The Intellectual Property Office of Singapore issued its decision on February 27, 2019, rejecting Guess? Inc.’s (opponent) opposition to a triangle device mark, holding that it is more dissimilar than similar to the opponent’s earlier marks and that it would not cause confusion. Guess? Inc. v. Jen, Chi, [2019] SGIPOS 3.
The opponent’s brand was created by the Marciano Brothers in 1981 and is known around the globe for its clothes and accessories. The applicant sought to register the mark pictured below in Class 25 for clothes and accessories.
The opponent relied on Sections 8(2)(b), 8(4) and 8(7)(a) of the Trade Marks Act. Cap 332, 2005 Rev. Ed.
Section 8(2)(b)
Relying on the three-step approach as expounded in Staywell Hospitality Group Pte Ltd v. Starwood Hotels & Resorts Worldwide, Inc., [2014] 1 SLR 911, the Principal Assistant Registrar of Trade Marks, Sandy Widjaja (adjudicator) considered:
1. The similarity or identity of the marks (visual, aural, and conceptual analysis);
2. The similarity and identity of the goods or services; and
3. The likelihood of confusion
The opponent submitted that the inverted triangle (device) in its earlier registered marks in Class 25 (T8603580E and T8302664C) is a dominant and distinctive feature. The opponent also submitted that it had successfully registered mark no. T1301009H, which is essentially an inverted triangle.
Stepping into the shoes of an ordinary consumer, the adjudicator viewed the device merely as a decorative element or an inverted triangle. This is also because the device rarely, if at all, appears on its own and is usually accompanied by a “?” or the word “Guess” which is prominently displayed inside the device. As for T1301009H, it can be distinguished because it was accompanied by the gems pattern within the triangle.
The adjudicator opined that an average consumer has “a measure of good sense in making his or her purchases.” As such, the opponent did not succeed under Section 8(2)(b) due to the low level of similarity between the marks when taken as a whole.
Section 8(4)
Even though it was established that the opponent was a well-known mark under Section 8(4)(a) of the Act, the opponent was unable to prove similarity whereby “the whole or essential part of the trademark must be identical or similar to an earlier mark.” The adjudicator had already found that this element under Section 8(2)(b) was not satisfied by the opponent as previously explained.
Section 8 (7)(a)
The three elements to establish under this section concerning passing off are (1) goodwill; (2) misrepresentation; and (3) damage. While it was not in dispute that there is goodwill, the adjudicator took the view that because the contentious marks are dissimilar to begin with, it is unlikely that there would be misrepresentation. Because of the failure to prove misrepresentation, there was no need to look into the third element of damage.
Thus, the opposition failed in its entirety.
This article first appeared in the INTA Bulletin Vol 74, No. 6. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx