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SINGAPORE: Decision Finds Jewelry Mark Containing ‘Love’ Is Distinctive

In a decision handed down on December 20, 2018, in MoneyMax Jewellery Pte. Ltd v. Cartier International AG, [2018] SGIPOS 22, the opponent, Cartier International AG, unsuccessfully opposed the registration of a mark by the applicant, MoneyMax Jewellery.

The opponent initiated trademark opposition proceedings at the Intellectual Property Office of Singapore (IPOS) on July 28, 2017, to prevent the applicant’s registration of a mark containing the word “love”.

The opponent relied upon its Leve trademark (Reg. no. T0808997H) against the applicant’s trademark application for love gold. App. no. 40201701277U. It based its opposition on Sections 8(2)(b), 8(4)(b)(i), and 8(7)(a) of the Trade Marks Act (TMA) (Cap. 332, Rev. Ed. 2005), namely that the applicant’s mark: (1) is confusingly similar to an earlier trademark which would create public confusion; (2) is confusingly similar to its “well-known” trademarks; and (3) would be liable to be prevented by the tort of passing off.

The opponent also sought to establish that the applicant’s mark was not distinctive and was descriptive of the goods covered and should therefore be disallowed under Sections 7(1) b) and 7(1)(c) of the TMA.

In relation to the objections under Sections 8(2)(b) and 8(4)(b)(i) of the TMA, the intellectual property adjudicator found that the word “love” per se was not distinctive in relation to jewelry. Accordingly, any distinctiveness in the opponent’s Leve  mark lay in the screw hand device and perhaps in the use of a lowercase letter “e”.

As neither of these elements were found in the applicant’s mark, it had to follow that the applicant’s mark was not similar to the opponent’s mark within the meaning of Sections 8(2)(b) and 8(4)(b)(i). Accordingly, the opposition failed under these sections.

The adjudicator also found that an essential requirement to be established under the tort of passing off was misrepresentation. To establish misrepresentation it was necessary to show that the marks were similar in the first place. Given the finding that the marks were dissimilar, it followed that the objection under Section 8(7) must fail.

In relation to the objections under Section 7 of the TMA, the adjudicator rejected the opponent’s arguments to ignore the Chinese characters in the applicant’s mark, and held that in assessing the distinctiveness of a mark, the mark should be considered as a whole and not broken up into its component parts. He went on to add that given the Chinese characters in the applicant’s mark bore no meaning and formed a significant portion (at least a third) of the mark as a whole, the combination of the Chinese characters with the other elements of the mark rendered the applicant’s mark as a whole distinctive. Accordingly, the opposition also failed under Section 7 of the TMA.

By Denise Mirandah

This article first appeared in the INTA Bulletin Vol 74, No. 5. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx