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In the opposition of ZERODENSITY YAZILIM ANONIM SIRKETI v Novel Brands USA LLC [2023] SGIPOS 11, the Intellectual Property Office of Singapore (IPOS) presided over a trade mark opposition case involving Novel Brands USA LLC, the applicant, seeking registration of the mark “REALITY ENGINE”, and ZERODENSITY YAZILIM ANONIM SIRKETI, the opponent, asserting prior rights to the mark in the field of software for augmented reality experiences. The case centered on the determination of whether the opponent had established sufficient goodwill associated with their mark in Singapore to oppose the applicant’s registration. This decision explores the complex interplay between trade mark registration, goodwill, and the potential for consumer confusion within the realm of cutting-edge software technologies, ultimately offering insights into the protection of unregistered intellectual property rights in a dynamic and evolving market.
Summary of decision
Introduction:
This case involves a Singapore designation of an international trade mark registration, specifically Trade Mark No. 40201925975W (International Registration No. 1500237) for “Downloadable and recorded computer software” in Class 9. The trade mark in question is a standard character wordmark “REALITY EINGINE”.
The applicant, Novel Brands USA LLC, is a Delaware-based company. They have various international applications and registrations for the trade mark in question, primarily for Class 9 goods related to software for augmented reality experiences. However, they have not yet publicly marketed their software.
The opponent, ZERODENSITY YAZILIM ANONIM SIRKETI, is a Turkish company specializing in broadcasting products and solutions, including advanced real-time visual effects. They use the sign “Reality Engine” for their software products, primarily used in broadcasting and augmented reality applications.
Grounds of Opposition:
The opponent’s opposition is based on Section 8(7)(a) of the Trade Marks Act 1998, which deals with passing off. To succeed, the opponent must establish three elements: goodwill, misrepresentation, and damage.
Goodwill:
The relevant date for assessing goodwill is March 7, 2019, the claimed priority date of the applicant.
The opponent provided evidence indicating that they have collaborated with a Singaporean distributor and been involved in events featuring their “Reality Engine” software. Invoices and communications were presented as proof of their business activities.
Misrepresentation:
To establish misrepresentation, it must be shown that the applicant’s use of the trade mark creates confusion in the minds of the relevant consumers.
The opponent argued that the term “Reality Engine” is distinctive of their goods, and evidence suggests that customers associate it exclusively with their business. The applicant’s identical trade mark creates confusion.
The applicant countered by stating that the goods are not identical, as they target different audiences and industries. They also argued that the opponent’s customers are professionals who exercise care in their purchases.
Damage:
The damage element involves showing that the misrepresentation caused harm to the opponent’s goodwill, such as diversion of trade or blurring.
In this case, given the goodwill and misrepresentation, damage is inferred due to the direct competition between the parties in the same industry.
Conclusion:
After a comprehensive review of the evidence and arguments, the Registrar concluded that the opposition based on Section 8(7)(a) succeeds.
Consequently, the subject trade mark was refused registration.
The opponent was awarded costs.
DISCLAIMER:
Please note that the above summary was generated by ChatGPT, an AI language model developed by OpenAI, based on the provided text. While efforts have been made to provide an accurate and comprehensive summary, it may not fully capture all nuances and details of the original legal decision. For precise and authoritative information, it is advisable to refer to the original legal document or consult with legal professionals.