The following decision concerns the use of model numbers as trademarks and the strength of such trademarks.
Nippon Paint (Singapore) Co. Pte. Ltd (the applicant) applied to register NW1 under trademark No. 40201909725V in International Class 1. Warrior Pte Ltd (the opponent) opposed the application on September 12, 2019, relying on its earlier registered marks, W-1 with rectangular device (Opponent Mark 1) and W-1 CEMENT STRENGTHENER (Opponent Mark 2). Warrior Pte Ltd. v. Nippon Paint (Singapore) Co. Pte Ltd.
In his decision dated March 24, 2021, the Registrar addresses the opponent’s claims on the grounds of (i) confusing similarity under Section 8(2)(b) of the Trade Marks Act (TMA); and (ii) passing off under Section 8(7)(a) of the TMA.
Section 8(2)(b) of the Trade Marks Act (TMA)—Confusing Similarity
The Registrar applied the step-by-step test laid down in the seminal case of Staywell Hospitality Group v. Starwood Hotels & Resorts Worldwide,  1 SLR 911, (the Staywell test), and analyzed the visual, aural, and conceptual similarities of the marks. With respect to Opponent Mark 1, the Registrar concluded that the marks were more dissimilar than similar because of the dominant features of the mark, including, inter alia, (i) the large rectangle as well as the green color limitation; and because (ii) the applicant’s mark is pronounced as “N” “W” “one,” whereas the opponent’s is pronounced as “W” “one.”
Likewise, with respect to Opponent Mark 2, the Registrar found that the marks were more dissimilar than similar because (i) Opponent Mark 2 contained the descriptive term “cement strengthener”, whereas the applicant’s mark only contained alphanumeric element “NW1”; (ii) the words “cement strengthener” did not modify the aural impression of the mark; and (iii) the term “cement strengthener” clearly indicated that W1 is a cement strengthener, whereas the applicant’s mark held no meaning.
Overall, on the basis of the Staywell test, the Registrar found that the marks were more dissimilar than similar. As such, the opposition failed under Section 8(2)(b) of the TMA.
Section 8(7)(a) of the TMA—Passing Off
In terms of the opponent’s claims of passing off, the Registrar applied the classic trinity of goodwill, misrepresentation, and damage to determine if there was passing off on the facts. In particular, he considered a range of factors including, inter alia, the nature of the marks, the price of the goods, the frequency of purchase of the goods, the nature of the consumers, the way in which the goods are normally purchased, etc.
The Registrar concluded that the use of the applicant’s mark is not likely to result in retail consumers being deceived or confused into thinking that the applicant’s goods are linked to that of the opponent’s. As misrepresentation was not established, it followed that there was no substantial risk of damage. Accordingly, this ground also failed.
The opponent failed in its opposition. Applicants of marks that may also be seen as model numbers should be mindful of their effectiveness as marks because the protection offered to these marks may not be as strong as presumed.
This article was first published by the International Trademark Association on inta.org.