R.J. Reynolds Tobacco Co v. Carreras Ltd
Read the full judgment text of CACV 37/1971 on BabelCite. This Court of Appeal judgment was delivered on 22 December 1971.
1. From time to time the appellants have registered various trade marks in Hong Kong in respect of manufactured tobacco products (class 34) which, of course, includes cigarettes. The first of these was no.58 of 1911 under which they registered The words "BLACK CAT" per se. Later registrations were of composite marks consisting of such things as a representation of a black cat coupled with the words BLACK CAT and a representation of three cats coupled with the words "THREE CATS".
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CACV000037/1971 IN THE SUPREME COURT OF HONG KONG APPELLATE JURISDICTION CIVIL APPEAL NO. 37 OF 1971 (On appeal from a Decision of the Registrar of Trade Marks)
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----------------- Coram: Hon. Blair-Kerr, S.P.J. in Court Date of Judgment: 22 December 1971 ----------------- JUDGMENT ----------------- 1. From time to time the appellants have registered various trade marks in Hong Kong in respect of manufactured tobacco products (class 34) which, of course, includes cigarettes. The first of these was no.58 of 1911 under which they registered The words "BLACK CAT" per se. Later registrations were of composite marks consisting of such things as a representation of a black cat coupled with the words BLACK CAT and a representation of three cats coupled with the words "THREE CATS". 2. In 1951 the appellants registered another trade mark (no.653 of 1951). This comprises a label in the centre of which appears an oval which occupies the whole of the centre of the label, and within which are the word and letter "Craven 'A'", and immediately above the oval, there is a representation of a cat's head surmounted on a scroll which contains, in small letters, the words "TRADE MARK". This mark is not subject to any colour limitation although it is apparently used in the colours red, white, and gold, and the cat's head is black. 3. In 1962 the appellants registered another trade mark (no.1381 of 1962). Neither the words BLACK CAT nor the representation of a cat's head appear on this mark as registered. The mark comprises a label which is in fact a cardboard carton in which Craven 'A' cigarettes are sold, opened out and laid flat. Looking at this carton as sold, the top one third of the front of the carton is red and written thereon are the words "Long Size Filter" in white lettering and the figures "20" in gold lettering. Along the bottom border of this portion there runs a thin gold line. The lower two-thirds of the front of the carton is white with a large oval in the centre, coloured red, and around the oval there is a thin gold border. The oval contains the word mark "Craven 'A'" written in white letters. On one side of the carton there appears another small red oval of the same description and containing the same word trade mark viz. "Craven 'A'". On the other side there appears the word trade mark "Craven 'A'". The top of the carton is red with the word mark "Craven 'A'" thereon in white lettering. On the bottom of the carton there is an oval device of the same description as the oval devices on the front and side i.e. it bears the word trade mark "Craven 'A'". As regards the back of the carton, the top portion is red with the word mark "Craven 'A'" in white lettering. The remainder of the carton is white. Printed thereon are words extolling the virtues of Craven 'A' cigarettes and stating that these cigarettes were named after the 3rd Earl of Craven. 4. The certificate of registration of no.1381 of 1962 reads:-
5. Trade mark no.653 of 1951 was registered in association with trade mark no.58 of 1911 and other marks registered on dates subsequent to 1911 but prior to 1951. Trade mark no.1381 of 1962 was registered in association with trade mark no.653 of 1951 and certain other marks registered both prior, and subsequent, to 1951. 6. The cartons in which Craven 'A' cigarettes are sold vary in certain respects. Trade mark no.653 of 1951 is used on the front of one carton. The words "Craven 'A'" are in black print. The oval device is white; it is surrounded by a gold band; and, immediately above the oval, there is the representation of the cat's head (black in colour) surmounted on a scroll which contains the words "TRADE MARK". Apart from the trade mark (no.653 of 1951) the whole of the front of the carton is red; and written thereon are the words "Cork Tipped Virginia Cigarettes". 7. Then, there is another carton which consists of trade mark no.1381 of 1962, except that the words "Filter King Size" appear in place of words "Long Size Filter". It is not known whether any of these cartons are sold without the representation of the cat's head. As I have said, the cat's head forms no part of trade mark no.1381 of 1962. But in an affidavit filed on 24th April 1970, the former Hong Kong manager of the appellants has exhibited a specimen of a carton which, according to him, has been used by the appellants in Hong Kong "from about the end of 1961 or early 1962 down to the present time". This carton is basically the registered trade mark 1381 of 1962 except for the words "Filter King Size" and "King Size" in place of the words "Long Size Filter" and "Long Size"; but, more important, on the back of the carton there is a representation of a cat's head (black colour) superimposed on the words "Trade Mark". 8. In the same affidavit the appellants' manager has exhibited a carton which, he says, the appellants used between 1958 and 1961 for the sale of "Filter-Tip-Long Size" Craven 'A' cigarettes. On the back of this carton there appears a representation of the cat's head in black above the words "TRADE MARK". 9. From all this, it is far from clear whether any Craven 'A' cigarettes are sold today in cartons which do not have the cat's head either on the front or the back. But, ordinarily it is the front of a cigarette carton which is visible to purchasers; and the hearing before the Registrar was conducted on the basis that Craven 'A' King Size Filter cigarettes are being sold in cartons similar in all essentials to trade mark no.1381 of 1962. 10. However, there was also undisputed evidence that cartons bearing the trade mark no.653 of 1951 (white oval, black lettering and gold band round the oval) and cartons, the front of which at least corresponds to trade mark no.1381 of 1962 (top one-third red, bottom two-thirds white with red oval, white lettering and gold band round the oval) are being sold "concurrently and side by side" in Hong Kong. 11. In 1963 the respondents registered the word "TEMPO" as a trade mark in respect of manufactured tobacco products. It is trade mark no.988 of 1963. On 3rd April 1964, they filed an application for registration of another trade mark in respect of manufactured tobacco products. This trade mark, if registered, is to be associated with trade mark no.988 of 1963. It is a composite mark consisting of the word "TEMPO" written in white lettering inside an oval which is coloured red and around which there is a thin gold border. Above the oval device there is a gold band above which is a crown device. Above that there appears a narrower gold band running across a small rectangle in the centre of the larger oblong rectangle which comprises the whole mark. The small rectangle is in a similar golden colour with narrow white stripes across it and in the centre a small oval in which the letters "R.J.R." appear. In accepting the mark for registration the Registrar disclaimed the right to the exclusive use of those three letters. 12. The appellants filed a notice of opposition to the registration of this mark. After hearing submissions, the Registrar dismissed the appellants' opposition; and this is an appeal from that decision. 13. Before the Registrar, the appellants' submission was that registration of the respondents' mark would amount to a breach of s.20 of the Trade Marks Ordinance Cap.43, which section reads:-
The gravamen of the appellants' objection was that, although the device of an oval is common in the tobacco trade throughout the world, Craven 'A' is the only brand of cigarettes marketed in cartons with a label of white lettering on a red oval device enclosed by a gold band; that the proposed trade mark "TEMPO" also consists of white lettering on a red oval device enclosed in a gold band in respect of goods which are identical to those covered by the appellants' trade marks no.653 of 1951 and no.1381 of 1962; and that therefore the respondents' trade mark so nearly resembles trade marks nos.653 of 1951 and 1381 of 1962 as to be likely to deceive purchasers into the belief that the respondents' goods bearing their mark are the goods of the appellants', thereby causing confusion. 14. There was evidence before the Registrar that the words "huk mou lui tsui cheung yin" (meaning "black cat filter long cigarettes") formed part of the appellants' advertisements of their Craven 'A' King Size cigarettes in various Chinese newspapers. The Registrar also had before him the answers given by a cigarette vendor to various questions in a questionnaire which he had received from the appellants' solicitors some time before the hearing. Apparently, this questionnaire had been sent to a number of cigarette vendors; but only one reply was received from a certain Mr. Wong King To. In it he stated that his customers were mainly Chinese office workers; that, for the most part, they spoke Cantonese; that about 90% of his customers indicated their choice of cigarette by the use of a colloquial name, and 10% by pointing to the packet they desired to purchase; that in the case of Craven 'A' King Size Filter Cigarettes, they used the colloquial names namely "tai mou wong" (meaning "big cat king") or "cheung huk mou" (meaning "long black cat"); but that about 10% of his Craven 'A' customers selected this brand by pointing to the packet. 15. The general rules followed by courts of law when deciding whether a mark is likely to deceive or cause confusion are well summarised in Kerly's Law of Trade Marks (9th Ed.) Cap.18 under the heading "Rules of Comparison". Relevant passages from that chapter are as follows:-
16. The submission of counsel for the appellants may be summarised thus:-
The submission of counsel for the respondents may be summarised thus:-
17. I agree that there is nothing distinctive about the oval devices forming part of the marks in issue in this case. Oval devices, indeed red oval devices, are a very common feature of marks used in connection with the sale of manufactured tobacco products. There was affidavit evidence that a red oval device appears on the cartons in which Gold Flake cigarettes are sold. There is a similar device on the cartons in which "CUP" cigars are sold. Indeed, during the luncheon adjournment, counsel for the respondents said that he had purchased two cartons of other brands of cigarettes on each of which was white lettering in a red oval device which was surrounded by a gold band. Such devices are nothing more than decorative embellishments; and I venture to think that they could never, by any amount of user, become distinctive for the purposes of registration in class 34. 18. Of course, as I have said, the gravamen of the appellants' submission is that they are entitled to protection because of the colour limitation in the registration of trade mark no.1381 of 1962. In regard to that, the limitation as to colour was not imposed by the Registrar so as to create distinctiveness. It was part of the appellants' application for registration. Furthermore the oval device is only a part of trade mark no.1381; and the sequence of colours on the respondents' mark is different from the sequence of colours on the appellants' trade mark no.1381. There is no doubt that red is the predominating colour in the respondents' mark and white is the predominating colour in the respondents' Tempo mark. It is also true to say that red, white, and gold are very common colours on cigarette packets and labels. I am unable to accept that the colour limitation entered in respect of trade mark no.1381 entitles the appellants to claim distinctiveness in respect of white lettering in a red oval device surrounded by a gold band. 19. In this case, I have had the advantage of reading not only the Registrar's very carefully prepared grounds of decision. I also have before me a written decision(1) dated 20th March 1967 given by the Registrar of Trade Marks in Rhodesia in connection with a dispute between the parties to this appeal and involving the same trade marks. I agree generally with the views expressed in both these decisions. As the Rhodesian Registrar says (p.167):-
And at p.168, the Rhodesian Registrar says:-
20. I do not think that the proportion of "office workers" in Hong Kong who might be described as illiterate is large. But, in any event I entirely agree with the view that the purchase of cigarettes by a regular smoker is not a casual matter. Regular smokers are very discriminating. How often does one witness smokers refusing the offer of a cigarette simply because the brand offered is not the one which they are accustomed to? 21. In my view the Registrar came to the correct conclusion in this case. As Neville J. said in Thomas A. Smith Ltd.'s application(2):-
I see no reason to impose a negative colour condition under s.11(2). 22. For the above reasons, the appeal is dismissed with costs.
22nd December 1971. Representation: Litton, Q.C. & R. Tang (Johnson, Stokes & Master) for Appellant. Mills-Owens (Deacons) for Respondent. Mr. J.L.G. McLean for Registrar of Trade Marks. |