Minterest Private Limited (applicant) applied to register the trademark MINTEREST (application mark) in Class 36 in Singapore (Singapore Trade Mark No. 40201707514X). The application mark was accepted for publication and was opposed by Intuit Inc. (opponent).
The opponent relied on Sections 8(2)(b) and 8(7)(a) of the Trade Marks Act (TMA) in its opposition against the application mark, based on its trademark MINT registered in Singapore in 2014 (Singapore Trade Mark No. 40201401135Y) and 2016 (Singapore Trade Mark No. 40201621394X) (collectively, “opponent’s mark”).
The opposition was heard by the Principal Assistant Registrar of Trade Marks (PAR) on August 29, 2019, and decided on November 1, 2019.
Section 8(2)(b) of the TMA
In assessing the similarities between the contending marks, the PAR held that the opponent’s mark was not directly descriptive of the opponent’s services. As such, it possessed a medium degree of distinctiveness—no higher or lower than the norm. Consequently, it did not enjoy a high threshold before a competing sign would be considered dissimilar to it.
While assessing the dominant component of the application mark, the PAR held that there were no components that dominated its overall visual impression. She held that the “MINT” and “EREST” components formed a single, invented, co-joined word and the former did not dominate over the latter.
Since the application mark contained nine letters and an additional “EREST” component, as opposed to the four letters and the sole word “MINT” in the opponent’s mark, the marks, when observed as a whole, were more visually dissimilar than similar.
In the assessment of the aural similarities between the marks, the PAR reiterated that “MINT” was not the dominant and distinctive component of the application mark. Rather, it was a single word and would not be dissected. In addition, the PAR noted that the difference between “MINTEREST” and “MINT” was obvious and not hard to hear. She concluded that the marks were aurally more dissimilar than similar.
While assessing conceptual similarities between the contending marks, the PAR stated that the application mark was a single word mark with no component more dominant than the other and accordingly held that the marks were conceptually dissimilar.
Section 8(7)(a) of the TMA
The PAR held that since she had found that the application mark was more dissimilar than similar to the opponent’s mark, it could not be said that the applicant was misrepresenting, nor that it was sufficiently likely that the public would be so deceived. Since the PAR did not find any misrepresentation, she did not deal with the goodwill or damages requirements.
In view of the above findings, the opposition failed on all grounds and the application mark was allowed to proceed for registration.
By: Denise Mirandah
A version of this article first appeared in the INTA Bulletin Vol. 75, No. 1. For more information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx