This decision serves as a reminder that when opposing a trademark on bad faith, opponents and their lawyers should remain disciplined in crafting pleadings and submissions. Swatch opposed the registration of the word mark “THINK DIFFERENT” (application mark), which Apple applied for on September 12, 2018, in Class 9, alleging that Apple applied for the […]
Publications
SINGAPORE: No Use Crying Over Spilled Milk
This decision recaps and applies the case law surrounding the marks-similarity enquiry. A2 filed a consolidated opposition against Nestlé’s trademarks (Trademark Application No. 40201926155W) and (Trademark Application No. 40201907176S) (collectively, the Application Marks), relying on A2’s own registered trademarks for . A2 unsuccessfully argued that a likelihood of confusion would arise between A2’s trademarks and the Application Marks, […]
Singapore Patent – Obviousness of Error
A recent decision of the High Court of Singapore has set a precedent for correcting data included in a specification of an application for a patent. In an appeal case between Nippon Shinyaku Co, Ltd and the Registrar of Patents, the High Court has reversed the decision of the Registrar rejecting a proposed correction to […]
SINGAPORE: TATA SONS Loses Trademark Challenge for Lack of Confusion
When the proprietor of an earlier trademark has established goodwill in a different industry from a competing trademark, it is less likely that confusion can be established under the Trade Marks Act, that is, that using a newer trademark would indicate a connection between the applicant’s goods and services and those of the earlier mark’s […]
SINGAPORE: Registrar Is Unconvinced by Similarity and Bad-Faith Allegations
This decision shows that a high threshold of proof is required to be successful in trademark similarity and bad-faith allegations. Despite two competing marks sharing the same word, stylistic and emphatic differences can render them dissimilar. Even in those circumstances, sufficient distinction between those marks remains commercially acceptable and can rebut an allegation of bad […]
SINGAPORE: Infringement Claim Rejected and Mark Expunged Due to Unacceptable Behavior
In a recent case, the relationship between the two parties was crucial to ascertaining that an application was made in bad faith and claimant’s conduct “did not meet the acceptable commercial behavior observed by reasonable and experienced men.” In its decision issued on September 16, 2022, the court dismissed the claimant’s infringement claim in its […]
Singapore: Corporate names, domain names and social media handles serve as evidence towards trademark use
The applicant, Floor Xpert Pte Ltd sought to register (the subject mark) under, amongst others, Class 37 for certain services in relation to flooring and maintenance. The applicant claimed that the subject mark had acquired distinctiveness from usage. The trademark examiners were not persuaded by the evidence submitted to this end. In particular, the evidence of acquired […]
What Constitutes Loss or Damage under the Singapore PDPA
In this landmark judgment, the Court of Appeal (“SGCA”) clarified the scope of the right of private action under the Personal Data Protection Act 2012 (“PDPA”). A private action is available to a victim who suffers emotional damage due to his or her personal data being misused. The SGCA overturned the decision below and held […]
Singapore: Importance of the use of a registered mark in a revocation action
In Singapore, a registered trademark may be susceptible to cancellation if it has not been used within five years from completion of registration, or if such use has been suspended for a continuous period of five years or more. The following case is a reminder. Comfort Lab Inc., also known as Kabushiki Kaisha Comfort Lab […]
SINGAPORE: Examiner Rejects “PARTY LIKE GATSBY” Mark for Lack of Distinctiveness
Slogans are useful tools in brand advertisements. However, as they often consist of ordinary words and phrases which are laudatory in nature, slogans generally do not meet the distinctiveness requirement for purposes of trademark registration in the absence of evidence of use. The following recent case reminds us of this. Arangur UG (haftungsbeschrankt) (applicant) applied […]