-rubbed tobacco and cigarettes, the opponent’s use of its marks has been impressive, I am not satisfied, for the reasons outlined in relation of the section 33 ground of opposition, that use of the applicants’ marks, in connection with the goods nominated, would reasonably be responsible for deception and confusion of a substantial number of the potential consumers of the goods. 

Should I be wrong in my assessment of the section 33 considerations, there remains the question of blameworthy conduct.  Both parties in the present proceedings have acknowledged that, to succeed in opposition based on section 28, blameworthy conduct on the part of the applicant at the time of registration of a mark must be shown in addition to the likelihood of deception and confusion of the marks, as outlined in Titan Manufacturing v John Terrence Coyne, supra, following the High Court decision in New South Wales Dairy Corp v Murray Goulburn Co-operative Co Ltd 18 IPR 385. This Registrar’s practice, as Ms Stuckey-Clarke reminded me, has recently been supported in Canon Kabushiki v Brook and Nike International v Campomar, both supra. 

I do not think the applicants’ choice of the word EXPRESS to refer to a short cigarette to be smoked more quickly in face of the opponent’s registered marks STATE EXPRESS can be regarded as an improper conduct and one that would result in confusion of the marks.  As observed by me previously, no evidence has been made available to the effect that the opponent has a registration for the word EXPRESS as opposed to the registrations of marks which include two words STATE EXPRESS, or that persons would associate the goods of the type sought to be registered under the applicants’ marks exclusively with the word EXPRESS.  There does not seem to be any good reason why the applicants should be prevented from selecting a word to be used in conjunction with their registered marks, having regard to the meanings found in the Macquarie Dictionary, which were directed to my attention: “plain”, “special; particular; definite; an express purpose”, “specially direct or fast”; “by express; usually fast” or “specially; for a particular purpose”, despite the word “express” having been omitted from a tobacco encyclopedia, published fourteen years ago, and in the absence of any substantiation that the proposed descriptive connotation of the word has not received recognition in Australia amongst the relevant circle of potential users of the products.  I therefore do not believe that the choice of the word EXPRESS can be seen as a deliberate attempt by the applicants to gain benefit from or to damage the opponent’s undeniable reputation. 

In view of my foregoing comments, even if I had found that use of the applicants’ marks was likely to lead to deception and confusion, then the opponent’s case would still fail, as I am not convinced of any blameworthy conduct for which the applicants could be held to be responsible. 

Conclusion
Having found that the opponent has been unsuccessful on each of the grounds relied upon, I must dismiss the opposition.  Therefore, subject to any appeal from this decision, applications numbers 612705, 612706, 612708 and 613224 should proceed to registration.  

I award costs in these opposition proceedings against the opponent.

Vija Zars
Hearing Officer

8 June 1998