Jamaica Lottery Company Ltd v Supreme Ventures Ltd et Al

• Jurisdiction: Jamaica
• Judge: FORTE, P: , HARRISON, J.A. , WALKER, J.A.:
• Judgment Date: 11 April 2003
• Neutral Citation: JM 2003 CA 15
• Judgment citation (vLex): [2003] 4 JJC 1103
• Date: 11 April 2003
• Court: Court of Appeal (Jamaica)

IN THE COURT OF APPEAL

BEFORE:

THE HON. MR. JUSTICE FORTE, P THE HON. MR. JUSTICE HARRISON, J.A THE HON. MR. JUSTICE WALKER, J.A

BETWEEN

JAMAICA LOTTERY COMPANY LTD.

APPELLANT

AND

SUPREME VENDORS LIMITED

1 ^ST RESPONDENT

AND

PAUL HOO

2 ^ND RESPONDENT

AND

IAN LEVY

3 ^RD RESPONDENT

AND

PETER STEWART

4 ^TH RESPONDENT

Sandra Minott-Phillips Christopher Kelman, instructed by Myers, Fletcher and Gordon

Allan Wood, Ransford Braham Anne-Marie White-Feanny, instructed by Livingston, Alexander and Levy

John Graham, John Graham Company

TRADE MARKS - Infringement - Passing-off - Whether there was a serious issue to be tried

FORTE, P:

1 Having read in draft the judgment of Walker, J.A. I agree entirely with his reasoning and conclusion and have nothing further to add.

HARRISON, J.A.

2 I also agree.

WALKER, J.A.:

3 On November 9, 2001 Rattray, J. gave a judgment refusing the appellant's application for an interlocutory injunction in these proceedings. This is an appeal against that judgment, the essential question on appeal being whether, the learned judge was right in concluding that on the evidence before the court the appellant failed to show there was a serious issue to be tried either for infringement of the appellant's trade mark or for passing off.

4 The judgment of Rattray J conveniently summarises the relevant facts and. records a portion of the relevant law as follows:

"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 ^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.

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.

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).

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.

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'.

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.

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... The Plaintiff is the registered owner of a trade mark under the Trade Marks Act. By virtue of Section 46 of the Act;

'....The fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark. ...'

Under Section 6 (1) of the said Act, the registered proprietor of the trade mark is given the exclusive right to the use of same, and so far as is relevant to this matter reads:-

'6(1) Subject to the provisions of this section, and of sections 9 and 10, the registration of a person in Part A of the Register...