Valentino S.p.A. v Matsuda & Co [2020] SGIPOS 8: a trademark law case

Valentino S.p.A versus Matsuda & Co A Trademark Law Case IPHub Asia

The company, Matsuda & Co, filed an application for the mark VALENTINO RUDY & Design in Singapore on 12th October 2017 in classes 18 and 25. The subject mark was opposed by Valentino S.p.A., but unsuccessfully, despite the presence of earlier marks in the opponent’s name containing the name VALENTINO.

The opponent relied on 33 prior trademark applications. Some of them are set out below, together with the applicant’s trademark:

Confusing similarity

Valentino S.p.A. opposed the application on two grounds, the first one being the likelihood of confusion between the subject mark and the opponent’s prior marks.

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.

The Registrar found that the marks, taken as a whole, were “more dissimilar than similar” taking into account both the words and the logos in the marks. The IP Adjudicator assessed that the dominant element in the applicant’s mark was the handwriting style of the name VALENTINO RUDY and the V alphabet in the square box, and those elements were different from the opponent’s marks. The decision also mentioned that the common element to the mark, i.e. VALENTINO, was a relatively common name.

As the opponent failed to establish the similarity between the marks (element (a) as stated above), there was no need to assess elements (b) and (c) and the opposition was refused on this ground. 

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) had not been determined. As such, this ground of opposition failed as well.

Accordingly, the registration of the subject mark in the name of Matsuda & Co was allowed.

You can explore the details of this case, as published on the IPOS website, here.

What can be learned from this decision?

A trademark containing a name (first name or family name, or a combination of both) can show some weakness, as others can claim the right to use it in good faith.

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 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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