In a decision of February 9, 2022, Daimler AG (opponent) failed in its opposition action against Vivo Mobile Communication Co., Ltd (applicant) on grounds of similarity and passing off. The opponent lost principally due to a lack of evidence of use of its mark as registered and, thereby, lack of goodwill in its mark. This reminds trademark owners yet again that they should consider how they intend to use a mark before registering it.
The applicant sought to register VIVO (Application no. 40201722025Y-02) in Class 12 (Application Mark) in Singapore. The opponent filed an opposition, relying on its earlier registered trademark VITO (Registration no. T0112764E) in Class 12, citing grounds of similarity and passing off. The Trademarks Registrar in the Intellectual Property Office of Singapore accepted the opponent’s argument that its earlier mark is distinctive, to the extent that it does not refer directly to its goods, but disagreed that it had acquired distinctiveness as a result of use, as the opponent’s evidence suggested that it seldom, if ever, used the mark on its own.
With respect to the visual, aural, and conceptual similarities, the Registrar found that (i) the third letter would be amplified given the short length of both marks; (ii) aural similarity was low as the “t” in VITO would be harsher in contrast to the softer first syllable (“vi”), and thus the emphasis would be on the second half of the marks; and (iii) it was unlikely for an average consumer to be aware of the meaning of the two marks in Latin, hence construing both marks as “meaningless.” On an assessment of the impact of marks-similarity and goods-similarity, she found there to be no likelihood of confusion and failed the opposition on this ground.
As for passing off, the Registrar found that there was goodwill in the opponent’s business and emphasized that the element of goodwill is to be established with respect to the opponent’s business as a whole, but not with respect to the opponent’s earlier mark. She did not find any misrepresentation, as the evidence reflected the use of the opponent’s earlier mark together with MERCEDES-BENZ and other device marks.
Since the opposition failed on both grounds, the applied-for mark was allowed to proceed to registration.
This article was first published by the International Trademark Association on inta.org.