4 March, 2019
Guess?, Inc, the Opponent, opposed the registration of:
sought to be registered by Jen Chi, (the “Applicant”) for the following goods in Class 25:
- Shirts; T-shirts; clothing; skirts; pants; raincoats; boots; shoes; bandanas (neckerchiefs); ties (for wear); hats; socks; gloves (clothing); belts (clothing); coats; aprons (clothing); sleep mask.
One of the main grounds of opposition was Section 8(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed). The Opponent relied on its following earlier marks, amongst others:
Please click on the table to enlarge.
To succeed under section 8(2)(b), the Opponent must establish (among other things) that the Application Mark is similar to the Opponent’s earlier marks. As the Registrar found that the Application Mark is more dissimilar than similar to each of the Opponent’s earlier marks, the opposition under section 8(2)(b) failed.
In view of the finding of dissimilarity, the ground of objection under section 8(4)(b)(i) also failed since one of the elements that must be satisfied is that "the whole or essential part of the trade mark must be identical or similar to an earlier mark".1 The Registrar was however prepared to hold that the Opponent’s Earlier Registered GUESS Mark is well known in Singapore.
1 Which is essentially the same as the similar element under Section 8(2)(b).
Disclaimer: The above is provided to assist in the understanding of the Registrar's grounds of decision. It is not intended to be a substitute for the reasons of the Registrar. The full grounds of decision can be found at https://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2019/guess-v-jen-chi-2019-sgipos-3.pdf.
