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SINGAPORE: IP Office Emphasizes Understanding of Average Consumer in Assessing Similarity

In Monster Energy Company v. NBA Properties, Inc. [Sept. 5, 2018] SGIPOS 16, Monster (the opponent) unsuccessfully opposed registration of NBA’s (the applicant’s) composite mark comprising a circular device bearing the words TORONTO RAPTORS at the Intellectual Property Office of Singapore (IPOS).

The opponent relied on its claw device  and composite device against NBA’s application.

Monster Device vs Toronto Raptors Device

The opponent sought to establish that the applicant’s mark was confusingly similar to its registered trademarks such that it would result in consumer confusion; that the applicant’s mark was confusingly similar to its “well-known” trademarks; and that use of the applicant’s mark would be liable to be prevented by the tort of passing-off. Success on any of the above grounds required the establishment of similarity between at least one of the opponent’s earlier registered marks and the applicant’s mark.

To determine similarity, the primary consideration was to identify the dominant element of each mark. Once established, the marks could then be compared in their entirety to determine whether there was visual, aural, or conceptual similarity. For both the opponent’s marks, the IPOS decided that the claw device represented the dominant element. On the other hand, the IPOS concluded that there was equal dominance between the textual element and the graphical element of the applicant’s composite mark. With this in mind, the IP adjudicator compared the respective marks and concluded that there was no similarity between the applicant’s mark and the opponent’s marks. Accordingly, none of the grounds of opposition was sustained.

Interestingly, the IP adjudicator also addressed how an average consumer would understand or recognize a mark based on common general knowledge. The adjudicator took the view that relevant surrounding circumstances should be taken into consideration; namely, that the extent of knowledge of the average consumer and how this may influence his or her understanding or interpretation of certain elements of a composite mark ought to be relevant in assessing mark similarity. Following this, the adjudicator considered, inter alia, that the average Singaporean consumer is likely to recognize the words TORONTO RAPTORS to reference a professional sports team and that this may affect the assessment of visual, aural, and conceptual similarity. Accordingly, parties should be allowed to adduce evidence relevant toward establishing the general knowledge to be expected of the average consumer.

By Denise Mirandah

This article first appeared in the INTA Bulletin Vol 73, No. 19. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx