Lucky strike for British American Tobacco

In British American Tobacco Australia Services Ltd v NV Sumatra Tobacco Trading Company ([2008] ATMO 68, July 31 2008), a hearings officer at IP Australia has upheld an opposition filed by British American Tobacco Australia Services Limited (BAT) against the registration of the trademarks LUCKY DRAW and LUCKY DREAM.
NV Sumatra Tobacco Trading Company applied for the registration of the trademarks LUCKY DRAW and LUCKY DREAM for “cigarettes, cigarette filters, kretek cigarettes, cigarette papers, white cigarettes, ashtrays (not made of precious metal), cigars, tobacco, lighters, matches and smoker’s articles”. BAT opposed the applications based on its prior registrations for LUCKY STRIKE and LUCKIES. 
The hearings officer considered the relevant test to be applied and quoted from established authority (see Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ((1961) 109 CLR 407)), which states that:
 “[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 on all the circumstances.
After referring to previous decisions, the hearings officer quoted United Kingdom Tobacco Co Limited’s Application (29 RPC 489 at 496), in which it was held that:
there is a danger of the registration of this new mark leading to confusion or deception, not because the word does not distinctively differ from the word already on the register, but because of the tendency of the public to abbreviate and to use the abbreviation of the brand as the ordinary designation in common parlance of that brand.
In his assessment of the relevant marks, the hearings officer concluded that on comparison of the marks alone, the marks applied for would not be considered deceptively similar to BAT's marks, noting that:
  • the word 'lucky' is an adjective; and
  • the natural function of such words is to shift focus onto the word that they qualify. 
Consequently, the meanings of the marks at issue were found to differ significantly.
Nevertheless, there was evidence to the effect that:
  • cigarette packaging is 'busy' because it is given over in significant part to compulsory and graphic health warnings; and 
  • BAT’s LUCKY STRIKE mark is the only cigarette brand on the market that contains the word 'lucky'. 
The hearings officer took the view that 'lucky' is an unusual word to use for a cigarette brand and accepted that consumers may abbreviate BAT’s LUCKY STRIKE mark by referring to 'Luckies'. Further, he accepted that cigarettes are not typically available for direct consumer inspection and selection, but are commonly selected by a salesperson, who might typically be a non-smoking cashier at the tobacco counter of a busy supermarket or service station. In these circumstances, the hearings officer concluded that, when faced with a request for an abbreviated product name, the salesperson may well make a mistaken selection and choose the wrong packet of Luckies.
Consequently, on the basis of the evidence presented in the opposition, the marks sought to be registered were found to be deceptively similar to BAT’s LUCKY marks.
The case demonstrates the importance of considering surrounding circumstances when assessing the likelihood of confusion between two trademarks. Interestingly, the Singapore Trademarks Office came to a different conclusion in opposition proceedings brought by BAT and allowed the registration of the mark LUCKY DREAM (for further details please see "LUCKY DREAM strikes lucky").
Sean McManis, Shelston IP, Sydney

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