The company, Keep Waddling International Pte. Ltd. (“the Applicant”) filed an application for the mark in Singapore on 28th March 2017 in class 33 for “sparkling wines, all originating from Chile”. The subject mark was opposed by Comité Interprofessionnel du Vin de Champagne and Institut National de l’Origine et de la Qualité (collectively “the Opponents”) on four grounds examined below:
1. The mark is deceptive
As per Section 7(4) TMA, a trademark shall not be registered if it is:
(a) contrary to public policy or to morality; or
(b) of such a nature as to deceive the public (for instance, as to the nature, quality or geographical origin of the goods or service)
This provision is designed for the protection of the public – not the general public, but the public in the context of the relevant trade. Hence, considered as “the Public” in the present case, are consumers who drink and purchase not only champagne, but also wines and sparkling wines in general.
The IP Adjudicator assessed that those consumers would recognise a product bearing the geographical indication “Champagne”. As such, it is unlikely that they would be deceived into believing that the products of the Applicant bearing the mark CHAMPENGWINE originate from the region of Champagne. One of the reasons is that the word “Champagne” is always a standalone word; it is never combined, as in the present case.
Based on the above, the grounds of opposition as per Section 7(4) TMA failed.
2. Use of the mark violates the Geographical Indications Act
As per Section 7(5) TMA, a trademark shall not be registered if or to the extent that its use is prohibited in Singapore by any written law or rule of law, more specifically by Sections 3(2)(a), 3(4) and 4 of the GIA as relied on by the Applicant.
To succeed under the above mentioned sections, the Opponents would need to establish both the fact that the Application Mark “contains or consists” of the geographical indication “Champagne”, and the fact that the use of the Application Mark would mislead the public as to the geographical origin of the Applicant’s wines.
The IP Adjudicator came to the conclusion that the public would not be misled into thinking that the Applicant’s wines originate from Champagne. In addition, the Registrar found that CHAMPENG is not identical to CHAMPAGNE. In other words, the application mark does not contain, nor consist of the “Champagne” geographical indication.
Based on the above, this ground of opposition failed.
3. Use of the mark constitutes passing off
The Opponent also 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) has been established. However, the IP Adjudicator found that misrepresentation leading to deception or confusion amongst the public (i.e. element (b) above) and actual damage or likelihood of damage had not been determined. As such, this ground of opposition failed as well.
4. The mark has been applied in bad faith
As per Section 7(6) TMA, a trademark shall not be registered if or to the extent that the application is made in bad faith.
It is to be noted that once bad faith is established, the application shall be refused even if there is no confusion between the marks. In addition, bad faith is a wide concept. It does not necessarily involve dishonesty but relates to actions that would be considered as non-acceptable, commercially speaking, by reasonable people in the industry, even if there has been no breach of law or contract.
Based on the evidence submitted, the Registrar found that the mark has been filed in bad faith for several reasons, among which is the fact that the Applicant knew about Champagne and had chosen the prefix of the mark CHAM as a reference to Champagne. Not to mention, an interview given by Mr. Milliken, the Applicant’s CEO, confirming that point.
The Opponent failed on the first three grounds but succeeded on the ground of bad faith. Accordingly, the registration of the subject mark in the name of Keep Waddling International Pte. Ltd. shall be refused.
You can explore the details of this case, as published on the IPOS website, here.
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