Wednesday, March 18, 2009

Panasonic defeats Pensonic

Sugu and Vicki represented Panasonic Corporation of Japan (formerly known as Matsushita Electric Industrial Co., Ltd) in an opposition in Class 9 and invalidation in Classes 7 & 11 of the mark set out below (“the PENSONIC mark”):

The PENSONIC mark was applied/registered in relation to household electronic goods, by Pensonic Corporation Sdn Bhd of Malaysia, and was not in use in Singapore. Panasonic Corporation had prior registrations for PANASONIC in classes 9, 7 and 11 for, inter alia, household electronic goods.

The opposition and invalidation succeeded.

The Registrar found PANASONIC to be well-known in Singapore based on the evidence presented. The PENSONIC mark was held to be similar to the PANASONIC mark owned by Panasonic Corporation and therefore, confusion would occur should the PENSONIC mark enter the Singapore market for identical goods.

An additional ground on which Panasonic Corporation prevailed in the opposition of the PENSONIC mark in class 9 was based on a then untested provision of the law, introduced on 1 July 2004, section 8(4)(a)(b)(i) of the Trade Marks Act which is applicable to well known marks. The Registrar held that since PANASONIC is a well-known mark to the relevant sector of the public and that a connection would be made between PENSONIC goods and PANASONIC goods, there would be a likelihood of damage to occur if PENSONIC was allowed to proceed to registration.

This is the first reported case where an opposition based on this new provision of the law succeeded.

Citations :

(i) Pensonic Corporation Sdn Bhd v Matsushita Electric Industrial Co. Ltd [2008] SGIPOS 9 (Opposition)
(ii) Matsushita Electric Industrial Co. Ltd v Pensonic Corporation Sdn Bhd [2008] SGIPOS 10 (Invalidation)

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