No. 2

We are proud to announce the arrival of Ravi's 2nd. It arrived about a week ago, all swaddled in white, causing quite a stir in the office. We are, of course, referring to the 2nd edition of "Trade Marks Act - A Commentary", published by the good people at Lexis Nexis. For a closer peek at the young 'un, please click here.

Congratulations, Ravi!

"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

Out and About

The final quarter of the year is looking to be a busy one. We (or at least one of us) will be speaking at the following events :

1. "The Artist and Copyright" at Art Singapore 2009 on Sunday, 11 October; and

2. "Intellectual Property Enforcement - An Overview of Trademark and Patent Cases" organised by the Law Society of Singapore on Thursday, 5 November.

We will also be attending FLAsia 2009 from 15 to 17 October and APAA 2009 from 18 to 22 November - do say hello if you are there as well.

Unlucky 13

The Criminal Investigation Department conducted simultaneous raids of 13 shops in Lucky Plaza yesterday, resulting in the arrest of 27 men and 1 woman, aged between 19 and 55 years old. The raids were carried out on the premise of trade mark and copyright infringement offences. Originally targetting the sale of pirated games and illegally modified gaming consoles, the CID's haul of 794 items eventually included desktop computers, laptops, external hard disks and memory sticks. The seized items had an estimated street value of S$60,000.

If found guilty, each offender is liable to pay a fine of up to S$10,000 per item (subject to a maximum of S$100,000) and may be imprisoned for up to 5 years.

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

When is my mark not my mark?

Singtel, the biggest telco in Singapore, have been marketing and packaging their telecommunications and TV services under the mark mio since 2007. However, a Taiwanese party, Mitac, had registered a stylised version of the mark at the Singapore Registry earlier. Mio mean "my" in Italian. Mitac sued Singtel for infringement; the case is Mitac International Corporation v Singapore Telecommunications Ltd [2009] SGHC 137.

The Singapore High Court found that there was no infringement and held the following:

1. Mitac stylised mio was not identical to the Singtel mark notwithstanding that phonetically the marks are identical. In this regard, the court placed great weight on the fact that the Mitac mark was "highly stylised and distinctive." In the circumstances, it might be wise for proprietors of trademarks to register the block version of the mark rather than the mark as used otherwise they will face the same issues as Mitac did in this case. The problem, however, is where the block letter version cannot obtain registration for some reason or other.

2. If the court finds that the marks are identical, then there is no need to show a likelihood of confusion. However, where the court as in this case holds that the marks are not identical, then Mitac was weighed with the burden to show that there was a likelihood of confusion. In this regard and on the authority of the Polo case [2006] 2 SLR 690, an inquiry into the marketplace is relevant.

3. The court felt that there was no likelihood of confusion agreeing with the several reasons put forward by Singtel. The court went on to say that: "The marketing expenditure of and number of events [Mitac] participated in paled in comparison to [Singtel's], leading to the conclusion that it was unlikely that an average customer would think of [Mitac] at all when confronted with [Singtel's] trade marks."

4. If it is true that market power can affect the statutory rights afforded under the Trade Marks Act, then we are backing into the tort of passing off. In this case, the pervasiveness of Singtel in Singapore trumped Mitac's prior registration and weak marketing. One wonders what rights would be given to a mark which has not been used at all.

Citation : Mitac International Corp v Singapore Telecommunications Ltd and Another Action[2009] SGHC 137

Facebook.com/Me

Commencing Saturday 13 June 2009 (midnight, EDT), Facebook users may create personalised URLs for their Facebook pages (facebook.com/username). To prevent third parties from using famous trade mark(s) as or part of their personalised URLs, Facebook has provided an online form for trade mark owners to record their rights. The form is accessible here. The information required is :-

a. Company name
b. Title
c. Email address
d. Trade mark
e. Trade mark registration number (in any jurisdiction)

Once registered, the personalised URLs will be non-transferable. We encourage trade mark owners to take preventive action now rather than to enforce trade mark rights later

Having said that, how will Facebook verify the identity of the person submitting the form, if at all? Mr. X could very well obtain a trade mark number of a well-known mark off any of the online databases then tick the little box that says he is authorised by the trade mark owner. Hmm, and what if someone tries "facebook.com/louisevuitton" or "facebook.com/kelvinkline"? What then? I can't help but wonder ...

Greetings from Seattle

Today saw the conclusion of the 131st Annual INTA Meeting in Seattle. After 5 days of meets and greets, of old friends and new, we bid farewell to all those that we have said hello to, and hope to see them again next year in Boston.

Stay tuned for photographs!

McCurry vs McDonald's

The Malaysian Court of Appeal allowed an appeal by an Indian restaurant in Malaysia to use the name McCurry. It ruled that there was little danger of confusion as the McDonald's served fast food whilst the appellant sold Indian food. Further, the patrons of the Indian restaurant were adults whilst, accorduing to the court, McDonald's served mainly kids.

It should be noted that Malaysia does not have dilution provisions which may have given McDonald's a remedy without the need to show confusion.

Singapore Brands in the News

‘Singapore Airlines’ and ‘SingTel’ Make it To The Top 500

One of the few Singapore brands with a global presence that comes readily to mind is ‘Singapore Airlines’. The other is ‘SingTel’ (telecommunications). Both ranked 246 and 318 respectively in the BrandFinance Global 500 report of April 2009, the Annual Report on the World’s Most Valuable Brands.

‘Singapore Airlines’ was ranked 280 in 2008 while ‘SingTel’ was unranked.  The ranking in 2009 illustrates the positive progress these Singapore brands are making, globally.

‘Get Singapore Brands’ Launched

There are some home grown brands which enjoy recognition outside Singapore but lack the same recognition at home.

In addressing this, ‘Get Singapore Brands’, a non-profit organization was launched in March 2009. SPRING Singapore is funding the initiative. According to a recent Straits Times report there are currently 37 participating companies who pay subscription fees. The target is to get 100 companies.

The objective of ‘Get Singapore Brands’ is to market goods of the participating brands in Singapore and abroad and to create a greater awareness that Singapore produces well designed goods.

Another objective is to promote Singapore as a place known for good design and innovative retail ideas, and help participating companies exchange ideas and expertise.

The publicity extended to the participating brands is reported to include showcasing products in shopping malls, advertising campaigns and promotional materials extended to tourist. Moving forward, the publicity is expected to be extended abroad next year at international trade fairs and overseas missions.

This initiative is laudable and it is hoped that more companies will participate and take Singapore brands to the greater recognition and success that they rightly deserve.

New chapters

Six new chapters have been added to the Intellectual Property Office of Singapore’s Trade Mark Work Manual.  These are :

Chapter 9 - Marks Contrary to Public Policy or to Morality 

Chapter 10 - Names and Representation of Famous People, Buildings, etc 

Chapter 11 - Other Grounds for Refusal of Application 

Chapter 12 - Deceptive Marks 

Chapter 13 - Licences 

Chapter 14 - Slogans

Court of Appeal rules on well-known mark

"Should a modest cluster housing project in Yio Chu Kang [a modest street] in Singapore be allowed to share the name as an ultra-exclusive luxury resort in Bali where that name is not a registered trade mark in Singapore?"

This question was posed in the first line of a recent Singapore Court of Appeal judgement. The court held that the mark "Amanusa" was a well-known trade mark in Singapore (albeit unregistered ) and that the use of the mark by the housing project was likely to cause people to believe that there was a connection between the said project and the resort. The court granted an injunction restraining the use of the name by the housing project.

The court held that in deciding whether a mark was well-known, one looked at the actual or potential consumers of the proprietor of the mark. The court recognised that this made it easy for marks to be considered well-known in Singapore and, therefore, balanced this with the requirement that the proprietor of the mark show that there is a likelihood of confusion before an injunction can be granted.

The upshot of this judgement is that proprietors of an unregistered mark which is not being used in Singapore may have a remedy provided the mark is well-known to a sector of the public in Singapore and there is a likelihood of confusion. Under the common law tort of passing off, this was not possible as goodwill needed to be shown.

Fake trade mark notices

According to the Intellectual Property Office of Singapore ("IPOS"), companies should be cautious about fake trade mark notices demanding payment for registering trade marks. Several such instances have been reported until this day. The notices look authentic but these have no connection with IPOS or any such authorities. Companies need to be observant, and review any such notices with utmost care, so that they do not fall prey to such a mischief. Consult a lawyer or any knowledgeable consultant if you are in doubt.

10

Singapore's Trade Marks Act turned 10 in January this year.

On 15 January 1999, an overhauled Act had come into force, enabling Singapore to meet the requirements of the TRIPS Agreement as well as the Paris Convention.

In celebration of this momentous occasion, the IP Academy is holding a discussion cum workshop conducted by Associate Professor Ng-Loy Wee Loon, law lecturer and author of "Law of Intellectual Property of Singapore". The issue du jour : distinctiveness in trade mark law. Happy for the opportunity for trade mark professionals to share, discuss and mingle, this writer has penciled this event (yes, the old-fashioned way) into her appointment book.

MYCHEW not similar to HI-CHEW

Vicki represented a Korean company, Crown Confectionery Co., Ltd. in their application to register the mark MYCHEW in relation to inter alia “chewing candy” in Class 30, and succeeded in resisting an opposition on all grounds canvassed by Japanese competitors Morinaga Ltd. based on their series of marks consisting of the word HI-CHEW. The marks are reproduced below :-

The crux of parties’ arguments revolved around comparison of the marks. In applying the established principles that marks must be compared as wholes, and that visual, aural and conceptual aspects must be considered, the Registrar found that the marks were overall not similar :-

1. MYCHEW is not visually similar to HI-CHEW. The presence of the hyphen in HI-CHEW, the different beginnings in both marks (MY and HI-), the slant in MYCHEW all contributed to the "sea of visual differences" that virtually drowned out the common ending (CHEW) in the marks.
2. MYCHEW is marginally similar to HI-CHEW aurally. The Registrar veered away from the oft-cited “first syllable” principle, and instead considered where the natural stress falls in both marks. She also found that the vowel sounds and vowel order in the marks (AI-EW) were strikingly similar.
3. MYCHEW is not conceptually similar to HI-CHEW. The Registrar first identified the distinctive portion of the marks. Given that “chewing candy” was claimed by both marks, the Registrar found that the word “CHEW” was not likely to be taken as a distinctive feature. It was therefore the words “MY” and “HI” that consumers would pay attention to. As these simple English words had different meanings discernable to the general Singapore public, different conceptual impressions would be formed between MYCHEW and HI-CHEW.

Citation :
Crown Confectionery Co Ltd v Morinaga & Co Ltd [2008] SGIPOS 12

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)

The Court of Appeal decides

Ravi, Sugu and Vicki appeared and successfully defended the registration of an important Chinese trademark in the Singapore Court of Appeal; the mark was first used in the fifties and spanned China’s transition from a centralised, government-controlled economy to the modern, market-driven economy of today. The mark is reproduced below and was registered in Singapore for cordyceps, a traditional Chinese herbal medicine.

In a 137-page judgment (which may be viewed here), the court of three judges made the following important rulings:

1. The contention that a registered mark does not actually function as a trade mark should not be considered in a revocation based on non-use as it is not relevant to the question of whether or not a mark has been used but pertains instead to the effect of the use of mark.

2. The mere fact that a mark is popular or even the only one in the market does not ipso facto render the mark generic and undeserving of protection.

3. In assessing whether a mark possesses the requisite capacity to distinguish so as to constitute a trade mark, one should look only at the inherent features of the mark, and not the use of it. In this connection, the Court of Appeal expressly adopted the Philips approach [1999] RPC 809 as opposed to the Bach approach [2000] RPC 513 which the lower court had followed.

4. The court adopted the modified Ajit Weekly [2006] RPL 25 combined test for bad faith i.e. not only must the actions of the registered proprietor fall short of the normally accepted standards of commercial behaviour, but the said proprietor knew of facts which would cause an ordinary, honest person to realise that such standards were being breached.

5. Fraud and/or misrepresentation in the registration of an assignment does not invalidate the original registration of the trade mark.

6. Once the grounds of invalidation or revocation are made out, the court does not have any residual discretion not to so invalidate or revoke.

7. A civil court should not exercise its discretion to grant a declaration of non-infringement where criminal proceedings for an offence under the Copyright Act have already been initiated.

The Court of Appeal also took the opportunity to comment on the fact that while the criminal prosecution of offences under the Trade Marks Act takes place in the Subordinate Courts, an attack on the registration by the accused person could only be initiated in separate proceedings in the High Court. This state of affairs under our laws is unsatisfactory as it resulted in a duplicity of proceedings. The court stated that in future such proceedings i.e. the criminal prosecution and the attack on the registration should be consolidated so that both matters could be heard expeditiously by the same judge.

Citation : Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another and Another Appeal [2009] SGCA 9