18 August, 2018
Facts
Consolidated Artists B.V. ("the Opponents") own the mark "MANGO" for many products, including clothing and cosmetics. The Opponents sought to rely on its earlier marks registered for cosmetics in Class 3 to oppose the registration of THEFACESHOP Co., Ltd's ("the Applicants") trade mark, "MANGO SEED THE FACESHOP" ("Application Mark") for cosmetics in Class 3. The Opponents relied on Sections 8(2)(b) (confusingly similar marks and/or goods), 8(4) (well- known in Singapore and/or to the public at large in Singapore) and 8(7)(a) (passing off) of the Trade Marks Act (Cap. 332) ("TMA") in this opposition.
Application Mark
Opponents' Earlier Mark 1
Opponents' Earlier Mark 2
Decision
The opposition was unsuccessful on all grounds.
(i) Section 8(2)(b) – Confusingly similar marks and/or goods
Under Section 8(2)(b) of the TMA, a trade mark shall not be registered if it is similar to an earlier trade mark; is to be registered for goods similar to those which the earlier trade mark protects; and there exists a likelihood of confusion arising from the two similarities.
The Registrar was of the view that the marks were visually, aurally, and conceptually dissimilar. While the Opponents' Earlier Mark 1 had some level of distinctiveness due to its font, the level of distinctiveness was not high insofar as it could be considered descriptive of the Class 3 products concerned — for example, that they are 'mango' flavoured or scented products. While the same may be said about the Application Mark in relation to the words "Mango" and "Seed", the Application Mark contained the particularly long word "THEFACESHOP" at the bottom, with no spaces in between the words "THE", "FACE" and "SHOP". The Registrar was of the view that the word "THEFACESHOP" was therefore allusive, capable of being distinctive of the relevant goods, and therefore capable of sufficiently and substantially distinguishing the Application Mark from the Opponents' Earlier Mark 1 and similarly, the Opponents' Earlier Mark 2 (collectively referred to as "the Opponents' Earlier Marks").
In relation to the likelihood of confusion, the Registrar found no risk of misperception of co-branding or any likelihood of confusion in the sense of an economic link between the parties, as the Opponents had consistently depicted the word "MANGO" (and "MANGO" only) in a specific font. The words "Seed" and "THEFACESHOP" in the Application Mark also sufficiently differentiated it from the Opponents' Earlier Marks.
Further, the cosmetics and self-care products covered under both marks are highly personal products, applied onto the face and body, and pertaining to the appearance of a consumer. Hence, the products would entail a relentless scrutiny as to their suitability, as a wrong purchase can have detrimental results. Consumers will therefore be more particular about the origin or marks of such goods, as they are likely to trust certain brands more than others.
(ii) Section 8(4) – Well-known in Singapore and/or to the public at large in Singapore
The element that "the whole or an essential part of the trade mark" must be identical or similar to an earlier mark under Section 8(4) of the TMA was not found to be satisfied since the Opponents' Earlier Marks and the Applicants' Mark were found to be dissimilar. Moreover, whilst the Opponents' Earlier Mark 1 was found to be well-known to the relevant sector in Singapore, the Registrar found that there was no confusing connection between the marks for the same reasons as provided by the Registrar in relation to the likelihood of confusion. The high evidential threshold required to support the "well known to the public at large" status of the Opponents' Earlier Mark 1 was also found not to have been met. The Registrar did not consider the Opponents' Earlier Mark 2 further as the Opponents were unable to establish that there was reputation in the local market.
(iii) Section 8(7)(a) – Passing off
The Registrar found that, based on the Opponents' sale and promotional figures in Singapore, the Opponents have the relevant goodwill in Singapore. However, the elements of misrepresentation and likelihood of damage were not made out due to the dissimilarity of the marks.
Comments
This case highlights the potential problems with employing common words as trade marks, especially where the marks are intended to cover a range of classes of goods and services. Common words will be non-descriptive and distinctive only where they cover goods and services that have absolutely no relation to the plain meaning of the words. The mark 'Mango' for cosmetics, as illustrated in this case, does not suffice.
For further information, please contact:
Andy Leck, Principal, Baker & McKenzie.Wong & Leow
andy.leck@bakermckenzie.com
