10 May, 2019
Facts
The Applicant, Jen Chi, sought to register 
Class 25 in respect of a range of clothing and accessories.
The Opponent, Guess?, Inc, is the proprietor of the trade marks 
(the "Device Mark") and 
(the "GUESS Mark") in Class 25 in respect of various articles of clothing (collectively, the "Earlier Marks"). It is established in California and specializes in, among other things, fashion items and accessories. The Opponent and its related companies have a partnership with local distributors to market its products in Singapore.
The Opponent opposed the registration of the Application Mark on the following grounds under the Trade Marks Act (Cap. 332, Rev. Ed. 2005) ("TMA"):
(a) Section 8(2)(b), on the basis that the Application Mark is similar to both of the Earlier Marks and is to be registered for goods identical with or similar to those for which the Earlier Marks are protected.
(b) Section 8(4)(b)(i), on the basis that the Earlier Marks are well known in Singapore, and that the use of the Application Mark in relation to the goods sought to be registered would indicate a connection between the Applicant’s and Opponent’s goods, and is likely to damage the Opponent’s interests.
(c) Section 8(4)(b)(ii), on the basis that the Earlier Marks are well known to the public at large, and the use of the Application Mark would either cause dilution in an unfair manner, or take unfair advantage of, the distinctive character of the Earlier Marks.
(d) Section 8(7)(a), on the basis that the use of the Application Mark would amount to passing off.
Decision
The opposition failed on all grounds.
Section 8(2)(b)—Marks similarity
The Principal Assistant Registrar (the "Registrar") found that the Application Mark is dissimilar to each of the Earlier Marks.
Under the marks-similarity inquiry, distinctiveness is a factor to be integrated into the visual, aural and conceptual analysis of the competing marks.
The Opponent relied on the proposition that a mark is inherently distinctive where the words comprising the mark are meaningless and say nothing about the goods or services.
The Opponent argued that the dominant and distinctive feature of the Earlier Marks, i.e. the inverted triangle device, is “unusual, novel and highly distinctive” of the Opponent's goods because the device had no meaning in relation to the goods. Since the Earlier Marks were distinctive, the Application Mark must meet a high threshold before it will be considered dissimilar to the Earlier Marks.
Furthermore, the Opponent adduced evidence of product sales to show that the Earlier Marks had acquired distinctiveness through long-standing or widespread use.
Device Mark
In assessing the similarity between the Application Mark and Device Mark, the Registrar found that:
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(a) The Device Mark was not distinctive. Contrary to the Opponent's argument, the average consumer will likely view the inverted triangle device, together with the question mark device, as merely a decorative element. Moreover, the evidence adduced by the Opponent to suggest that the Device Mark acquired distinctiveness showed instead that the Device Mark hardly appeared on its own.
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(b) The Application Mark was visually dissimilar to the Device Mark. Although both marks contained an inverted triangle device, the dominant feature of the Application Mark was the textual component, “Hater”. This prominent and central textual component was missing in the Application Mark.
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(c) The Application Mark was conceptually more dissimilar than similar to the Device Mark. Any distinctiveness of the Device Mark emanated from the inverted triangular device together with the question mark device. On the other hand, the distinctiveness in relation to the Application Mark resided in the inverted triangle design and the word “Hater” placed prominently in the middle of the mark, in a specific font.
GUESS Mark
In relation to the similarity between the Application Mark and the GUESS Mark, the Registrar found that:
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(a) The GUESS Mark, which incorporates the Opponent's company name, was distinctive.
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(b) The Application Mark was visually dissimilar to the GUESS Mark. This was because the prominent and central feature of each mark, i.e. “Hater” and “GUESS” respectively, were different.
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(c) The Application Mark was aurally dissimilar to the GUESS Mark, since the former would be known as a “HATER” mark while the latter would be known as a “GUESS” mark.
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(d) The Application Mark was conceptually more dissimilar to the GUESS Mark. The distinctiveness of the GUESS Mark arose from the word “GUESS” placed prominently in the center of the mark, while the distinctiveness of the Application Mark, as mentioned above, resided in the inverted triangle design and the prominent and central component, “Hater”.
Accordingly, since the Application Mark was not similar to the Earlier Marks, the objection under Section 8(2)(b) failed.
Section 8(4)(b)(i)—Well known in Singapore
The Registrar was prepared to find that the GUESS Mark was well known in Singapore, given the evidence of extensive retail activity and advertising expenses adduced by Opponent.
However, this ground of opposition ultimately failed given the Registrar’s earlier finding that the Application Mark was not similar to the GUESS Mark.
Section 8(4)(b)(ii)—Well known to the public at large in Singapore
Although the Opponent tendered extensive worldwide net revenue for an extensive 30-year period, the Registrar found that the data provided was insufficient to establish that the Earlier Marks were well known to the public at large in Singapore.
In particular, the Registrar observed that the Opponent failed to provide unequivocal evidence of the extent of sales arising from the local market, instead offering only approximate figures. The Registrar also undertook a survey of other marks that had attained the status of being “well known to the public at large in Singapore”, and remarked that the sales figures tendered by the Opponent fell short in comparison.
Moreover, since the Application Mark was found to be dissimilar to the Earlier Marks, this ground of opposition would have failed anyway.
Section 8(7)(a)—Passing off
The Registrar swiftly dealt with this ground of opposition, finding that a passing off action would fail. This was because there was no likelihood of misrepresentation, given the dissimilarity of the Applicant Mark and the Earlier Marks.
Comment
This decision confirms that similarity between competing marks must be assessed as a whole. The mere fact that two marks share a similar component (e.g. an inverted triangle device) does not automatically mean that they are similar, particularly if the dominant component of the marks differ.
This decision also serves to remind traders of the high evidential threshold required for a mark to be considered as one that is well known to the public at large in Singapore. Given the high level of protection accorded to this rare and exclusive category of marks, the evidence tendered should not be an approximation, but instead be sufficiently particularized to show a high degree of recognition amongst most sectors of the Singapore public.
For further information, please contact:
Andy Leck, Principal, Baker & McKenzie.Wong & Leow
andy.leck@bakermckenzie.com
