Jamaica Lottery Company Ltd v Supreme Ventures Ltd et Al

• Jurisdiction: Jamaica
• Judge: RATTRAY J.
• Judgment Date: 09 November 2001
• Judgment citation (vLex): [2001] 11 JJC 0903
• Date: 09 November 2001
• Court: Supreme Court (Jamaica)

IN THE SUPREME COURT OF JUDICATURE OF JAMAICA

IN COMMERCIAL DIVISION

SUIT NO. C.D. 2001/J-001

BETWEEN

JAMAICA LOTTERY COMPANY LIMITED

PLAINTIFF

AND

SUPREME VENTURES LIMITED

1 ^ST DEFENDANT

AND

PAUL HOO

2 ^ND DEFENDANT

AND

IAN LEVY

3 ^RD DEFENDANT

AND

PETER STEWART

4 ^TH DEFENDANT

APPLICATION FOR INTERLOCUTORY INJUNCTION

^st

^{nd rd th}

TRADE MARKS - Infringement - Passing-off - Interlocutory injunction - Whether differences between trade marks are alike

RATTRAY J

1 The Plaintiff in this application is a company which, until recently, was the only company in Jamaica operating or licensed to operate a nation-wide lottery. It is the registered proprietor of Trade Mark Number B34, 611, which was registered on the 12 day of December 1996 in the Register of Trade Marks in Class 16 and on the 12 ^th day of December 1996 in the Register of Trade Marks in Class 16 and operates under its trade mark name and insignia, "Jamaica Lottery Company Limited", with a device depicting a bouncing ball, utilising the colours blue and red.

2 The Plaintiff is also the registered proprietor of the trade marks registered in Jamaica in the Register of Trade Marks, in respect of the logo and designs "Lotto" (Class 16), "Pick 3" (Class 28) and "Scratchers" (Class 16) being Trade Marks Numbered 34, 609; 35, 309 and 35,273 respectively.

3 In furtherance of its business operations, the Plaintiff has also applied for the registration of trade marks for "Jamaica Lottery Drop Pan" (Class 28) and "A Ticket to your Dreams" (Classes 16,25 and 28).

4 A new kid on the lottery block emerged in the form of the First Defendant, when in or about September 2000, it obtained a licence from the Betting, Gaming and Lotteries Commission to operate lottery-type games in Jamaica for a period of ten (10) years.

5 In a series of advertisements between April and May 2001, published in both daily newspapers and aired on the radio stations, the First Defendant embarked upon a promotional blitz for its lottery games, using the phrase "Win Jamaica Lotteries - Games People Love to Play", with the device of a treasure chest filled with currency notes. They advised that at the launch of its operations, the First Defendant would be introducing "a version of the popular Drop Pan and a live daily lotto-type draw game".

6 On or about the 19 ^th day of March, 2001, the First Defendant, through its Attorneys at law, applied to the office of the Registrar of Companies, Trade Marks Department for the registration of the said phrase and device as a trade mark in Part A, Class 16 of the Register. It was also reported in the national press that the intended start-up date for the new lottery game was June, 2001.

7 By letter dated May 18, 2001, the Plaintiff, through its then Attorneys at law, Messrs. Mitchell Hanson and Co., wrote to the First Defendant's Attorneys at law objecting to their client's use of the words "Win Jamaica Lotteries - Games People Love to Play" in the advertisements in the media and demanding that they cease and desist from using the said words. The Attorneys for the Plaintiff complained of the purported similarity between the said words and their client's registered trade mark, which they alleged was deceiving and confusing their customers and contractors who believed that Win Jamaica Lotteries and Jamaica Lottery Company were associated entities.

8 Not having received a satisfactory response, the Plaintiff, by Writ of Summons dated the 25 day of May 2001, instituted legal proceedings against the First Defendant and its Directors, the Second, Third and Fourth Defendants, claiming the following relief as set out in the Endorsement to its Writ of Summons;

• 1. Damages for passing off and/or infringement of trade mark and/or arising from the Defendants' ontravention of section 37 of the Fair Competition Act.

• 2. An injunction restraining the Defendants, whether by themselves, their servants or agents or any of them, or otherwise howsoever, from:

  • (a) infringing the Plaintiff's trade marks;

  • (b) passing-off or attempting to pass-off the Defendants' business as and for the business of the Plaintiff by the use in connection therewith, in any form or manner or for any purpose whatsoever, of the name "Jamaica Lottery" or any words which so nearly resemble same or by the use in connection therewith of any trade mark, name or style owned by or identified with the Plaintiff or any colourable imitation thereof.

  • (c) Carrying on any business under the name or style "Jamaica Lottery" or "Jamaica Lotteries" or any name or style which includes the words "Jamaica Lottery" or any name or trading style containing the words "Jamaica Lottery" or which so nearly resembles the same or under any trade mark, name or style owned by or identified with the Plaintiff or any colourable imitation thereof.

• 3. Obliteration upon oath of all marks upon all tags, signs, banners, advertising material or other articles which bear the name, mark or style "Jamaica Lottery" or "Jamaica Lotteries", which would be a breach of the aforesaid injunction prayed for and verification upon oath by the Defendants that they no longer have in their possession, custody or control any sign advertising material or article so marked.

• 4. Interest.

• 5. Further or other relief as the Court may deem fit.

• 6. Costs.

9 On the 28 ^th day of May 2001, this Court granted an Ex Parte Interim Injunction on the Plaintiff giving the usual undertaking as to damages, restraining the Defendants, their servants or agents from:

• (a) infringing the Plaintiff's trade marks;

• (b) passing-off or attempting to pass-off the Defendants' business as and for the business of the Plaintiff by the use in connection therewith, in any form or manner or for any purpose whatsoever, of the name "Jamaica Lottery" or any words which so nearly resemble same or by the use in connection therewith of any trade mark, name or style owned by or identified with the Plaintiff or any colourable imitation thereof

• (c) carrying on any business under the name or style "Jamaica Lottery" or Jamaica Lotteries" or any name or style which includes the words "Jamaica Lottery" or any name or trading style containing the words "Jamaica Lottery" or which so nearly resembles the same or under any trade mark, name or style owned by or identified with the Plaintiff or any colourable imitation thereof

10 for a period of seven (7) days.

11 This Injunction has been extended and remains in place while the Attorneys have advanced their arguments for the grant or refusal of an Interlocutory Injunction in this matter.

12 The Plaintiffs Case

13 The Plaintiff contends, in an Affidavit filed by its Managing Director, Eugene Ffolkes, sworn to on the 25 ^th day of May, 2001 in support of the application for an Interlocutory Injunction, that in 1991 it commenced operation under the name "Sports Development Agency Limited", duly licensed by the Betting Gaming and Lotteries Commission. In 1994, that name was changed to the Plaintiff's present name, and on the 12 ^th day of December 1996, the Plaintiff was registered as proprietor of the trade mark in the name "Jamaica Lottery Company Limited", together with the device of a bouncing ball.

14 Subsequently, the Plaintiff became the registered owner of other trade marks in respect of its logo and designs "Lotto", "Pick 3" and "Scratchers" and it has also applied for trade marks in respect of "Jamaica Lottery Drop Pan" and "A Ticket to Your Dreams".

15 It is further contended by the Plaintiff that by the use of its name since 1994 and through its operation of the nationwide lottery and other gaming products, it is well known to the Jamaican public and has acquired a national reputation and, according to its Annual Report exhibited to the Affidavit of Eugene Ffolkes, has in excess of 450 agents islandwide.

16 The Plaintiff's complaint in essence is firstly that the use by the First Defendant of the name "Win Jamaica Lotteries - Games People Love to Play", is a breach of its registered trade mark. Secondly, that by virtue of the acts complained of, the Defendants are liable in an action for passing off. Thirdly, that the use of the alleged offending phrase in its advertisements in the print and electronic media is so similar to the Plaintiff's trade mark "Jamaica Lottery Company Limited" that it is likely to cause confusion in the minds of the public. This aspect of the complaint is encapsulated in paragraphs 18 and 19 of the said Affidavit of Eugene Ffolkes, which read:

• "18. SVL's (the First Defendant's) business is in no way associated with the business of JLC (the Plaintiff) and JLC is fearful of confusion, actual and potential, which results from the use by SVL, and its directors, of the words 'Jamaica Lotteries' in SVL's business as those words are very similar to the words 'Jamaica Lottery' which are contained in the trade mark 'Jamaica Lottery Company Limited', which is the property of JLC.

• 19. JLC believes that the use of the words 'Jamaica Lotteries' is an infringement of its trade mark and constitutes an attempt by SVL to profit from JLC's reputation."

17 In support of the allegation of likely confusion in the minds of the public, the Plaintiff relied on the Affidavits of Sonia Davidson and Dayner Clarke sworn to on the 30 ^th day of May 2001. Both these deponents are employees of the Plaintiff, the former being its Public Relations and Promotions Manager and the latter, its Marketing Manager. They have stated in their Affidavits that they have received calls from members of the public enquiring about the new games being launched by the Plaintiff. The games enquired after were those being promoted by the First Defendant under its "Win Jamaica Lotteries - Games People Love to Play" advertisements.

18 An affidavit in the same vein, sworn to by one Pauline Robinson on the 6 day of June 2001, stated...