The company POINT tec Products Electronic GmbH (the “Applicant”) filed an application for the mark in Singapore on 30th May 2017, in class 14. The subject mark was opposed by Compagnie des Montres Longines, Francillon S.A (the “Opponent”) further to publication on 20th July 2018, but unsuccessfully.
The Opponent relied on two prior trademark applications which are set out below, together with the Applicant’s trademark:
Confusing similarity with an earlier trademark
The Opponent opposed the application on three grounds, the first one being the likelihood of confusion between the subject mark and the Opponent’s prior marks.
The focus of the comparison exercise has exclusively been on the most recent mark of the Opponent (T1315264Z) as shown in the table, as the evidence submitted by the Opponent refers to that mark only and the Opponent did not rely on their earlier mark number T7669349D on its own during the proceedings.
Under local regulations, when assessing the likelihood of confusion, the following elements are taken into consideration sequentially:
(a) Are the respective marks visually, aurally and conceptually similar?
(b) Are the goods and/or services of interest similar?
(c) In case steps (a) and (b) are fulfilled, does there exist a likelihood of confusion on the part of the relevant public?
The Registrar found that there is a low degree of visual similarity between the marks even when considering the possibility of imperfect recollection, taking into account the fact that the device in the subject mark is of equal size to the words in the application mark. The IP Adjudicator assessed further that no aural comparison can be made between the marks as the Opponent’s mark does not contain any aural component, and that the marks were conceptually more dissimilar than similar.
Despite the fact that the Opponent failed to establish the similarity between the marks (element (a) as stated above), the Registrar still proceeded with the two other elements and confirmed that some of the goods, i.e. “chronometric instruments” and “watches”, collide. However, the IP Adjudicator came to the conclusion that there exists no likelihood of confusion on the part of the relevant public (element (c)). Indeed, when buying watches, consumers would focus on the visual aspect of the mark before asking the assistant for help in taking a closer look at the watch. And as concluded above, there are no visual similarities between the marks.
Confusing similarity with an earlier well-known trademark
Section 8(4)(a)(b)(i) of the Act reads: Subject to subsection (5), where an application for registration of a trade mark is made on or after 1st July 2004, if the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark, the later trade mark shall not be registered if —
(a) the earlier trademark is well known in Singapore; and
(b) use of the later trademark in relation to the goods or services for which the later trademark is sought to be registered —
(i) would indicate a connection between those goods or services and the proprietor of the earlier trademark, and is likely to damage the interests of the proprietor of the earlier trademark.
Despite the submission of extensive evidence to show the well-known status of their mark, the Opponent failed to submit evidence showing use of their earlier mark on its own. Indeed, the evidence submitted shows use of the composite mark and cannot, therefore, be taken into consideration to show use of the mark . As such, the Opponent failed to establish the well-known status of that mark in Singapore. The Registrar also concluded that the Opponent failed to establish the likelihood of confusion and the likelihood of damage as per Section 8(4)(b)(i) of the Trademark Act.
The Opponent finally opposed the application on the ground that the use of the applicant’s mark in Singapore constituted passing off.
To succeed on this ground of opposition, the Opponent needs to establish the following elements:
(a) Goodwill in the Opponent’s business as a whole and not specifically in relation to the marks of interest
(b) Misrepresentation that has led to or is likely to lead to deception or confusion amongst the public and
(c) Actual damage or a genuine likelihood of damage to the Opponent’s goodwill.
The Registrar is of the opinion that the first element of passing off (i.e. goodwill in the Opponent’s business) has been established. However, the IP Adjudicator found that misrepresentation leading to deception or confusion amongst the public (i.e. element (b) above) had not been demonstrated. As such, this ground of opposition failed as well.
Accordingly, the registration of the subject mark in the name POINT tec Products Electronic GmbH was allowed.
You can explore the details of this case, as published on the IPOS website, here.
What can be learned from this decision?
In the present case, the opponent failed to establish the use of their mark and the well-known status of their device trademark as their evidence of use relates to the composite mark . Using the trademark as protected, and keeping proper records of the use are critical to be able to defend your rights in proceedings such as oppositions or revocation actions (cancellation based on non-use).
At IPHub Asia, we help businesses register their trademarks. If you need assistance in building a strong trademark portfolio, or wish to learn more about trademark opposition cases, and require a full assessment about a possible opposition, please do get in touch.
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