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)