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 proprietor. A trademark is “well-known” if the average consumer, rather than the average Singaporean, in the relevant market would recognise it.
In a decision, dated October 26, 2022, an adjudicator from the Intellectual Property Office of Singapore determined that Tata Sons failed to oppose skincare company Tata’s registration of an application trademark on the grounds that Tata Sons’ earlier trademarks were “well known in Singapore.” Tata’s trademark proceeded to registration.
The adjudicator based his decision on a combined analysis of similarity and passing off.
What Makes a Trademark “Well-Known”?
The adjudicator highlighted that a trademark would be “well-known in Singapore”:
- If a majority of Singaporean consumers would recognize it; or
- If an average consumer in a relevant commercial sector, using goods with the opponent’s trademark, would recognize it.
Tata Sons failed to establish its trademarks’ well-known status under approach (1) but succeeded under approach (2) because its parent group was an “established market player” in various Singapore industry sectors, whose “average consumer” would very likely recognize its trademarks.
How Should Similarity Between Trademarks Be Determined?
The adjudicator further distinguished between the recognizability of a “well-known” trademark and its acquired technical distinctiveness—its capacity to distinguish a trader’s goods or services. The trademarks similarity test for distinctiveness requires objectively comparing both the trademarks’ similarities and their mental impressions on the average consumer. This “average consumer” should be imputed with the common general knowledge of both someone in the relevant market, and the average Singaporean.
Considering the above, the adjudicator held that Tata Sons’ fields of commerce were so specialized that the average consumer in those fields cannot be imputed with the same knowledge as someone buying the applicant Tata’s goods. The former trademark acquired distinctiveness in a different field of commerce from that where the latter was being applied.
Acquired technical distinctiveness is thus irrelevant in determining how well-known a trademark is unless:
- The opponent’s trademark has acquired technical distinctiveness in the same relevant market as the application mark; or
- The opponent’s trademark is so widely recognized as to be “well-known to the public at large” outside the relevant market.
This article was first published by the International Trademark Association on inta.org.