11 March, 2018
Facts
This decision stems from an opposition action before the Trade Marks Registry of the Intellectual Property Office of Singapore.
The Applicant, Guccitech Industries (Private Ltd), is a Singapore-incorporated company engaged in the business of, among other things, designing and manufacturing household appliances. The Applicant applied to register the trademark 
("the Applicant's Mark") in Singapore in Class 11, in respect of an extremely detailed list of appliances and other goods used in or as part of the process of cooking or preparing food. The application was accepted and published for opposition.
The Opponent, Guccio Gucci SpA, is the owner of the globally-renowned brand GUCCI. While the Opponent is most known for its bags, shoes and clothing, the Opponent claims that the range of products on which the GUCCI trade mark is used today extends to beauty and cosmetic products, lifestyle products, food and beverage services, games products, and products used in the technology area such as mobile phone covers and USB devices.
Grounds of Opposition
The Opponent filed an opposition to the registration of the Applicant's Mark, on the following grounds:
(1) Section 8(2)(b) of the Trade Marks Act – that the Applicant's Mark is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, and there exists a likelihood of confusion on the part of the public.
(2) Section 8(4) of the Trade Marks Act – that the Applicant's Mark is identical with or similar to the Opponent's earlier trade mark which is well-known in Singapore; and
(a) the use of the Applicant's Mark in relation to the goods for which the Applicant's Mark is sought to be registered would indicate a connection between those goods or services and the Opponent, and is likely to damage the Opponent's interests; or
(b) if the Opponent's trade mark is well-known to the public at large in Singapore, the use of the Applicant's Mark would cause dilution in an unfair manner of the distinctive character of the
Opponent's mark, or would take unfair advantage of the distinctive character of the Opponent's mark.
(3) Section 8(7)(a) of the Trade Marks Act – that the registration of the Applicant's Mark is liable to be prevented by virtue of the law of passing off.
(4) Section 7(6) – that the application of the Applicant's Mark is made in bad faith.
The Registrar found in the Opponent's favour and allowed the opposition.
Similar Marks, Similar Goods and a Likelihood of Confusion
Section 8(2)(b) of the Trade Marks Act
The Opponent is the registered proprietor of several registered trade marks in Singapore. The Opponent relied in particular on its registrations for the word "GUCCI" in Class 21, for "Porcelain and ceramic articles; drinking glasses and glass flasks", and Class 35 for various wholesale and retail services, including retail services relating to the sale of glassware, porcelain and cutlery.
The Registrar found in favour of the Opponent on this ground.
First, in terms of similarity of marks, the Registrar found that the marks are "very similar visually, aurally and conceptually". The Registrar took into account that the dominant and distinctive part of the Application Mark is the word "GUCCI", notwithstanding the addition of the descriptive "-TECH" suffix and the presence of the strapline INNOVATION SAVES SPACE in much smaller lettering. Further, the Registrar considered that the marks are aurally similar. The Registrar rejected an approach of conducting a simple syllable count. Again, the Registrar found that the dominant and distinctive part of the Applicant's Mark is GOO- CHEE, as the addition of the other matter is either descriptive or without trade mark significance. As regards conceptual similarity, the Registrar found that in view of the Italian connotation of the word GUCCI, the marks are conceptually similar.
Next, in terms of similarity of goods and services, the Registrar found that there is "requisite similarity of goods". The Registrar candidly stated that his "initial reaction on this issue was that the goods are not similar". However, the Registrar emphasised that a determination of similarity of goods and services in the context of trade mark law must take into account the marketplace in which the goods and services are likely to be purchased and used.
Applying this assessment framework, the Registrar reviewed the specification of goods of the Applicant's Mark, and "identified a subset which is most likely to be sold at wholesale and retail outlets in proximity to ‘porcelain and ceramic articles and/or drinking glasses’ covered by the Opponent’s registered mark". In this regard, the Registrar found that goods "are similar in the sense that they are all
goods complementary or used in the process of preparing food by whatever means and in that food’s subsequent consumption."
Third, in terms of likelihood of confusion, the Registrar found that there is a real possibility that an average consumer would naturally assume that goods sold under the Applicant's Mark come from a source that is in some way economically linked with the Opponent. The Registrar gave due weight to the fact that the goods in question are relatively inexpensive items, and therefore the average consumer of such goods would pay a normal degree of attention to their purchase.
Conflict with Well-Known Trade Mark
Section 8(4)(b)(i) of the Trade Marks Act
In Section 8(4)(b)(i) of the Trade Marks Act, the first sub-ground of refusal is that the Applicant's Mark is identical with or similar to the Opponent's earlier well- known trade mark, and use of the Applicant's Mark would indicate a connection between the Applicant's goods or services and the Opponent, and is likely to damage the Opponent's interests.
On this ground, the Registrar readily found that the mark GUCCI is well-known in Singapore, on the basis of the voluminous evidence tendered by the Opponent, and the uncontested fact that the mark GUCCI has been used in Singapore since 1979.
The Registrar then made the finding that the use of the Applicant's Mark in relation to at least some, if not all of the goods for which it is sought to be registered, would likely be taken by the average consumer of those goods to indicate some trade connection with the Opponent. The basis for this finding is the same as the reasons that the Registrar was satisfied that there is a likelihood of confusion above.
The Registrar was further satisfied that such a connection would "inevitably result in damage to the Opponent's interests as it would mean that the Opponent would lose its present exclusivity in the use of the word GUCCI as a trade mark". The Registrar took cognisance of the fact that the Opponent had 30 separate and unchallenged registrations for the GUCCI mark in Singapore, which is indicative of the extent of the Opponent's actual or potential business activities.
Section 8(4)(b)(ii) of the Trade Marks Act
The second sub-ground of refusal in Section 8(4)(b)(ii) of the Trade Marks Act is available to proprietors of earlier trade marks which have attained the "coveted" status of being well-known to the public at large in Singapore. A trade mark shall not be registered if its use would cause dilution in an unfair manner of the distinctive character of the earlier trade mark; or would take unfair advantage of the distinctive character of the earlier trade mark.
On this ground, the Registrar was satisfied that the Opponent's GUCCI mark is well-known to the public at large in Singapore, taking into account the extensive advertising and promotion, as well as the widespread editorial and social media coverage of the mark.
The Registrar rejected the Applicant's submission that the Opponent had not submitted survey evidence as to the degree to which the GUCCI mark is well known to the public at large in Singapore. The Registrar emphasised that there is "far more than sufficient evidence" before the tribunal, and "it is of no further assistance to adduce yet more".
In addition, the Registrar found that the use of the Applicant's Mark would "dilute the distinctiveness of the Opponent's marks by depriving the Opponent of the exclusivity it currently has in the registration and use of the word GUCCI as an indication of origin of goods and services".
The Registrar was also satisfied that the Applicant would obtain an unfair advantage as a result of the public misapprehension when seeing the word GUCCI within the Applicant's mark.
Passing Off
The third ground of opposition was that the use of the Applicant's Mark would be liable to be prevented through the law of passing off.
The Registrar applied the classical trinity of establishing goodwill, misrepresentation and damage to found a passing off claim. In so doing, however, the Registrar emphasised that the assessment of passing off in an opposition action is a notional exercise. The Registrar must consider, on the basis of the facts before it, whether a passing off action brought by the Opponent in respect of the notional and fair use of the Applicant's Mark would be likely to succeed.
First, in terms of goodwill, the Registrar took into account not only the Opponent's registered trade marks, but also "the full extent of the Opponent's position in the marketplace at the relevant time". The Registrar gave due consideration to the Opponent's ownership of a number of 'GUCCI[plus]' registered trade marks, such as GUCCI TIMEPIECES, GUCCI RUSH and GUCCI FLORA.
Importantly, the Applicant did not contest that the evidence shows that the Opponent is the owner of valuable goodwill in Singapore.
Second, the Registrar found that the element of misrepresentation has been established. The basis of the Registrar's finding was the same as that for the finding that there is a likelihood of confusion above.
Naturally, the Registrar was then also satisfied that there is a "real tangible risk of substantial damage" being caused to the Opponent as a result of such misrepresentation.
Bad Faith
Finally, the Opponent contended that the Applicant had applied for its Mark in bad faith.
The Registrar was not satisfied on the evidence that there was bad faith on the Applicant's part.
The Registrar commented that the Applicant "has gambled on how the law and the facts would be interpreted, as does any business that uses in whole or in part another’s trade mark", but "it was not so unreasonable a gamble as to justify a finding of bad faith".
Costs
Notwithstanding that the Registrar found in the Opponent's favour, the Registrar chose to depart from the usual order that costs follow the event, and declined to award costs to the Opponent. The Registrar instead ordered that each party bears its own costs in the proceedings.
The Registrar considered that the case was "albeit perhaps unintentionally, a potentially oppressive use of the opposition procedure", on account of the voluminous exhibits (comprising 6,852 pages) tendered by the Opponent, a significant part of which the Registrar found was "has no relevance to these proceedings or is needlessly excessive and duplicative".
The Registrar warned against the "impulse to bury the tribunal and the opposing party in material that is irrelevant or excessive".
Comments
This case is significant not only in terms of the legal principles that it affirms, but also as a timely reminder to clients and their solicitors not to use a sledgehammer to crack a nut in legal proceedings.
Such observations are particularly applicable to actions before the Intellectual Property Office of Singapore, which is intended to be a low cost tribunal for the effective resolution of intellectual property disputes.
This decision also provides helpful clarification that survey evidence is not a pre- requisite in cases where it is asserted that a particular trade mark is well-known or well-known to the public at large in Singapore. In fact, the Registrar commended the Opponent's counsel for resisting the temptation to adduce survey evidence. Once there is sufficient relevant evidence before the tribunal on the basis of which it can conclude that a particular trade mark is well-known, it is of no further assistance to adduce yet more.
For further information, please contact:
Andy Leck, Principal, Baker & McKenzie.Wong & Leow
andy.leck@bakermckenzie.com
