Genpulse Pte Ltd (applicant), a Singapore company that sells AI-driven dermatological and trichological (hair-related) solutions, applied to register a composite mark in Class 44, bearing application number 40202401479U on January 22, 2024. See the mark below:

Cosmetic Warriors Limited (opponent), part of the LUSH Group, a global skincare and cosmetics business, and the proprietor of the LUSH trademarks registered in Singapore, opposed the application on the grounds of similarity with an earlier registered trademark, similarity with a well-known mark, and passing off.

The Registrar found the applicant’s mark to be visually, aurally, and conceptually dissimilar to the LUSH trademarks. Some of the Registrar’s reasoning is detailed below:

• Visual: The composite mark was dominated by the stylized “L” device and a longer seven-letter word.
• Aural: The strong -HAIR or -AIR ending balanced the LUSH sound, creating a dissimilar sound.
• Conceptual: While LUSH evokes notions of attractiveness, luxury, and vigorous, healthy growth, LUSHAIR evokes the specific idea of “hair that is full, healthy and luxuriant.”

There was similarity in the goods/services insofar as beauty and dermatological services in Class 44 are concerned.

On the likelihood of confusion, the Registrar distinguished between two factors: (1) impermissible extraneous factors, which should be excluded from consideration in assessing the likelihood of confusion, such as marketing choices by a trader, including the opponent’s reliance on mobile applications, AI technology, and brand collaborations, and (2) permissible factors, which are inherent to the goods or services, such as the nature, price, and degree of care or fastidiousness exercised by consumers.

The Registrar observed that in relation to beauty and skin care services, consumers are typically “highly mindful” and exercise a significant degree of care, thereby reducing the likelihood of confusion.

Furthermore, the opponent offered insufficient evidence to support its claim of confusion.

As the opposition did not meet the similarity threshold, it failed on both grounds of similarity with an earlier trademark and a well-known mark. The opposition also failed on the ground of passing off, as there was no evidence of misrepresentation or goodwill, in addition to the lack of similarity. Accordingly, the Registrar allowed the mark to proceed to registration.

This case highlights the importance of inherent distinctiveness, marketing choices, and inherent and impermissible factors that trademark owners should consider when opposing or defending their trademark rights.

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