The Applicant, Hijos de Rivera, S.A. and the Opponent, Sociedad Anonima Damm are beer producers based in Spain. Both parties co-exist in Spain, Europe and UK, but as they grew beyond those territories they began to get embroiled in disputes.
The Opponent registered its word mark “ESTRELLA DAMM” (“Registered Mark”) in Singapore in 2011, beginning its sale of beer soon after. Subsequently, the Applicant also commenced business in Singapore, but only applied to register its Composite Mark some time later, on 24 April 2019, under International Registration No. 1166479 (Singapore Trademark No. 40201910153U) in Class 32 for beer (“Application Mark”). Sociedad opposed this, relying on sections 8(2)(b), 8(4)(b)(i) and 8(7)(a) of the Trade Marks Act 1998 (the “Act”).
On the first ground of confusingly similar mark, the IP Adjudicator assessed both marks and found them to be visually, aurally and conceptually dissimilar. He rejected the Opponent’s argument that the dominant and distinctive feature of the marks was “ESTRELLA” and opined instead that the average consumer in Singapore would view both marks in their entirety as opposed to focusing only on the common first element “ESTRELLA”. Since both marks are found to be dissimilar, there was no need to look into the likelihood of confusion and the opposition failed on this ground.
On the Opponent’s argument that the Application Mark should not be allowed to proceed to registration as it was similar to its Registered Mark which was well-known, the IP Adjudicator was not persuaded by the evidence adduced by the Opponent to prove that its Registered Mark was well-known. On the contrary, due to the lack of specificity and substantiation, he was led to conclude that advertising efforts and sales of the Opponent’s products in Singapore were insignificant and insufficient to establish that its Registered Mark was well-known. The opposition on this ground accordingly failed.
Finally, in relation to passing off, while it was undisputed that the Opponent had acquired goodwill in its business in Singapore, since the IP Adjudicator had concluded earlier that the marks were dissimilar, taking into consideration all the arguments put forth by the parties, he concluded that there was no likelihood of confusion.
More importantly, seeing as parties had co-existed in Singapore for at least seven (7) years before the commencement of the opposition proceedings, and the fact that the Opponent had not produced a single instance of confusion from consumers or traders, the IP Adjudicator concluded that there was an absence of actual confusion and consequently, there is unlikely to be any confusion in the future if the Application Mark was allowed to be registered. For this reason, he failed the opposition on this ground and allowed the Application Mark to proceed to registration.
This article was first published in the IP Analysts column of Asia IP.