LUCKY DREAM strikes lucky

In British American Tobacco (Brands) Inc v NV Sumatra Tobacco Trading Company, the Singapore Trademarks Registry has dismissed the opposition filed by British American Tobacco (Brands) Inc (BAT), the owner of the marks LUCKY STRIKE and LUCKIES, against the application to register the mark LUCKY DREAM.

NV Sumatra Tobacco Trading Company applied to register the mark LUCKY DREAM in respect of "cigarettes, cigarette filters, kretek (clove) cigarettes (other than for medical use), cigarette paper, hand-operated machines for making cigarette by rolling, cigars, tobacco, lighters, matches, ashtrays not made of precious metal and smoker's articles". BAT opposed the application under Sections 8(2)(b), 8(4)(a) and 7(6) of the Trademarks Act 1999.

Section 8(2)(b) of the act provides as follows:

"8(2) A trademark shall not be registered if, because [...] it is similar to an earlier trademark and is to be registered for goods or services identical with or similar to those for which the earlier trademark is protected, there exists a likelihood of confusion on the part of the public."

Section 8(4)(a) of the act provides as follows:

"8(4) A trademark shall not be registered if, or to the extent that, its use in Singapore is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trademark or other sign used in the course of trade."

Section 7(6) of the act provides that "a trademark shall not be registered if, or to the extent that, the application is made in bad faith".

The registrar held that under the act, the opponent has the burden of proving that the applicant's mark is not registrable. There was no dispute that the goods covered by the marks belonging to both parties were similar.

With respect to Section 8(2)(b), the registrar found that the LUCKY DREAM mark was not aurally, visually or conceptually similar to either LUCKY STRIKE or LUCKIES. In deciding whether confusion would arise, the registrar took into account all circumstances of the case. In relation to cigarettes, these included:

• the restrictions on sale to minors (which implied that cigarettes are placed behind the counter and customers must ask for specific cigarettes); and
  
  
• the mandatory health warning which covers half of the cigarette pack.

Thus, visual cues were not as important as aural ones. As the marks were aurally dissimilar, the registrar held that confusion was not likely.

With regard to Section 8(4)(a), the registrar found that BAT had not established goodwill and reputation in Singapore. As she had found that the marks were not confusingly similar, she was of the view that there was no real risk of deception or confusion which would lead customers to believe that Sumatra Tobacco's goods originated from BAT or that there was a business connection between the parties. The registrar thus held that the elements required for establishing passing off were not shown and the opposition also failed under Section 8(4).

With regard to Section 7(6), the registrar considered BAT's argument that the word 'lucky' was chosen by Sumatra Tobacco in order to trade off the main attribute of BAT's marks. She observed that the word 'lucky' is an ordinary dictionary word. Moreover, she held that the fact Sumatra Tobacco did not explain its choice of mark was insufficient to support an inference of bad faith. Thus, the opposition also failed under Section 7(6).

Jacqueline Baruch, Drew & Napier LLC, Singapore