The case of the Bodypack… in the matter of a trade mark registration by PT EIGERINDO MULTI PRODUK INDUSTRY and application for declaration of invalidity by SPORTS CONNECTION PTE LTD

Background

This is an application before the Trade Marks Registry for a declaration of invalidity by Sports Connection Pte Ltd (the “Applicants”) of a registered trade mark in the name of PT Eigerindo Multi Produk Industri (the “Registered Proprietors”) on several alternative grounds, with the main ground being that the Registered Proprietors’ mark should not be registered because it is similar to an earlier trade mark and is to be registered for goods or services identical or similar to those for which the earlier trade mark is protected and there exists a likelihood of confusion on the part of the public.

The decision of the Tribunal was released on 4 March 2015.

The Registered Proprietors’ mark is T0812097B as follows: –

The Applicants’ earlier registration relied on is T8905544J as follows: –

Decision

The trade mark registration was partially invalidated based on Section 23(3) of the Trade Marks Act read together with Section 8(2)(b) in relation to goods in Class 18 and goods in Class 25 which have been found to be similar to the goods claimed by the Applicants.

For an action under Section 8(2)(b) to succeed, the marks under comparison must be identical or similar, the goods claimed by both marks must be identical or similar, and a likelihood of confusion on the part of the public must exist.

In determining whether the marks are similar, the Tribunal followed the “step by step” approach in the case of The Polo/Lauren Co, LP v Shop- In Department Store Pte Ltd [2006] 2 SLR(R) 690 and recently affirmed by the Singapore Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911.  The Tribunal found that the marks have a substantial degree of aural similarity and a moderate degree of visual and conceptual similarity.

After a long and detailed analysis of the goods of the respective parties, the Tribunal found that the Applicants’ and Registered Proprietors’ goods in Class 18 are identical or at the very least highly similar; some of the Registered Proprietors’ goods in Class 25 are similar to the Applicants’ goods in Class 18, while other goods in Class 25 are dissimilar.

Given the degree of similarity between the competing marks and the permissible extraneous factors in relation to both marks similarity and goods similarity on consumer confusion, the Tribunal found that there is a likelihood of confusion between the Applicants’ mark and the Registered Proprietors’ mark as regards the similar goods.

The Applicants also relied on 2 other grounds (related to passing off and dissimilar goods) to invalidate the registration but the outcomes on these other grounds did not change the final outcome of the case.

Three Lessons To Take Away

1. The current action was started in mid-2011 when the registration procedure of the subject registration was completed in April 2009.  If you have earlier rights which are good, remember to take action before it is TOO LATE. Section 24 of the Trade Marks Act bars a proprietor of an earlier trade mark who has acquiesced for a continuous period of 5 years in the use of a registered trade mark in Singapore from applying for a declaration that the later trade mark is invalid.

2. Try to use only distinctive elements in your trade mark.  The invalidated mark here contains the words “digital case” and a diamond shaped device.  However, neither of these elements helped to distinguish it from the earlier registered trade mark.

3. Trade mark agents like to rely on all possible courses of action in order to preserve the rights of their clients.  This is commonly called the “kitchen sink approach”.  If you have funds to spare, there is no harm in adopting this approach.  However, for those who like to make every cent that they spend count, it would be prudent to consider the merits of the case and rely only on the strongest ground in your invalidation action.

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