N.V. Sumatra Tobacco Trading Company v British American Tobacco Australia Services Limited

EX TEMPORE REASONS FOR RULING ON EVIDENCE IN THE COURSE OF THE TRIAL 1 I have read the affidavits again fully and I have read the submissions. I have also read the cases referred to me. I propose to admit the evidence of Mr Gary Irwin Mack. I will just express some brief observations about why that is so. 2 This is the trial of the proceedings. The principal application arises as an appeal from a decision of the delegate of the Registrar of Trademarks published on 31 July 2008 in which the delegate refused registration of each of the two opposed trademark applications on the ground that s 44 of the Trade Marks Act 1995 (Cth) had been made out by the respondent/cross-applicant in these proceedings, British American Tobacco Australia Services Limited ("BAT"). In the appeal now before this Court, that question is alive and the respondent/cross-applicant also agitates matters arising under ss 43 and 60 and additional matters under s 44 of the Trade Marks Act. 3 Two affidavits sought to be relied upon in the proceedings by the respondent/cross-applicant are the affidavits of Mr Gary Irwin Mack sworn on 28 April 2009 and 24 March 2010. A challenge is made to the affidavits and in particular Mr Mack's affidavit of 24 March 2010 on the footing that the deponent seeks to exercise the privilege of expressing an opinion on a contested matter in controversy before the Court and, in order to do so, a foundation of fact needs to be established as the basis upon which the witness can properly express an opinion for the purposes of s 79 of the Evidence Act 1995 (Cth). This particular witness seeks to express an opinion having regard to his experience built up over a long period of time working in the tobacco products industry in the sale and distribution of cigarette products. 4 In the affidavit sworn on 28 April 2009, Mr Mack, at paras 1 to 26 of that affidavit sets out the nature of his experience as the foundation upon which his opinion is based. 5 I will not repeat all of those paragraphs but the respondent/cross-applicant relies upon each and every paragraph in that affidavit which set out Mr Mack's experience over 28 years from the commencement of his employment in the industry from 1 March 1976. The affidavit demonstrates that Mr Mack was engaged in particular roles from 1976 to 1982 as a "cashvan salesperson". In 1982 his role changed from cashvan salesperson to training and development manager which continued until 1985. He then went to Papua New Guinea for a time until 1988. He returned to Australia and resumed a role as training and development manager with a firm called Leo Hemmingway and Picket (LH and P) based in Mulgrave, Victoria. He first began work in March 1976 in the industry with LH and P. From 1988 he continued to discharge that role for two years. He assumed the position of Distribution Area Manager for LH and P in 1990. He held that role until 1995. 6 In about 1995, he became an Area Manager for WD & HO Wills and was responsible in that role for managing a number of marketing representatives retained by that company in the distribution of its field of products. In about late 1996, Mr Mack says that WD & HO Wills became focused on a "channel" structure and, in the course of the affidavit, Mr Mack explains what he means by the channel structure which engages retail outlets, grocery organised outlets (such as Woolworths, Coles, Franklins, Bi Lo and others, which have centralised management control), grocery independents (such as IGA stores), convenience organised sites (such as Shell, BP, Mobil, Caltex, Ampol and 7Eleven stores), convenience independent stores, specialist stores (such as specialist tobacconists often referred to as "independent price cutters") and hotels, restaurants and cafes (described by the acronym HORECA). 7 Mr Mack ultimately concludes the narration of his experience in this industry by saying at para 27 of his first affidavit: Between 1976 and 2007, I estimate that I visited some thousands of retail outlets around Australia of an extraordinarily wide and diverse nature in terms of size, type, geographical location, and style, which outlets were displaying, offering the sale and selling "'Lucky Strike'" cigarettes. 8 Mr Mack's affidavit of 24 March 2010, by Part B, he seeks to express views on a number of topics which are relevant and in controversy in these proceedings and those topics are summarised by the respondent/cross-applicant as opinions going to whether "Luckies" would be used as a nickname for "Lucky Draw" or "Lucky Dream", being the two trademarks the subject of the original applications for registration by the applicant/cross-respondent in these proceedings; whether abbreviations for cigarette products are commonly used by customers for and retailers of those products; whether "Lucky Strike" has a substantial reputation in Australia; whether retailers would think that "Lucky Draw" or "Lucky Dream" were new variants of "Lucky Strike"; whether customers would think that "Lucky Draw" or "Lucky Dream" were new variants of "Lucky Strike"; whether new staff and irregular smokers would be less likely to recognise that "Lucky Draw" or "Lucky Dream" were not new variants of "Lucky Strike" cigarettes and other such matters. 9 The question that arises on the challenge to the evidence is put on the footing that the affidavits of Mr Mack do not lay down a proper foundation of either professional experience or intellectual skills or sufficient other experience exhibiting analytical skills, giving rise to a process of reasoning which would enable an opinion to be expressed arising out of this particular deponent's experience. 10 I have had regard, of course, to the provisions of the Evidence Act. I have considered the observations of Finn J in CA Henschke & Co & Anor v Rosemount Estates Pty Ltd [1999] FCA 1561 (1999) 47 IPR 63. I have also considered the Full Court's observations in CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42 in relation to one aspect of the matter involving the treatment of the evidence of a man called Mr Peter Forrestal. I have also had regard to the discussion at [29060], Cross on Evidence, Eighth Ed.; Makita (Australia) Pty Ltd v Sprowles [2001] NSWCA 305; (2001) 52 NSWLR 705; Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd [2007] FCA 1828; (2007) 245 ALR 15; Mckay v Commissioner of Main Roads [2009] WASC 353. 11 In the Henschke case, an affidavit by Peter Forrestal was sought to be relied upon by the applicant on the footing that Peter Forrestal, who was described as a well-known wine writer, columnist and magazine editor and wine judge, was an expert. Mr Forrestal was invited to express an opinion about aspects of reputation and confusion in the context of product competition and rivalry between two wines in the wine market. One was a well-known and probably famous wine called "Hill of Grace", and the other, the "Hill of Gold". In the primary judgment, Finn J does not elaborate greatly on the factual experience or foundation of fact upon which Mr Forrestal was proffered as an expert. However, it seems that he was recognised as a well-known wine writer who expressed columnist views or opinions about the quality of various wines across the spectrum of the wine market in Australia. 12 The evidence of the experts in the Henschke case was sought to be tendered in relation to questions of reputation and the parties had made some arrangements about the basis of that tender. His Honour observed at [69] that in the context of reputational evidence he would not exclude the evidence of the experts, including the evidence of Mr Forrestal, simply on the footing that there was no specialised knowledge satisfying the requirements of s 79 demonstrated on the material. However, in relation to the more contentious question of association and confusion, his Honour considered the foundation of fact upon which the experts were purporting to express an opinion. At [77] of the reasons, Finn J observed: With the possible exception of Mr Forrestal, I am not satisfied (a) that these experts have the specialised knowledge to give an opinion on the likelihood of mistake, confusion, etc; or (b) that, in any event, their actual opinions are ones from which I might receive some assistance. Accordingly, Mr Forrestal apart, I do not admit their evidence insofar as it relates to the issues of mistake, deception etc caused by the Hill of Gold name. Even if admissible, and I here include Mr Forrestal, I have grave doubts that any weight could or can be attributed to this body of evidence. The opinions represent little more - if that - than a general statement of practical experience and then a conclusion by way of assertion on the issue in this case. The conclusion in my view merely invites further questions. 13 In the context of this particular case it seems to me that there are significant similarities between the evidence proffered from Mr Mack and that of Mr Forrestal in the sense that Mr Mack is purporting to express opinions about matters which are plainly relevant, and his opinion evidence, would be relevant on those questions but the basis for his opinion rests upon a general statement of his experience from which he seeks to draw the conclusions he reaches as a matter of opinion. The other observation I would make for present purposes about Mr Mack's evidence is that to the extent that the detailed processes of thought by which each of the conclusions or opinions Mr Mack expresses are not revealed then, the evidence, although admitted, will be uncertain as to its exposed basis of reasoning and of little value to me. 14 I have had the benefit of reading the affidavits and many of the statements of opinion made by Mr Mack exhibit the qualities of conclusionary observations which, in some senses, represent a swearing of the issue in controversy. 15 I accept that, having regard to his experience, which to some degree is repeated in the second affidavit, Mr Mack is a witness who is capable of expressing an opinion based upon his experience across a period of 28 years to which he deposes. However, I do express some concern about the extent to which the evidence in the affidavits reveals a detailed process of reasoning by which the conclusions the witness seeks to make can be tested and seen to be supported and emanate from his foundation of practical experience. Although the matter was one conceded or acknowledged by the applicant in Henschke, the principle (at [77]) that to the extent that the detailed processes of thought by which a witness reaches his or her conclusion or opinion is not set out, an element of uncertainty as to how much reliance can be placed upon the opinion arises, is a statement of principle to be considered in the assessment of the admitted evidence of Mr Mack. 16 However, having regard to those matters, I propose to admit the evidence of Mr Mack challenged by the applicants in the proceeding. Further submissions will be addressed in the course of final submissions on the extent to which I might or ought to rely upon Mr Mack's expression of opinion and the weight that ought to be attributed to those opinions. I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.