In a decision rendered by the Intellectual Property Office of Singapore (IPOS), it was held that Clarins Fragrance Group’s opposition against BenQ Materials Corp.’s trade mark application failed on all grounds.
(A) Who are the parties involved in this case?
- BenQ Materials Corp. (Applicant)
- A company based in Taiwan and listed on the Taiwan Stock Exchange. It is a well-established company which is involved in several fields of business, including the manufacture and sale of healthcare and personal care products such as facial care products and contact lenses. In 2014, it engaged a third-party brand strategist to assist it in creating a brand name and strategy for its new line of skin care products. These products were later sold under the sign “”.
- Clarins Fragrance Group (Opponent)
- A company in the fragrance business, founded by designer Thierry Mugler and based in Paris, France with offices in numerous countries around the world, including Singapore. Its products include a line of perfumes bearing the sign “ANGEL”.
- It is the registered proprietor of Singapore Trade Mark No. T9901038E for “ANGEL” in Class 3 for “perfumes” and various other goods (“the Opponent’s Mark”).
(B) What actually happened?
The Applicant applied to register the trade mark “” (“the Application Mark”) on 5 May 2015 in respect of goods in Class 3 for “cosmetics” and various other goods.
The Opponent opposed the registration of the Application Mark.
The Opponent relied on the following grounds in the Trade Marks Act (Cap. 332) in support of its opposition:
Relative grounds of refusal
- Section 8(2)(b): That the Application Mark should not be registered as it is similar to the Opponent’s Marks and is to be registered for goods identical with or similar to those for which the Opponent’s Marks is protected.
- Section 8(4): That the Application Mark should not be registered as the whole or an essential part of it is similar to the Opponent’s Marks, which are well known (or “well known to the public at large in Singapore”) and use of the Application Mark in relation to goods for which it is sought to be registered would indicate a connection with the Opponent and is likely to damage the interests of the Opponent (or cause dilution in an unfair manner / take unfair advantage of the distinctive character of the Opponent’s Marks in the case of “well known to the public at large in Singapore”).
- Section 8(7)(a): That the Application Mark should not be registered as its use in Singapore is liable to be prevented by virtue of the law of passing off.
(C) What is/are the issue(s) in dispute?
- Whether the afore-mentioned grounds of opposition were made out by the Opponent.
(D) Holding
Relative grounds of refusal
Section 8(2)(b): The ground of opposition under Section 8(2)(b) failed. The Hearing Officer found that the parties’ respective marks were dissimilar visually, aurally and conceptually. Given that this ground of opposition failed at the first step of mark-similarity, the Hearing Officer considered it unnecessary to consider the second (i.e. similarity of goods) and third elements (i.e. likelihood of confusion) of the step-by-step approach.
Section 8(4): The grounds of opposition under Section 8(4) failed on the basis that there was no requisite similarity between the Opponent’s Marks and “the whole or an essential part of” the Application Mark. The test for similarity under Section 8(2)(b) and Section 8(4) was held to be the same.
Section 8(7)(a): The ground of opposition under Section 8(7)(a) failed. Although the Hearing Officer found that the Opponent had the requisite goodwill in Singapore to sustain an action for passing, the Hearing Officer was not convinced that there was any misrepresentation.
Hence, the opposition failed on all grounds.
(E) Rationale for holding
Relative grounds of refusal
Section 8(2)(b):
The law
The law on Section 8(2)(b) is well-settled in Singapore. The Court of Appeal in Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911 (“Staywell”) reaffirmed the step-by-step approach. The first element is to assess whether the respective marks are similar. The second element is to assess whether the goods or services for which registration is sought are identical or similar to those for which the earlier trade mark is protected. The third element is to consider whether there exists a likelihood of confusion because of the first two elements. The first two elements are assessed individually before the final element. If, for any one step, the answer is in the negative, the inquiry ends and this ground of opposition fails.
In determining whether the marks are similar, three aspects of similarity (i.e. visual, aural and conceptual similarities) guide the inquiry. However, there is no requirement that all three aspects must be established before the marks can be found similar.
The viewpoint adopted is that of the average consumer who would exercise some care and a measure of good sense in making his or her purchases, not that of an unthinking person in a hurry. The average consumer has imperfect recollection. Hence, what must be considered is the general impression that will likely be left by the essential or dominant features of the marks on the average consumer, since it is those features that tend to stand out in the consumer’s imperfect recollection.
Distinctiveness is a factor that plays an integral role in the marks-similarity assessment. It is used in two senses: (1) Ordinary and non-technical sense (i.e. what is outstanding and memorable about the mark in question); and (2) Technical sense (i.e. opposite of “descriptiveness”, refers to the capacity of the mark to function as a badge of origin). Technical distinctiveness may be inherent (e.g. where words comprising the mark are meaningless) or acquired (through long-standing/widespread use). The legal position on whether evidence of alleged acquired distinctiveness should be considered at the mark-similarity stage appears unclear. However, the Hearing Officer recognised that the Court of Appeal in Staywell and Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2017] SGCA 30 did not consider such evidence at the mark-similarity stage, and focused instead on the distinctive and dominant elements of the competing marks. The Hearing Officer’s highlighted that there was merit in the Court of Appeal’s approach in that it “preserves the conceptual clarity of the step-by-step test”, and allows the first stage to be focused on the important question of whether the competing marks are similar, instead of being side tracked by the additional question of whether the earlier mark enjoys sufficient acquired distinctiveness so as to have an impact on the marks-similarity enquiry. The Hearing Officer further opined that evidence of acquired distinctiveness can be considered at the likelihood of confusion stage.
Inherent distinctiveness
The Opponent’s case was that “ANGEL” had a medium level of inherent distinctiveness, but it argued that once evidence of acquired distinctiveness through use was taken into account, the mark should enjoy a high degree of distinctiveness. The Applicant on the other hand, argued that “ANGEL” had a low to medium level of distinctiveness since it is a common English word, and in view of the existence of 24 other registered trade marks on the register in Class 3 that contain the element “ANGEL”.
The Hearing Officer agreed that the inherent technical distinctiveness of “ANGEL” was normal or medium in nature. However, although the mark was an ordinary English word and therefore did not possess a great degree of inherent technical distinctiveness, the Hearing Officer recognised that it was not descriptive of the goods either. It was meaningless, and in no way described what the perfume smelt like. Also, the fact that a number of traders had obtained registrations containing the word “ANGEL” did not necessarily mean the mark “ANGEL” was less distinctive. This fact did not assist the factual inquiry “save perhaps to confirm that this is the sort of word in which traders would like a monopoly” and the Hearing Officer held that “the state of the register does not tell you what is actually happening out in the market, and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register”.
Acquired distinctiveness
The Hearing Officer found that considering the evidence in its entirety, the Opponent’s Mark had not acquired a greater level of acquired distinctiveness through use. This was because there was a lack of direct testimony or precise sales figures for “ANGEL” supported by documentary evidence. Hence, the Hearing Officer found it difficult to draw any meaningful conclusion on the size of the market and the extent of sales in Singapore. Furthermore, there was no evidence that the Opponent’s advertising was ever directly aimed at the public in Singapore. There would likely, only be limited impact, even if it was taken into account that some members of the public in Singapore may have been exposed to the Opponent’s advertising abroad and through the internet. Further, on the basis of the Opponent’s evidence, “ANGEL” had always appeared with “THIERRY MUGLER” somewhere in the same document. The Hearing Officer held that the effect of this was that actual and potential consumers would be educated that the “ANGEL” perfume(s) is from or by “THIERRY MUGLER”.
Consequently, the Hearing Officer held that, even if evidence of acquired distinctiveness could be taken into account at the marks-similarity stage, on the basis of evidence tendered, the Opponent’s Mark had not acquired a greater level of acquired distinctiveness through use. As such, “ANGEL” did not enjoy a high threshold before the Application Mark could be considered dissimilar to it.
Visual similarity
In considering visual similarity, the Hearing Officer held that the marks were visually dissimilar for the following reasons:
- Additional word “derma” in fact, serves as a crucial visual difference between the two marks, since it appears at the beginning of the Application Mark and occupies almost the equal amount of visual space as the stylised “ANGEL” element.
- The stylized “A” in the Application Mark is heavily stylized and appears a tad larger compared to other letters, hence cannot be said to be insignificant and/or decorative. Distinctive character of the Application Mark is in fact drawn from the words “DERMA ANGEL” as well as the stylized “A”.
Aural similarity
In terms of aural similarity, the comparison was between the words “ANGEL” and “DERMA ANGEL”. The Hearing Officer held that given that the latter had an additional word “DERMA” and two additional syllables, the marks were aurally dissimilar.
Conceptual similarity
In terms of conceptual similarity, the comparison was between “ANGEL” (a heavenly or spiritual or celestial being) and “DERMA ANGEL” (which was considered to have no sensible meaning). Hence, the marks were held to be conceptually dissimilar.
Given the above dissimilarities between the marks visually, aurally and conceptually, the Hearing Officer found the Application Mark as a whole to be clearly dissimilar to the Opponent’s Marks. The ground of opposition under Section 8(2)(b) hence failed at the first step of mark-similarity, and it was unnecessary to consider the second and third elements in the step-by-step approach.
Section 8(4):
Under Section 8(4)’s heads of opposition, there is the foremost requirement that “the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark”.
Given that there was no requisite similarity between the Opponent’s Marks and “the whole or an essential part” of the Application Mark (as was decided under Section 8(2) ground above), the Hearing Officer held that it was not necessary to decide on the other elements of Section 8(4).
Section 8(7)(a):
The elements to establish passing off are: (i) Goodwill; (ii) Misrepresentation / Confusion; and (3) Damage.
The Hearing Officer found that the Opponent had the requisite goodwill in Singapore to sustain an action for passing off, in light of the evidence tendered.
In order to prove misrepresentation, there must be such a similarity between the Application Mark and the Opponent’s Mark such that it is sufficiently likely to cause the relevant segment of the public to be deceived into thinking that the Applicant’s goods are, or originate from a source that is linked to, the Opponent’s. Since the Hearing Officer had already found the marks to be dissimilar, he opined that misrepresentation would not be made out. There cannot be any deception or likelihood of deception under the law of passing off where the marks in question are clearly dissimilar.
Given that misrepresentation was not made out, the final element of damage was not considered.
The opposition under Section 8(7)(a) thus failed.
Commentary:
The Hearing Officer clarified that although the assessment for marks-similarity is a matter of impression (this means that there is indeed an element of subjectivity involved), the ultimate analysis should be one of “legal correctness and entitlement”. A decision concerning mark similarity is thus not simply one that is up to the Registrar’s discretion. The correct result has to be reached whilst having regard to guidance provided in case law.