Tuesday, April 6, 2010

"Raffles" not similar to "Raffles Fine Arts Auctioneers"

The Registry of Trade Marks recently held that the mark “Raffles” was not similar to “Raffles FINE ART AUCTIONEERS”.

Raffles Fine Arts Auctioneers Pte Ltd (the “Applicant”) had filed to invalidate Raffles Corporate Consultants Pte Ltd's (the “Registered Proprietors”) registrations for the sole word “Raffles” (the “Raffles Marks”) for business management consultancy services and financial consultancy services under Class 35 and Class 36 respectively. The application was grounded on the basis that the Applicant had earlier rights in the unregistered marks “Raffles” and “Raffles Fine Arts” used in relation to business consultancy and financial solutions (“the Services”), such that use of the Raffles Marks would amount to passing off.

One of the Raffles Marks

The Applicant had alleged goodwill in the mark “Raffles”. In support, the Applicant submitted evidence of its sales figures, official receipts issued to clients, promotional and advertising materials, a schedule of clients to whom they had provided advice and declarations made by clients. However, it was clear from the evidence that the actual mark used consisted of the words “Raffles Fine Arts Auctioneers”, and not “Raffles” per se. The Registrar also noted an absence of tax invoices for the Services, and commented that this made it difficult to prove the actual provision of such services.

The Applicant's Mark

Taking into account the sales volume and promotion of the Applicant’s marks, the Registrar was of the view that it had not acquired sufficient goodwill in relation to the Services.

With regard to the element of misrepresentation, the Registrar commented that it is the impact on the persons to whom the misrepresentation is addressed, and not the state of the mind of the defendant, that is material. In this case, the marks were found to be visually, aurally and conceptually dissimilar. Moreover, as the word “Raffles” is peculiar to Singapore, being the last name of her founder, Sir Stamford Raffles, the public would be more discerning of marks consisting of the word “Raffles”. As such, the Registrar held that there was no likelihood of confusion and therefore the element of misrepresentation was not present.

As the first two elements of passing off (i.e. goodwill and misrepresentation) were not made out, the Registrar found it unnecessary to consider the third element of damage. Consequently, the invalidation action was dismissed and the Applicant was ordered to pay the Registered Proprietors’ costs.

Citation :
In the matter of TM Nos. 06306/03 and 06307/03 in the name of Raffles Corporate Consultants Pte Ltd [2010] SGIPOS 1

1 comment:

Garima said...

It is necessary to compare the marks as a whole. Every element of the mark should be considered while finding the similarities and dissimilarities. Appropriate decision taken.