A trademark opposition case: CHARLOTTE PIPE AND FOUNDRY COMPANY v YITAI (SHANGHAI) PLASTIC CO., LTD. [2020]

trademark opposition case charlotte pipe and foundry company iphub asia

On 7th October 2015, the company YITAI (SHANGHAI) PLASTIC CO., LTD. (“the Applicant”) filed an International Registration no. 1292448 for the mark   designating Singapore, in classes 17, 19, and 20. The subject mark was opposed by Charlotte Pipe and Foundry Company (“the Opponent”) further to publication on 6th October 2017.

The Opponent opposed the application on three grounds:

1. Confusing similarity with an earlier trademark

The first of the three grounds for opposition was the likelihood of confusion between the subject mark and the Opponent’s prior registered mark.

The Opponent relied on one prior registered mark which is set out below, together with the Applicant’s trademark:

MARKS
YITAI (SHANGHAI) PLASTIC CO., LTD.40201605065Y
CHARLOTTE PIPE AND FOUNDRY COMPANY40201604945Q

When defining the phrase “earlier trademark”, the Registrar confirmed that the date of priority for the opposed mark is the date of application of the international Singapore designated application (i.e. 7th October 2015). It was neither the date IPOS has been notified of the international registration nor the date of acceptance of the mark for publication. On that basis, the Opponent’s trademark, filed on 9 February 2016 in Singapore, is not an “earlier trademark” under local regulations. 

The Registrar concluded that this ground of opposition failed.

2. 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

(ii) is likely to damage the interests of the proprietor of the earlier trademark.

The Opponent claimed to be the owner at common law of the following marks in classes 6 and 17, which are not registered in Singapore:

1.     CHARLOTTE PIPE

2.     CHARLOTTE

3.      

Despite submitting evidence to show use of their unregistered marks, the Opponent who has the burden of proof, failed to submit clear evidence showing that its unregistered marks are well known to the relevant sector (i.e. “the actual or potential traders, distributors and consumers in the plumbing and industrial systems industry”) in Singapore. The Registrar indeed concluded that there is a difference between establishing that a mark is “known” and “well-known”.  

Based on the fact that the Opponent failed to establish the well-known status of its unregistered marks in Singapore, it was not necessary to consider the other elements in section 8(4)(a)(b)(i).

3. 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) has been established for the period of 2013 to 2015. Furthermore, as the Applicant did not provide any details about the background or context of the mark, and no explanation as to the inspiration of the mark was given, the Registrar concluded that the Applicant had deliberately copied the mark of the Opponent.

In addition, the IP Adjudicator found that the fact that the Applicant did not promote its products in Singapore was a sign of the Applicant’s intention to deceive the consumers into believing that its products were that of the Opponent’s. On that basis, the Registrar concluded that the likelihood of confusion has been established. Given that the parties are direct competitors, the element of damage has also been sufficiently established.

Based on the above, this ground of opposition succeeded and accordingly, the registration of the subject mark in the name of Yitai (Shanghai) Plastic Co., Ltd. shall be 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 prior rights for their registered trademarks.

As a startup owner, you might not see trademark registration as a top priority. However, your trademark is an asset, despite being an intangible one. It has value, which can be very significant and will increase with the growth of your business. Remember, proper registration will give you the right to stop third parties from using and/or registering identical or similar marks.

Seeking protection for your trademark is therefore critical and must not be delayed. It is recommended to file a trademark application before you even start using it in public or before the launch of your products or services.

Begin the trademark registration process immediately. It’s not as difficult or expensive as you imagine.

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.

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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