Starbucks: An interesting case to understand Singapore trademark law

IP Law case IPHub Asia

Regularly, IPHub selects one court ruling to help you understand Singapore Intellectual Property law. This week we’ve picked one opposition filed by the famous company Starbucks Corporation against the registration of a mark filed by Morinaga Nyugyo Kabushiki Kaisha.

Once a mark is published in the official gazette, any interested third party is entitled to file a notice of opposition against its registration within two months from the publication date (extendible once for two months).

In this case, Starbucks Corporation filed an opposition which failed on all grounds as detailed:

Starbucks Corporation v. Morinaga Nyugyo Kabushiki Kaisha [2017] SGIPOS 18

PartiesMorinaga Nyugyo Kabushiki Kaisha (Applicant)
A milk products
company in Japan
Starbucks Corporation (Opponent)
A coffee company
and coffeehouse chain
Trademarks
Classes29 and 30 including
milk products and milk beverages, coffee products
and coffee beverages.
Widely registered in several
classes including 29 and 30 for milk products, milk beverages,
coffee products and coffee beverages.

You can read more about trademark classes and the Nice Classification here.

We have detailed below, the list of grounds raised by the opponent and the IP Adjudicator’s decision for each concerned section:

Relative grounds
Sections raised by the opponentRegistrar’s decision
Section 8(2)(b): Similar to a prior mark registered for similar goods and/or services
“A trademark shall not be registered if because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected; there exists a likelihood of confusion on the part of the public.”
Examiners are following a step by step approach as follows:
- Firstly, similarity between the marks of interest (visual, aural and conceptual similarities)
- Secondly, similarity between the goods and/or services claimed
- Given the above, likelihood of confusion among the relevant segment of the public.
The first two elements are assessed individually while the third one is determined according to the other two. Oppositions are unsuccessful if the answer to any of the above steps is negative.
In this case, the Registrar considered that similarities of the colours and the shape/layout of the marks as raised by the opponent were not sufficient to validate the first step. The dominant word and the figurative elements of each mark sufficiently distinguish the parties' respective marks. The Registrar rejected the opposition on these two grounds despite the recognised interconnection of the goods.
Section 8(4): Similarity to a well-known trademark.
“…if the whole or an essential part of the trademark is identical with or similar to an earlier trademark, the later trademark 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 trade mark is sought to be registered 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 trade mark or if the earlier trade mark is well known to the public at large in Singapore would cause dilution in an unfair manner of the distinctive character of the earlier trade mark or would take unfair advantage of the distinctive character of the earlier trade mark”
Section 8(7)(a): Passing off (Misrepresentation entitled to encourage a person to believe that the goods or services are those of another, often resulting in financial or reputational damages).
“A trade mark shall not be registered if, or to the extent that, its use in Singapore is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade”.
The colour scheme and circle device (which are the sole resemblances between the marks) are not considered as the distinctive identifiers of the Starbucks products. The main features of the opponent’s marks lie in the overall representation of the mark including the dominant word part STARBUCKS and the mermaid device which are very different from the textual elements “Mt. Rainier” and the mountain device. The Registrar concluded that there is no misrepresentation here.
Absolute grounds
Sections raised by the opponent
IP Adjudicator’s decision
Section 7(4)(b): Deceptive marks.
“A trademark shall not be registered if it is of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service)”.
The opponent opposed the mark on the basis that it makes a reference to Seattle inducing that the goods originate from or have a connection with this place (which is well known for its coffee culture) while they are not. The sign could thus be misleading and deceptive.
The Registrar considered that the threshold for confusion must be high and the reference to this place could not be regarded by the average consumer as indication of origin in this case.
Section 7(6): Bad faith filing.
“A trade mark shall not be registered if or to the extent that the application is made in bad faith”.
Even if the applicant had knowledge of the opponent’s marks, business and products before filing, this was not considered sufficient to establish a bad-faith filing. The act for the applicant to use the Mount Rainier was not considered as an unlawful commercial practice either as it is common to be inspired by places, people or things.

There are many possible grounds for opposition in Singapore and each ground raised is subject to a distinct and detailed assessment conducted by the IP Adjudicator. The opposition procedure in Singapore is very unique in the sense that it includes many complex steps and opting for the best grounds is essential to a successful proceeding.

At IPHub Asia, we specialise in trademark and design protection in Asia, with a strong focus on Southeast Asia. If you wish to learn more about IP law cases or require a full assessment about a possible opposition, please get in touch.

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From her youth, Mathilde has developed a high sensibility for art and culture leading her to become the IP specialist she is today. Her aim is to offer clients a customized legal approach to protect, defend and valorise their creations internationally with a focus on Southeast Asia. She is guided by her natural curiosity and passion for people, which have led her to travel and live in multiple places across the globe. She believes that experiences provide lasting joy and is always keen on new adventures!

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