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Festina Lotus S.A (Proprietor) is the registered proprietor of the FESTINA mark. While the Proprietor does not have any business presence in Singapore, it claimed to have offered goods for sale online through various third-party websites, namely www.bodying.com, www.watchshop.com and in particular, www.brandsfever.com (Brandsfever), which is accessible by Singapore consumers.

The Proprietor furnished evidence of “genuine use” by various third parties of (i) website printouts, (ii) photographs of the mark and (iii) a letter from the director of Brandsfever of actual sales that had been tendered, thereby concluding that their goods had been offered to the Singapore public.

Romanson Co. Ltd (Applicant) applied for revocation of the FESTINA mark under Sections 22(1)(a) and (b) of the Singapore Trade Marks Act (Act), which provides that the registration of a trademark may be revoked if genuine use of the mark in the course of trade in Singapore has been suspended for an uninterrupted period of five years, unless there are “proper reasons for non-use.”

The Applicant relied on the evidence put forward by the Proprietor to argue that there was no genuine use in the course of trade in Singapore. The Applicant submitted that “genuine use” requires more than merely token use and is a question of fact, and that the Proprietor had not taken “active steps” to market the goods in Singapore.

 festina

The Applicant also submitted that the use shown by the Proprietor was insufficient because third parties do not have control over the use of the FESTINA mark. Further, the Applicant had commissioned a third party to conduct a market investigation on the use or non-use of the mark, and the investigator had arrived at the conclusion that there was no “relevant use” by the Proprietor of the FESTINA mark in Singapore.

In light of the evidence submitted, the Assistant Registrar said that use on the Internet may constitute genuine use even if there is no evidence of actual sales being made. However, the commercial exploitation of the mark has to be real. Token use or simulated use intended only for the mark’s protection and registration maintenance is insufficient to establish “genuine use.”

The Assistant Registrar also found that there was no “consent” by the Proprietor to the use of the FESTINA mark by the third parties for the purposes of Section 22(1) of the Act.

Assessing the circumstances of the case, the characteristics of the market concerned and the scale and frequency of use of the mark, the Assistant Registrar was convinced that the Proprietor did not put FESTINA to genuine use in the course of trade in Singapore and there were no proper reasons for non-use. Hence, the registration of the mark was revoked. Romanson Co., Ltd. v Festina Lotus, S.A. (February 6, 2015, SGIPOS 3).
 
This case highlights the importance of putting a mark in genuine use in Singapore. Mere use of a trademark on the Internet without any active step on the part of the proprietor is not sufficient to overcome a revocation action.

 

 

This article was first published in INTA Bulletin, Vol. 70 No.8, April 15, 2015. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx

 

 

 

 

PT Gudang Garam Tbk is a leading manufacturer of Indonesian kretek (clove cigarettes) and other tobacco products. Gudang garam means “salt warehouse.” The design of the company’s cigarette pack was conceptualized by its owner, Surya Winowidjojo, in 1956. By the end of 1958, the business had 500 employees producing 50 million kretek annually. Today, Gudang Garam is listed in the Jakarta and Surabaya Stock Exchanges. It has at least 79 trademark registrations for Gudang Garam and its variants in Indonesia, mainly in Class 34, covering the following goods: “kreteks cigarettes, cigarettes, white cigarettes, cigars, tobacco, ashtrays, cigarette holders, matches, lighters and kind of goods, tobacco sauce.” 


 Gudang Garam

 

The earliest registration was secured on July 16, 1980, under registration no. 147543 in Class 34 covering kretek cigarettes.

In 2005, H. Ali Khosin (Khosin) secured a trademark registration for the GUDANG BARU mark in Class 34 for “Cigarettes” (Registration No. IDM000381985) and the GUDANG BARU & Device mark in Class 34 for “Cigarettes” (Registration No. IDM000381705).

Gudang Garam instituted a cancellation action before the Commercial Court of Surabaya, seeking cancellation of Khosin’s registrations in the name of Khosin based on the following:

(i) GUDANG BARU is similar in its essential part to GUDANG GARAM, which is registered for the same kind of goods; (ii) registration of GUDANG BARU was made in bad faith because GUDANG GARAM is an internationally well-known mark registered for the same kind of goods; and (iii) the phrase GUDANG GARAM was created by the owner of Gudang Garam and is also a legal company name.

The Commercial Court found that Gudang Garam’s trademarks were well known in Indonesia. It also found that the contending marks were similar and that Khosin registered the marks in bad faith.
 
Khosin filed an appeal before the Supreme Court. The Supreme Court reversed the decision of the Commercial Court and held that the contending marks were dissimilar and that there was no likelihood of confusion (162 K/Pdt.Sus-HKI/2014, April 22, 2014). Firstly, it was noted that there was insufficient evidence to support a claim of bad faith. Secondly, the Supreme Court found that the contending marks were similar only with respect to the term “Gudang,” which means “warehouse,” and the term “Gudang,” which, per se, does not possess any distinctive character. As a whole, the marks possessed different shapes, styles and sounds. Hence, the possibility of confusion was remote, said the Court.

This case illustrates that similarity in one component of a mark does not automatically result in a “confusing similarity” between the contending marks.

 

This article was first published in INTA Bulletin, Vol. 70 No.8, April 15, 2015. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx

 

 

 

 

In a decision dated January 2, 2015, the Hearings and Mediation Group, Intellectual Property Office of Singapore (IPOS), declared registration of the trademark under number T1005905C, invalid.


 Red Sun

Redsun Singapore Pte. Ltd (Applicant) had filed with the IPOS an application for a declaration of invalidity against the trademark registration in the name of Tsung-Tse Hsieh (Proprietor). [2015] SGIPOS1.

The Applicant had previously obtained a judgment from the High Court against the Proprietor for passing off, although this was based on a procedural failure of the Proprietor to exchange its affidavit with the Applicant, rather than the elements of passing off being established.

In the present case, the Applicant had initially sought to invalidate the Proprietor’s mark on the grounds of similarity under Section 8(2)(b) of the Trade Marks Act. While the marks appear to be similar, given that both have the common denominator of “RED SUN,” it was held that because they were registered in different classes and for different goods, there was no likelihood of confusion between the two. Hence, the Applicant failed on this ground. However, the Applicant was able to invalidate successfully the Proprietor’s registration on the grounds of passing off based on Section 8(7)(a) of the Trade Marks Act.

To establish passing off, the following points were decided: 

  1. The Applicant had adduced evidence of use and promotion of its mark, RED SUN, in the social media, print media and on air over the radio. Additionally, it had further given evidence showing its annual sales revenue as well as expenses incurred for advertising and promotion. Based on this evidence, it was determined that the Applicant had established goodwill in the business of selling tea and health supplements under the RED SUN mark.
  2. Here, the Applicant sold tea in unprepared forms, while the Proprietor sold ready-to-drink bubble tea through an outlet in Singapore. Nevertheless, as both were selling tea, regardless of the form, the Applicant had proved that it was normal practice for businesses selling unprepared beverages to expand into the field of selling prepared beverages and vice versa. Given the similarity of the appearances of both products, the element of misrepresentation was made out.
  3. Damages were determined by the fact that the Proprietor’s activity meant that the Applicant would be prevented from expanding into the field of commercial activity in which the Proprietor was already active.

 
This case illustrates how a
trademark registration can be invalidated if a claim for passing off based on earlier use of another mark is successfully made against the later mark.

 

This article was first published in INTA Bulletin, Vol. 70 No.6, March 15, 2015. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx

 

 

 

 

Friday, 06 February 2015 02:10

SINGAPORE: No Break for Nestlé

Société Des Produits Nestlé SA and Nestlé Singapore (Pte) Ltd (plaintiffs) filed an action before the Singapore High Court against Petra Foods Ltd and Delfi Singapore Pte Ltd (defendants) for trademark and copyright infringement. [2014] SGHC 252.

The marks in question are shown in the chart below (right):

nestle

 

The plaintiffs alleged that:

  • The defendants’ product infringes trademark nos. T0000002A and T0000003Z;
  • The defendants’ packaging infringes upon the plaintiffs’ Two Fingers and Four Fingers Shape mark;
  • The Two Fingers Shape and the Four Fingers Shape product and packaging are well known and/or are well known to the public at large in Singapore, and the defendants should be restrained by injunction; and
  • The Two Fingers Shape mark is well known and/or well known to the public at large in Singapore and the defendants should be restrained by injunction from using said shape mark in its 2-Fingers Take-It product.

The defendants replied that:

  • The Two Fingers Shape and Four Fingers Shape ought to be invalidated and/or revoked; and
  • The plaintiffs’ threats of legal proceedings for infringement of a registered trade mark were groundless threats of infringement proceedings under section 35(2) of the Trade Marks Act.

In examining the claims and counter-claims, the Court took the view that even if the defendants had copied the plaintiffs’ product, there was nothing wrong with copying per se as long as the plaintiffs’ rights were not affected.

While assessing registrability of the plaintiffs’ marks, the Court used the “Technical Result Exception” to decide whether the shape of the plaintiffs’ products was necessary to obtain a technical result. The Court held that:

  • The plaintiffs’ marks did not consist of shapes that result from the nature of the goods themselves;
  • The plaintiffs’ marks did not consist of shapes that give substantial value to the goods;
  • The marks were invalid as “each and every one of the essential features of the Registered Shapes is necessary for a specific though different technical result.”

The defendants thus succeeded in establishing that the plaintiffs had not used their registered marks in a manner that is consistent with the essential feature of a trademark, such as: to act as a badge of origin for the products in question. Therefore, the plaintiffs’ claim of trademark infringement failed.

The plaintiffs’ claim that their marks were well known to the public and/or to the public at large in Singapore was also rejected.

This decision is significant, as the High Court clearly articulates that shape marks that are necessary to obtain a technical result are unregistrable and such unregistrable marks will not be afforded protection, even if they are well known in Singapore or anywhere else in the world.

 

This article first appeared in the INTA Bulletin Vol 70, No. 2. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx

 

 

 

 

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The protection of engineering designs by way of copyright and passing-off in Malaysia was dealt with by the High Court in Malaysia in the case of Hexagon Tower Sdn Bhd v Polydynamic Holdings Sdn Bhd & 3 Ors [2005] 4 AMR 384.

In this case the plaintiff company was in the business of manufacturing and selling rubber glove chlorination tumblers, which were named "Chlorination Tumbler". One of its former employees upon leaving the plaintiff went on to form and set up various companies of which he became a director and shareholder. Those companies also manufactured a chlorination tumbler machine, which they called "Powder free PP Tumbler" or "FRP Tumbler". The various companies formed by the former employee became the first, second and third defendants in the suit while the former employee himself became the fourth defendant.

In respect of the fourth defendant's involvement with the plaintiff, he joined the plaintiff as an applications specialist in1990 and went on to be a branch executive in 1994 and left the plaintiff's employment in 1996.

The defendants had in the first quarter of 1998 published and advertised their tumbler in a trade publication being the Malaysian Rubber Glove Manufacturer's Association newsletter, and in their website. The plaintiff's response was that it had the proprietary rights to their chlorination tumbler and to promotional leaflets containing product specification and photographic representations of the tumbler, and they took an advertisement in a leading local English language newspaper to that effect in July 1998.

The Plaintiff's claim

The plaintiff then commenced this suit against the defendants and claimed that it had three causes of action against the defendants:

That the defendants had infringed the plaintiff's artistic and literary copyright pertaining to the plaintiff's tumbler by the defendants' unauthorized and unlawful reproductions of the plaintiff's tumbler;

That the defendants had converted the plaintiff's artistic work and literary work pertaining to their own use, constituting the tort of conversion; and

That the defendants actions constitute a passing-off of the plaintiff's tumbler.

In respect of the plaintiff's claims, the relief sought was a permanent injunction, delivery up and destruction of the infringing products/works, discovery of the relevant documents, damages or an account of profits and costs.

Infringement of Copyright

Subsistence of Copyright

As to the first cause of action being infringement of copyright, the first issue is whether there is copyright as claimed. Here the plaintiff claimed that it was the owner of the artistic works in the form of the two-dimensional technical and engineering drawings and the three-dimensional reproduction of the drawings, being the plaintiff's Chlorination Tumbler. The plaintiff also claimed that the promotional leaflet contained a photographic representation and product specification of the plaintiff's tumbler and that the photographic representation of the plaintiff's tumbler was a literary work, the copyright of which was being infringed by the defendants.

On the artistic copyright issue, the first issue the court delved into by the court was whether the plaintiff's drawings constitute artistic works that are capable of copyright protection. In this respect the court was aided by section 3 of the Copyright Act 1987, which defined "artistic work" as being "a graphic work, irrespective of artistic quality", as well as the definition of "graphic work" which is said to include "any painting, drawing, map, chart or plan".

The court was further fortified by the case of Peko Wallsend Operations & Ors v Linatex Process Rubber Bhd [1993] 1 MLJ 225, where the High Court had determined in the affirmative that two-dimensional engineering drawings were capable of being eligible for copyright protection and more importantly held that "the copyright protection has been extended to cover finished products (three-dimensional) as well which had been manufactured from the drawings." The court therefore affirmed the Linatex decision and held that the plaintiff's tumbler in its three-dimensional form enjoys copyright protection.

Ownership of Copyright

On the issue of ownership of copyright, the court reviewed the evidence and was satisfied that the authors were employed by the plaintiff and the fact that the plaintiff had contributed to the authors pension fund was considered good evidence. The defendants contention that one of the authors was a director of the plaintiff and so could not be considered to be under employment was rejected by the court who upheld an earlier Malaysian decision that a company director can also be under employment, and that the actual job functions have to be looked at to determine whether a person is under employment or not.

Copyright Infringement

The court here found that there was infringement as the plaintiff had not consented to the reproduction and sale of the tumblers and there was clear objective similarity between the defendants' tumblers and the plaintiff's tumblers and a clear causal connection between the fourth defendant and the plaintiff.

The court applied the "objective similarity" test when comparing the defendants tumblers with the plaintiff's tumblers and also held that there was a causal connection between the defendants and the plaintiff as the fourth defendant was employed by the plaintiff, which showed both opportunity and motive for the infringement.

Conversion

As to the second cause of action, the court held that the as defendants had manufactured and sold tumblers that were an infringement of the plaintiff's copyright, the defendants' tumblers were an unlawful reproduction and so the defendants were held to have converted the tumblers for their own use, and were therefore liable for the tort of conversion.

Passing - off

On the third cause of action, the court held that the plaintiff had gained considerable goodwill from the sale of the tumblers as they were selling well and many customers were repeat customers. The court felt that the customer had become accustomed to the get-up, colour, shape, and design of the plaintiff's product specifically in relation to the powderless rubber glove industry.

The court held that the defendants' advertisements in the rubber glove industry newsletter and their website was likely to lead the public to believe that the defendants were offering for sale the plaintiff's tumblers. The defendants' contention however was that customers would go for function rather than shape or design, and that the defendants' tumblers functioned differently. The court however felt that once a customer was familiar with a particular shape or design, he would be inclined to trust an identical or similar looking tumbler.

The court therefore held that elements required in proving passing-off in the English landmark English decision of Erven Warnick BV & Anor v J Towend & Sons (Hull) Ltd & Anor [1980] RPC 31 were fulfilled, and thereby found against the defendants.

Relief

The court therefore granted a permanent injunction and the other relief sought by the plaintiff.

Impact of the case

Although the court's findings in respect of copyright infringement are not ground breaking, it cements the position that there is copyright protection for industrial products by way of three-dimensional copying of the copyright owner's two-dimensional design. This position has been somewhat modified for designs that were created post 1st September 1998 and are created now, but still remains very relevant for a large number of products which were designed prior to that date (as will be discussed below).

The decision in respect of passing-off has important repercussions for companies which may not have design or copyright protection, as it allows an industrial product with an identifiable shape which has been sold for long enough to claim to goodwill and prevent misrepresentation by a passing-off action. The traditional area of using passing-off to protect get-up in terms of packaging is now being broadened by the courts to encompass designs of industrial products. This is a welcome development in the law which gives owners of intellectual property some flexibility in protection.

Change in the law

It has to be noted that the Hexagon case discussed above was filed in 1998, and may not reflect the current position in respect of copyright protection for industrial products. This is as with the coming into force of the Copyright Amendment Act 1996 on 1st September 1998, copyright protection is denied for a design which is capable of being registered as an industrial design, but was not registered as such, and if there was any application of that design to an article and the article has been reproduced more than 50 times by an industrial process. Therefore if there is artistic copyright in a design drawing, but more than 50 articles from that drawing has been reproduced by an industrial process, no copyright protection will ensue as it can only be protected by an industrial design registration.

With the new law, the owner of copyright in design drawings such as the plaintiff in the Hexagon case would only have protection if he had registered his design as an industrial design.

However an important point to note is that the Copyright Amendment Act 1996 contained a saving provision which provided that nothing in the Amendment Act shall affect works in which copyright subsisted immediately prior to the date of coming into force of the said Act, and the Copyright Act as unamended shall apply to such works. Therefore if copyright subsisted in a work prior to 1st September 1998, the three-dimensional reproduction of a two-dimensional design drawing would still be an actionable infringement today. This means that notwithstanding the change in the law a significant amount of industrial products are still protected by copyright.

However in terms of new designs of industrial products, it is imperative that an industrial design registration be done in Malaysia to ensure protection for the owner.

Tuesday, 06 January 2015 03:11

The Puzzle of Common “P”

Tao, Hsiu-Chih v. Pirelli & C. S.P.A, [2014] SGIPOS 7

Tao, Hsiu-chih (the applicant) filed Singapore trademark application number T1015606G for the figurative mark Ts.Project (application mark). This application was accepted and published on April 29, 2011. Pirelli & C SpA (the opponent) opposed the application mark on the ground of similarity to their previously registered marks, passing off by the applicant and that the application was made in bad faith.

The opponent relied on their various registered marks and argued that the following marks are visually, aurally and conceptually similar to the application mark.

The opponent submitted that the Elongated P is the dominant component of the opponent’s marks and this Elongated P is “the general impression or significant detail” of the opponent’s marks and the application mark. The Registry, relying on precedents, opined that the Elongated P does not appear original or elaborate and it is likely that an average English-speaking Singaporean consumer may perceive that the letter “P” has primary purpose of accentuating the first letter of the word “Pirelli”.

With regard to visual similarity between the opponent’s first mark and the application mark, the Registry reiterated the principles of examining the marks as a “whole” and stated that the overall resemblance between the opponent’s first marks and the application mark is diminished by the fact that marks consist of words “Pirelli” and “Ts.Project” which are completely different from each other. The opponent’s second mark, which consists only of the Elongated P, was also regarded as visually dissimilar to the application mark as the words “Ts” and “Project” appearing in the application mark are not of “negligible significance” and therefore this mark as a whole is different from the application mark. The opponent’s third mark, the Elongated P with a dot, was also not considered visually similar as the other words appearing in the application mark are not insignificant and therefore despite the common “P” element, the marks as a whole are not similar. The opponent’s fourth mark, the curved “P”, was also considered as visually dissimilar to the application mark.

In relation to aural similarity, the Registrar opined that neither the number of syllables nor the individual syllables between any of the opponent’s marks were aurally similar to the application mark. Moreover, considering that neither the application mark nor the opponent’s mark convey any particular meaning, the possibility of conceptual similarity was also rejected.

With regard to opposition on the grounds of passing off, the Registrar highlighted the established requirements of goodwill, misrepresentation and damage for proving passing off. However, the opponents failed to adduce sufficient evidence to establish goodwill in Singapore, and hence, this claim was not entertained. Moreover, considering that the marks are already considered dissimilar and the applicant and opponent are in different fields of business, the chance of public confusion is unlikely. In relation to the allegation that the applicant acted in bad faith, the Registry opined that the legal burden of proof to show bad faith was discharged by the opponent. Moreover, no evidence or submissions as to why the applicant did not have the right to register the application mark were provided. Hence, opposition under this ground failed as well.

This case primarily clarifies that even if the marks in question have one common element, the marks would not be considered as visually similar, if as a whole, the mark contains elements which would not be of negligible significance.

 

This article first appeared in Asia IP. For further information please visit http://www.asiaiplaw.com/

 

 

 

 

In Syntroleum v. Neste Oil Singapore, the Singapore High Court dismissed two sets of applications filed by the defendant for the disclosure of three categories of documents by the plaintiff in respect of Singapore Patent 172045 (the 045 patent), Singapore Patent 169053 (the 053 patent) and the United States Patent 5,705,722 (the US 722 patent).

The applications stem from two separate suits (with substantially similar issues) instituted by the plaintiff against the defendant for infringement of its petrochemical patents. The defendant denied any infringement and counterclaimed that the patents were invalid by reason, inter alia, of the defendant’s prior sale of its NExBTL product and for insufficiency of disclosure.

In the course of proceedings, the defendant sought the disclosure of three categories of documents; namely, (a) the inventor’s notes in respect of the 045 patent and the 053 patent; (b) the experimentation results obtained by the plaintiff in tests that it performed on the defendant’s NExBTL product; and (c) the experimentation results obtained by the plaintiff in its tests conducted in accordance to the instructions set forth in the US 722 patent.

It is important to note that Order 87A of the Singapore Rules of Court (the ROC) governs proceedings in the Singapore High Court in respect of patents registered under the Singapore Patents Act. Order 87A, Rule 5(2) (3) of the ROC limits the disclosure of documents relating to any ground on which the validity of a patent is put in issue to a period of four years on either side of the earliest claimed priority date.

With regard to the disclosure of inventor’s notes, the defendant argued that they were relevant as evidence of the state of the art at the time of invention and whether steps taken by the inventor were obvious to the ordinary man skilled in the art. Further, the defendant also sought to adduce the inventor’s notes as secondary evidence and to admit the same as evidence of the inventor’s subjective views.

As regards the disclosure of experimentation results obtained by the plaintiff from tests conducted on the defendant’s NExBTL product and the US 722 patent, the defendant contended that the foregoing would show that the plaintiff’s patents were anticipated by the prior art.

In response, the plaintiff raised objections on the ground that the subjective knowledge and intentions of inventors are no longer relevant and should be excluded. Further, the plaintiff submitted that the inventor’s notes and the experimentation results were private documents and do not form part of the publicly available state of the art. Additionally, the plaintiff maintained the position that it had never carried out any such tests on the defendant’s NExBTL product and consequently, there was nothing to disclose.

The court posited that inventor’s notes are discoverable. However, the court added that inventor’s notes should not be discoverable during general discovery unless the issues for which they are required have been especially particularized through pleadings (e.g., the particulars of objections) or through a list of issues. Indeed, as inventor’s notes are secondary evidence pertinent to the issue of obviousness which is an objective analysis, the primary evidence relied upon should be documents that are publicly available. The court ruled that publicly available documents would suffice and accordingly, recourse should not be made to notes by a private inventor unless it is necessary to do so.

Applying the above to the present case, the court found the Particulars of Objections (Amendment No. 2) by the defendant to be devoid of particulars.

The court explained that where the particulars of objections were sufficiently particularized to enable a proper consideration of not just the abstract grounds of challenge but the detailed issues, as well as a discussion of how the inventor’s notes are intended to be used after disclosure, it would not be inconceivable to direct the disclosure of the inventor’s notes as part of general discovery. In this vein, the court underscored the following situations where disclosure of the inventor’s notes could be necessary for the fair disposal of the matter or for minimizing the incurrence of unnecessary costs; namely, (a) where the inventor is called as a witness; (b) whenever specific issues are particularized; and (c) after the exchange of expert reports or the conduct of experiments.

With regard to the disclosure of experimentation results obtained from tests conducted on the defendant’s NExBTL product, it emerged during the course of submissions by parties that the defendant was after the results obtained from tests conducted by the plaintiff on the defendant’s Swedish Patent No. 9700149. Hence, the court dismissed the same.

As to the disclosure of experimentation results obtained by the plaintiff, the court also dismissed the same as it found that the US 722 patent was not cited as prior art. Accordingly, the plaintiff cannot be expected to know that they would be relied on.

This case shows the importance of ensuring that all pleadings are sufficiently particularized to substantiate any and all requests prayed for by parties. Adherence to civil procedure rules is as important as substantive law. As stated by Lord Mansfield in Robinson v. Raley in 1756:

“[t]he substantial rules of pleading are founded in strong sense, and in the soundest and closest logic; and so appear, when well understood and explained : Though, by being misunderstood and misapplied, they are often made use of as instruments of chicane”.

 

This article first appeared in Asia IP. For further information please visit http://www.asiaiplaw.com/

 

 

 

 

Tuesday, 18 November 2014 02:29

SINGAPORE: ANGRY BITE Chews Up Opposition

Kimanis Food Industries Sdn Bhd filed an application to register its mark ANGRY BITE (the “Applicant’s Mark”) in Singapore in respect of goods in Class 30. (Application No. T1204840G, filed Apr. 5, 2012.) Rovio Entertainment Ltd., best known for its game franchise Angry Birds, opposed the application on the following grounds:

The Applicant’s Mark was similar to the Opponent’s ANGRY BIRDS mark (the “Opponent’s Mark”), registered in Classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 27–30, 32–36, 38, 41 and 43, such that there was a likelihood of confusion. Moreover, the Opponent’s Mark was well known in Singapore and well known to the public at large.

The opposed application was contrary to the provisions of the law of passing off and the law of copyright.

In examining the similarity of the marks in question, the Registrar relied on the step-by-step approach, which states that the examination should be based on (1) similarity of marks, (2) similarity of goods and (3) likelihood of confusion arising as a result of the first two elements. In applying the three-step test, the Registrar took the view that there was no visual or conceptual similarity between the marks at issue, and that, while there was a certain degree of aural similarity, it would not result in a likelihood of confusion based on a comparison of the marks in their entireties.

While the Opponent’s Mark was well known in Singapore, it could not, the Registrar held, be considered to be well known to the public at large: Trademarks that were well known to the public at large formed a “rare and exclusive class,” and the Registrar was of the view that the Opponent had not submitted sufficient evidence to support its assertion. For example, the sales/promotion figures submitted by the Opponent were not sufficient.

 

 angry birds

 

Kimanis Food Industries Sdn Bhd filed an application to register its mark ANGRY BITE (the “Applicant’s Mark”) in Singapore in respect of goods in Class 30. (Application No. T1204840G, filed Apr. 5, 2012.) Rovio Entertainment Ltd., best known for its game franchise Angry Birds, opposed the application on the following grounds:

The Applicant’s Mark was similar to the Opponent’s ANGRY BIRDS mark (the “Opponent’s Mark”), registered in Classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 27–30, 32–36, 38, 41 and 43, such that there was a likelihood of confusion. Moreover, the Opponent’s Mark was well known in Singapore and well known to the public at large.

The opposed application was contrary to the provisions of the law of passing off and the law of copyright.

In examining the similarity of the marks in question, the Registrar relied on the step-by-step approach, which states that the examination should be based on (1) similarity of marks, (2) similarity of goods and (3) likelihood of confusion arising as a result of the first two elements. In applying the three-step test, the Registrar took the view that there was no visual or conceptual similarity between the marks at issue, and that, while there was a certain degree of aural similarity, it would not result in a likelihood of confusion based on a comparison of the marks in their entireties.

While the Opponent’s Mark was well known in Singapore, it could not, the Registrar held, be considered to be well known to the public at large: Trademarks that were well known to the public at large formed a “rare and exclusive class,” and the Registrar was of the view that the Opponent had not submitted sufficient evidence to support its assertion. For example, the sales/promotion figures submitted by the Opponent were not sufficient.


With respect to passing off, the Registrar found that there was no misrepresentation, in the same vein that there was no likelihood of public confusion, and therefore the passing-off claim did not succeed. The claim of copyright infringement likewise failed; the Registrar found that the Opponent failed to establish that any copying had taken place because there was no substantial similarity between the Applicant’s Mark and the Opponent’s Mark. (In re Trade Mark Application by Kimanis Food Industries Sdn Bhd, [2014] SGIPOS 10 (Aug. 18, 2014).)

It is worthy of note that in the Preliminary Comment the Registrar mentioned that “there is nothing objectionable in being ‘inspired’ per se in that, not everything ‘inspired’ by an existing work is necessarily objectionable.” As this case clearly articulates, an evaluation of similarity of marks should be based on a consideration of each mark as a whole, especially when one of the marks at issue is a composite mark.

The decision is unique in that the Registrar clearly enunciated that whether or not a mark “inspired” by an existing work can ultimately be regarded as objectionable will depend on whether an opponent can establish one of the grounds of opposition in the Act, which in turn is very much dependent on the particular facts of each case. It further highlights that a mark- for-mark comparison must be done to assess similarity, such that a word mark or a device mark by itself should not be compared with a composite mark.

 

This article first appeared in INTA Bulletin. For further information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx.

 

 

 

 

The SEIKI trademark was recently granted registration in Singapore despite an opposition from the proprietors of the SEIKO mark. The Registrar dismissed the opposition despite finding that SEIKO is a well-known mark and that the two marks are similar. A closer examination of the Registrar’s reasoning, however, reveals that the decision is not as incongruous as it may seem at first glance.

The mark SEIKI (“century” or “regular” in Japanese) has been used by Choice Fortune Holdings since 2010. Choice sought to register the SEIKI mark for Class 9 with respect to televisions and disc drives.

On the other hand, the mark SEIKO (“success” or “precise workmanship” in Japanese) has been used by Seiko Kabushiki Kaisha since 1924. The said mark is registered in Singapore in Class 9 with respect to a variety of goods, including apparatus for recording, transmission or reproduction of sound or images magnetic data carriers, recording discs.

The opposition in this instance was based on the following grounds:

1. The similarity of the SEIKI mark to the earlier-in-time SEIKO mark registrations, as per Section 8(2)(b) of the Singapore Trademark Act, and
2. The unfair dilution of the earlier-in- time, well-known “SEIKO” mark(s), as per Section 8(4)(ii)(A) the Singapore Trademark Act.
Similarity to an earlier trademark

The Registrar considered the similarity of the marks and the similarity of the goods before considering the likelihood that confusion would occur. However, the Registrar’s decision was primarily influenced by extraneous factors.

The Registrar firstly concluded that the contending marks were ‘marginally’ similar when viewed in their totality for the following reasons: (i) the marks are only visually similar to a low degree despite a single differing letter; (ii) the marks are aurally similar to a low degree despite a single differing vowel; and (iii) the marks are not conceptually similar despite sharing similar origins (i.e. merely being ‘Japanese’ in origin was not enough as the feature would have different connotations for different users).

The Registrar further concluded that the goods covered by the contending marks overlap with each other.

Lastly, despite concluding that the marks and the goods were similar, the Registrar determined that there was no reasonable likelihood of confusion. This was because the average consumer could reasonably be expected to devote considerable attention to the selection and purchase of the goods with respect to which the said marks are used. The relatively high cost of said goods makes the probability of confusion rather unlikely.

Dilution of a well-known mark

In Singapore, proprietors of well-known marks have a right to prevent the dilution of their marks, even if there is no likelihood of confusion. However, as illustrated below, proprietors would be well-advised to resort to this ground only if they are capable of establishing that the SEIKI mark will call to mind the SEIKO mark.

In the present case, Seiko failed to establish that dilution would occur due to use of the SEIKI mark in relation to televisions and disc drives as (i) the marks were only marginally similar when observed in totality; (ii) there was little similarity between the Application goods and the goods for which the SEIKO mark was well-known in Singapore (i.e. timepieces); and (iii) it was therefore not ‘extremely likely’ that consumers would connect the SEIKI mark to the SEIKO mark.

In conclusion, a successful opposition does not simply rest on the similarity between the marks and the goods claimed. Rather, due consideration should be given to the various other factors which may have an impact on the likelihood of confusion requirement.

Additionally, it should be stressed that the dilution ground requires the opponent to prove similarity with respect to the goods for which the mark is well-known as opposed to the goods for which the mark is registered. Proprietors should thus be cautious not to commit to such proceedings merely upon the basis of their mark registrations and may wish to conduct thorough preliminary market surveys before opposing an application on the said ground.

 

This article first appeared in Asia IP. For further information please visit http://www.asiaiplaw.com.

 

 

 

 

 

 

“Mango” is commonly known as the juicy stone fruit belonging to the genus Mangifera. But to others, it means more. To Consolidated Artists BV, “Mango” is a trademark symbolic of quality bags, fashion and accessories. Recently, MANGO has been the subject of a dispute before the Office of the Director General (ODG) of the Intellectual Property Office of the Philippines (IPOPHL). In February 2014, the office dismissed an appeal and upheld the resolution of the Director of the Bureau of Legal Affairs (BLA) sustaining the opposition to Ariston Commercial, Inc.’s application to register the mark MANGO.

The conundrum started on November 11, 2002, when Ariston filed an application to register the mark MANGO under Class 14 specifically for watches. The trademark application was published in the IPOPHL Official Gazette on August 18, 2004. Consolidated Artists opposed the registration of MANGO by Ariston alleging that it will be damaged by the registration. In its opposition, Consolidated Artists claims that it is the prior user of the mark MANGO for jewelry, and that it was issued Registration No. 4-1997-120403 on April 12, 2002, for goods under Class 25, which includes, among others clothing, hat, footwear, shoes, sandals and slippers. Ariston, on the other hand, maintained that it was the first to file the application for registration of the mark MANGO for watches under Class 14 and that it has prior commercial use of this mark for watches.

The Director of BLA initially denied the opposition. However, upon motion for reconsideration, the earlier decision was set aside and the opposition was sustained. The BLA had ruled that Consolidated Artists had better rights over the mark MANGO as it had proven its ownership and prior use of the mark.

Aggrieved, Ariston filed an appeal. The ODG dismissed the appeal finding that at the time Ariston filed its application to register MANGO for watches under Class 14, Consolidated Artists was already granted registration for this mark under Class 25. The fact that Ariston sought to register the mark for different goods (watches) was not sufficient to convince the Director of the ODG that the allowance of Ariston’s trademark application for MANGO would be unlikely to cause confusion. While Ariston’s goods are different from the goods covered by Consolidated Artists’ certificate of registration, the former’s products may be assumed to originate from the latter.

This decision is consistent with the concept of “confusion of business,” reiterated in a long line of cases decided by the Supreme Court. Although the goods of the parties are different, the defendant’s product is such as might reasonably be assumed to originate from the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist. Therefore, such registration may likely cause damage to Consolidated Artists who has no control on the quality of Ariston’s products. (Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaf (G.R. No. L-19906), for example.)

While MANGO may be an ordinary term, once registered as a trademark, it becomes protected by the IP Code. Thus, not even parallel registration or intra-parallel registration (registration of same marks applied on the same goods) would be allowed to unfavorably ride on the popularity and goodwill that the mark has earned.

The ODG made a definitive ruling that the mark MANGO as used by Consolidated Artists is an arbitrary mark and it is, thus, surprising and is unlikely a coincidence that Ariston could come up with an identical mark. As in all other cases of colorable imitations, the unanswered riddle is why, of the millions of terms and combinations of letters and designs available, Ariston had to come up with a mark so closely similar to another’s mark if there was no intent to take advantage of the goodwill generated by the other mark. At the time of this writing, no appeal is known to have been filed for this case.

While the mark MANGO was not declared an internationally well-known mark, the ODG sought to prevent parallel and intra-parallel registration by sustaining the opposition filed by Consolidated Artists. This ruling is significant because it clarifies that prior filing and use of an arbitrary mark in the Philippines does not immediately guarantee registration especially so if the mark has been appropriated and registered by another entity. While the IP Code allows the co-existence of similar marks (parallel registration) covering different classes of goods and services, the rule is not absolute considering that allowing registration of the junior mark greatly depends on a number of factors including the goodwill earned by the mark itself.

 

 

 

 

 

 

 

 

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