In a decision dated April 9, 2019, Aalst Chocolate Pte Ltd (applicant) unsuccessfully challenged the validity of a trademark registration for a stylized version of the words “The Patissier” (the subject mark). Aalst Chocolate Pte Ltd v. The Patissier LLP [2019] SGIPOS 7.
The applicant is a Singaporean chocolate manufacturer and exporter. The Patissier LLP (proprietor) is a bakery founded in Singapore in 2000. The proprietor’s subject mark (as seen below) was registered in Singapore in 2005 under Classes 30 and 35 (T0518520H and T0518521F, respectively) predominantly for the sale of pastry, confectionary, and retail services of such bakery products.
The applicant sought declarations of invalidity and relied on Sections 7(1)(b), 7(1)(c), 7(2), and 23(2) of the Trade Marks Act in its application Cap. 332, 2005 Rev. Ed. (TMA).
Who Is an “Average Consumer”?
When a non-English word is involved, the first question to consider is whether the average consumer in Singapore would understand the meaning of the word, at the relevant date, in this case, 2005.
The applicant argued that the proprietor marketed itself mainly to high-end brands and individuals. The proprietor disagreed, stating that people from all walks of life commonly purchase cakes and confectionaries. The assistant registrar agreed with the proprietor, and concluded that, since the goods and services in Classes 30 and 35 are generic, their specifications should be considered—rather than the manner in which they are advertised or marketed. As such, the general public is to be seen as an “average consumer” in this case.
Section 7(1)(c): Descriptiveness
The applicant was unable to provide any evidence to indicate that an average consumer in Singapore would understand the term “patissier.” Evidence submitted by the proprietor showed that in media and print, whenever the word “patissier” is mentioned, it is in reference to the proprietor’s shop, and not as a common term known to the general public in Singapore.
The applicant also submitted that the subject mark describes the goods and services as the meaning of “patissier,” as someone who makes pastry or cakes. The proprietor submitted that there is no direct descriptiveness, because the correct term used to refer to a shop selling cakes is “patisserie,” whereas a “patissier” is someone who is qualified to be a pastry chef.
After considering all the evidence, the assistant registrar was of the view that this ground of invalidation had failed.
Section 7(1)(b): Distinctiveness
Under Section 7(1)(b) of the Trade Marks Act, a mark will not be registered if it has no distinctive character. This ground of invalidation failed in this case because the applicant provided no other arguments other than the descriptiveness arguments under that of Section 7(1)(c).
Conclusion
Based on the above findings, the assistant registrar did not see the need to discuss arguments under Sections 7(2) and 23(2), and the applications for declarations of invalidity failed on all grounds.
This article first appeared in the INTA Bulletin Vol 74, No. 10. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx