In Multi Access Limited v. Guangzhou Pharmaceutical Holdings Limited [2019] SGIPOS 15, Guangzhou Pharmaceutical Holdings Limited (the applicant), a state-owned enterprise in China, applied for the trademark WONGLO (the application mark) in Singapore on December 15, 2015, under International Registration No. 1297792 (Singapore TM No.40201608455Q) in Classes 5, 30, and 32.

The opposition ultimately failed on all grounds and the application mark was allowed to proceed to registration in a decision issued on November 1, 2019.

Facts of the Case

Multi Access Limited (the opponent), a producer and seller of Wang Lao Ji herbal tea, filed to oppose the application mark, relying on the following sections of the Trade Marks Act (TMA):

• 8(2)(b): That the application mark is so similar to its WANG LO KAT mark (the opponent’s mark) that the public is likely to be confused.
• 8(4)(a) read with 8(4)(b)(i): That its mark is well known in Singapore and that the application mark would indicate a connection to the opponent and is likely to damage the opponent’s interests.
• 8(7)(a): That the application mark should be prevented from registration under the tort of passing off.

Section 8(2)(b) of the TMA

The opponent argued that the application mark consisted entirely of the letters that made up the first two words, and that it corresponded exactly with the first two of three syllables of the opponent’s mark. The applicant counter-argued that the opponent’s mark consisted of three syllables and that it would be difficult to under-enunciate the third syllable “Kat” starting with a cacophonous “K” consonant sound and ending with a plosive “T” sound, and that this third syllable could not be considered insubstantial or minor. Therefore, the applicant argued, there was low tendency for the opponent’s mark to be slurred or confused with the application mark.

The Principal Assistant Registrar (PAR) found that the opponent’s mark had no dominant element or component, but as a whole, had some inherent distinctiveness by virtue of it being a personal Chinese full name. Having examined the evidence of use before her, the PAR concluded that it was insufficient to support the opponent’s contention that the earlier mark had acquired distinctiveness.

Overall, the PAR found the marks to be more dissimilar than similar, and dismissed the opposition on this ground.

Section 8(4)(a) Read with 8(4)(b)(i) of the TMA

Having found the opponent’s mark to be more dissimilar than similar to the application mark, coupled with the insufficiency of evidence of use supporting the opponent’s mark having acquired distinctiveness (and thereby, being a well-known mark), the opposition on this ground also failed.

Section 8(7)(a) of the TMA

The PAR found that, as in the case of Section 8(2)(b) of the TMA, where there was no likelihood of confusion because the marks were more dissimilar than similar, so too in the case of the action under passing off: the element of misrepresentation was not established and for that reason the opposition failed on this ground as well.

By: Denise Mirandah

A version of this article first appeared in the INTA Bulletin Vol. 74, No. 21. For more information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx