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Singapore: A Shining Example of Passing Off

The following decision issued on April 2, 2020, appears to go against Singapore’s first-to-file system and highlights the fact that prior rights (if any) in Singapore can be protected under the tort of passing off under the Trade Marks Act (TMA).

Golden Cala Trading EST (applicant), incorporated in Saudi Arabia, applied to register the LENSME trademark (application mark) under Trademark No. 40201715235Y in Class 9.

Mr. Florian Mack (opponent) owns the LENS.ME trademark (opponent’s mark) in the European Union, the United Arab Emirates (UAE), and the United Kingdom, which covers online retail store services relating to cosmetics and beauty products in Class 35. The opponent has no trademark application or registration in Singapore.

The opponent’s mark is licensed to Sky Optical LLC in the UAE, which distributes and sells contact lenses through its online store launched in mid-2015. The opponent applied to oppose the application mark on February 26, 2018.

Section 8(7)(a) of the TMA: Passing Off

To succeed on a ground of passing off, the three elements of goodwill, misrepresentation, and damage must be proven.

The Registrar found that goodwill of the opponent’s mark had been established, as it was featured primarily on the online store, and on the invoices issued for online purchases made from the store. The opponent was also able to prove advertising on and sales generated from the online store, including its first sale from Singapore in January 2016, with supporting documents.

The Registrar also found the element of misrepresentation to be established as (i) the competing marks were similar; (ii) the words “lens me” possessed an “ordinary” level of distinctiveness; (iii) the application mark had not been used in Singapore; and (iv) the respective fields of business between the parties either overlapped or were very close.

The Registrar found that the opponent would likely suffer damage through the loss of sales or loss of ability to extend its business to the manufacture and sale of contact lenses bearing the opponent’s mark and allowed the opposition on this ground.

Section 7(6) of the TMA: Bad Faith

The Registrar found that there was nothing commercially unacceptable about the application. There was no evidence suggesting that the applicant had any reason to suspect the opponent had any customers, goodwill, or any prior rights in Singapore. Thus, the opposition failed on this ground.

As the opponent succeeded in its opposition under Section 8(7)(a) of the TMA, the application mark was refused registration.

By: Gladys Mirandah

A version of this article first appeared in the INTA Law & Practice. For more information, please visit https://www.inta.org/.