Friday, July 24, 2009

A Tale of 2 (and more) Valentinos

In a trade mark opposition heard before the High Court (upon appeal), it was ruled that the Class 18 marksand were not similar.

In comparing the marks aurally, visually and conceptually, the Judge was of the view that there was no similarity in all 3 aspects. In particular, he noted that several parties had registered trade marks which "constituted wholly or in part", the word "Valentino". As such, the Opponent (Valentino Globe B.V.) could not be said to have a monopoly over the word "Valentino", and could not establish similarity or a likelihood of confusion just by virtue of the Applicant's (Pacific Rim Industries Inc.) incorporation of the word "Valentino" into its "Emilio Valentino" mark.

On the ground of bad faith, the Opponent pointed out that one Mr. Emilio Valentino had applied to register a mark identical to the Applicant's, in Italy. As the Applicant did not adduce any credible evidence to show how it had derived the mark, the Opponent called upon the Court to make an adverse inference that the Applicant must have copied the mark from Emilio Valentino.

In response, the Court said the most damaging inference was that either the Applicant or Emilio Valentino had copied the mark from the other; no evidence had been put forward to show which party had prior use. Also, given that "Valentino" is a fairly common name for Class 18 goods, the Court said it would be slow to find that any copying had taken place. This was unlike the Team Lotus case cited by the Opponent where the trade marks consisted of complex designs. Further, the word "Lotus" "is an uncommon and very distinctive name for cars and/or related services, and this militates in favour of a finding that some copying had taken place".

As neither similarity nor bad faith had been made out, the appeal was dismissed in favour of the Applicant.

Citation : Valentino Globe BV v. Pacific Rim Industries Inc. [2009] SGHC 150

No comments: