This decision from the High Court in Singapore, issued on November 23, 2022, illustrates the delicate balance a tribunal must undertake when assessing the similarity between two device marks. The High Court in Singapore set out the proper approach to understanding and applying the concepts of distinctiveness, and visual and conceptual similarity.

VV Technology appealed to the High Court after Twitter successfully opposed the registration of VV Technology’s trademark (application no. 40201818292X), preventing the application from being registered.

On appeal, this opposition was upheld. Twitter established that the application was similar to its device  (opponent’s mark), so the public would likely confuse the application with the opponent’s mark because both Twitter and VV Technology’s goods and services overlapped.

The court observed that several past decisions erred in treating the distinctiveness analysis as a separate step in the marks-similarity test. Though the opponent’s mark could well distinguish the opponent’s services from other traders’, it was not so inventively designed as to warrant a higher level of distinctiveness. The court thus held that distinctiveness—both technical and nontechnical—was a neutral factor.

The court noted that competing trademarks that contain animal devices should be systematically assessed according to a unique set of guidelines:

• General shape and composition of the animals depicted;
• The movement depicted; and
• The features of the animals.

The court held that the marks were visually similar. The general shape of the marks—a bird with a pointed beak and tail, with wings swept backwards and upwards behind its body—were similar. The average consumer would view the marks holistically and overlook minor visual discrepancies. They would simply perceive two birds in flight, without considering the exact curvature and angle of the lines in an animal device, much less the species of the birds.

The court held that no weight should be added or reduced regarding conceptual similarity in the marks-similarity analysis, and it upheld the decision that the correct level of analysis of the marks involves birds that are in flight, so the marks were conceptually similar.

The court held that the average consumer of both the applicant and the opponent was the general public, and the general public was unlikely to scrutinize the applicant’s and opponent’s marks, especially given how inexpensive their goods and services were. It was likely they would confuse both marks. It refused the appeal and the applicant’s registration failed.

This article was first published by the International Trademark Association on inta.org.