Before Principal Assistant Registrar P Arul Selvamalar
24 October 2007
Trade Marks – Opposition to registration – Likelihood of confusion - whether the Application Mark is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected - Section 8(2)(b) of the Trade Marks Act 1998 [Cap. 332]
Trade Marks – Opposition to registration – whether the Applicant’s use of the Application Mark would constitute passing off - Section 8(4)(a) of the Trade Marks Act 1998 [Cap. 332]
Trade Marks – Opposition to registration – whether the application to register is made in bad faith - Section 7(6) of the Trade Marks Act 1998 [Cap. 332]
The Applicants filed trade mark application number T0312051F “LUCKY DRAW” on 7 August 2003 for the following goods in Class 34: “cigarette, cigarette filter, cigarette kretek, cigarette paper, white cigarette, cigars, tobacco, lighters, matches, ashtrays not make of precious metal, smoker’s articles”. The Opponents who have 9 registrations in Class 34 comprising and incorporating the words “Lucky Strike” and “Luckies” opposed the application on three grounds. Under Section 8(2)(b), the Opponents contended that the application mark was confusingly similar to their earlier trade mark registrations. The Opponents also argued that the application mark was objectionable under the law of passing off and was in contravention of Section 8(4)(a) [now Section 8(7)a]. The Opponents also contended that the application was made in bad faith contrary to Section 7(6).
The Opponents are a member of the BAT Group of companies and “Lucky Stirke” is one of their four premier brands of cigarettes. “Lucky Strike” was first marketed as a smoking mixture in 1853 and it was registered in the United States in 1871 and in Singapore since 1939. “Luckies” was registered in Singapore since 1964. The Opponents filed evidence of sales of “Lucky Strike” cigarettes in Singapore but these figures were estimates and were steadily declining over the years. No evidence was filed relating to the sale of “Luckies” cigarettes in Singapore.
- On the issue of aural similarity, comparing “Lucky Strike” and “Lucky Draw” as wholes, when pronounced, the latter parts of the marks would not be lost in communication as they are distinct words. The second elements of the marks “Lucky Strike” and “Lucky Draw” may be of almost equal length and monosyllabic, but they are wholly different words. “Lucky Strike” and “Lucky Draw” are not the type of marks where the endings are likely to be swallowed or slurred, and the whole of the two marks are likely to be pronounced when a person is asking for the respective cigarettes.
- The marks “Luckies” and “Lucky Draw” are also not aurally similar. The ending of “Luckies” might be swallowed or slurred but the Registrar did not think that the ending of the “Lucky Draw” was likely to be slurred or swallowed. The whole of the mark “Lucky Draw” is likely to be pronounced when a customer is requesting the cigarettes from the shop assistant. Further, “Luckies” is a one word mark and “Lucky Draw” is a two word mark, which enhances the aural dissimilarity
- On the issue of visual similarity, the second elements in “Lucky Strike” and “Lucky Draw” may be of almost equal length and monosyllabic but they are distinct words. “Luckies” and “Lucky Draw” look different and are mutually dissimilar as they are of different lengths, the first being a one word mark and the second being a two word mark.
- On the issue of conceptual similarity, the mark “Lucky Strike” refers to a strike which is lucky and “Lucky Draw” means a lottery and the mark “Luckies” appears to be a name which connotes luck. Although the idea of luck comes through in all three marks, the Registrar was of the view that the mark “Lucky Draw” does have a sufficiently different element at the end, so as not to capture the idea of “Lucky Strike” and “Luckies”.
- The Opponent’s marks “Lucky Strike” and “Luckies” have not acquired the type of reputation that should be taken into account in considering whether they are confusingly similar when compared with “Lucky Draw”. As there is no evidence of sales of “Luckies” cigarettes in Singapore, and as the evidence filed as sales figures of “Lucky Strike” cigarettes are not expressed in dollar values but as number of sticks sold, as the sales figures given are estimates; and as the figures have been steadily declining, the Registrar had difficulty in finding that “Lucky Strike” and “Luckies” were marks with a reputation.
- In Singapore cigarettes may only be purchased by requesting it from a counter assistant because of the age restriction on the sale. Cigarette packets must also have a mandatory health warning which covers half of the packaging. In view of the mechanism of purchase and the mandatory heath warning, the visual cues of the cigarette packet, are not as important as the aural cues. A substantial number of members of public who buy cigarettes and counter assistants who assist in the purchase are not likely to be confused if “Lucky Draw” is registered and used on cigarettes. This is because aurally the marks are dissimilar and this difference plays a bigger role than the visual dissimilarities. In addition the marks are visually dissimilar. Although there is some conceptual similarity and the goods are similar, on the whole a substantial number of members of public would be able to distinguish the marks. There is no likelihood of confusion and the opposition under Section 8(2)(b) fails.
- There is insufficient evidence to support the Opponents’ case that they had goodwill and reputation in Singapore in 2003 in the business of selling “Lucky Strike” and “Luckies” cigarettes. Estimated sales figures (of the number of sticks of “Lucky Strike” cigarettes sold in Singapore) which are steadily declining are insufficient evidence to establish goodwill under the “Lucky Strike” brand. For the same reasons as her finding under Section 8(2)b, that the marks are not confusingly similar, the Registrar found that there would be no real risk that the a substantial number of persons would be deceived or confused into believing that the goods of the Applicants’ are those of the Opponents’ or that there is a business connection between the Opponents and the Applicants, if the Applicants sell their cigarettes under the “Lucky Draw” mark. Since there is no reputation and misrepresentation, the opposition under section 8(4) [the present 8(7)] therefore fails.
- The fact that the Applicants’ mark contains the word “Lucky” which is an ordinary dictionary word and the fact that they have not explained the choice of their mark, is insufficient evidence to support an inference of bad faith against them. The opposition under section 7(6) therefore fails.
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- Ms. Jacqueline Baruch (Drew & Napier LLC) for the Applicants
- Mr. Gilbert Leong & Mr. Alvin Lim (Rodyk & Davidson LLP) for the Opponents
Reported by Adrian Chiew