Damiani International BV v Dhamani Jewels DMCC [2020] SGIPOS 11: a trademark opposition case

damiani international BV trademark opposition case IPHub Asia

The company, Dhamani Jewels DMCC (“the Applicant”), filed an application for the mark dhamani iphub asia (“the Application Mark”) in classes 14 and 35 in Singapore on 4th October 2017. The subject mark was opposed by Damiani International BV (“the Opponent”) on the basis of their prior trademark dhamani 1 iphub asia , registered in class 14.

The Opponent relied on three grounds as detailed below:

Confusing similarity

Under local regulations, when assessing 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?

Based on the fact that the marks contained the same number of letters, the same first letter “D” and the same last three letters “ANI”, and considering that “1969” is not a dominant element, the Registrar found that the marks, taken as a whole, were “more similar than dissimilar”, visually and aurally. However, the IP Adjudicator assessed that the marks were “more dissimilar than similar”, conceptually speaking, as the stylisation in the opposed mark and the cursive font in the Opponent’s marks give the marks a modern and traditional look respectively. Nevertheless, overall, the Registrar found that the marks were more “similar than dissimilar”.

The IP Adjudicator further concluded that the goods claimed by the Opponent in class 14 were similar to the goods and service claimed by the Applicant in classes 14 and 35, as the services claimed in class 35 are inseparable from the goods claimed in class 14.

Finally, in view of the degree of similarity between the marks, the Registrar found that there is likelihood of confusion between the marks on the part of the public (i.e. the average consumer of the type of goods and services in question).

Based on the above, the Opponent succeeded on this first ground. 

It is interesting to note that the Registrar confirmed that as the Act does not have an explicit provision that allows partial opposition both within the same class and in multi-class applications, the Hearing Officer has no power to grant such partial oppositions.

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 DAMIANI word mark, the Opponent failed to submit evidence showing use of their mark dhamani 1 iphub asia. And, as the IP adjudicator found that the stylisation of the mark substantially altered its identity when compared with the DAMIANI word mark – a variation that the brand most commonly uses, the Opponent failed to establish the well-known status of that mark in Singapore. As such, there is no need to consider the likelihood of damage as per Section 8(4)(b)(i) of the Trademark Act. 

Passing off

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 was of the opinion that the first element of passing off (i.e. goodwill in the Opponent’s business) had been established. In addition, the IP Adjudicator found that both misrepresentation leading to deception or confusion amongst the public (i.e. element (b) above), and damage (i.e. element (c) above) had been determined. As such, this ground of opposition succeeded as well.

Accordingly, the registration of the subject mark in the name of Dhamani Jewels DMCC was refused.

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 extensive use of their mark as their evidence of use, as relating to the word mark DAMIANI. 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 help in building a strong trademark portfolio, or wish to learn more about trademark law cases, and require a full assessment about a possible opposition, please get in touch. You can also visit our website to learn more about our services.

As Founder and Managing Director of IPHub Asia, Dorothée is passionate about trademarks and the importance they hold in any business – small or large, in the Asian ecosystem. She has been living in Asia since 2003 and is up-to-date with the legislative changes of each country with regard to trademarks and other IP rights. She also enjoys visiting the South-East Asian region and is eager to discover new ways of doing business, embrace other cultures and meet new and disruptive entrepreneurs.

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