28 January, 2016
Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2015] SGHC 216
The High Court in Singapore has ruled that two separate registered trade marks cannot be combined to form the basis of opposing an applicant’s trade mark allegedly similar to the notional combined mark. This raises important considerations for brand owners seeking to register the component parts of a trade mark separately, purportedly with a view to securing optimal protection.
In this case, Rovio Entertainment Ltd. (﴾“Opponent”)﴿, the creator of the globally successful Angry Birds franchise, had obtained separate registrations in Singapore for trade marks covering goods which included “flour and preparations made from cereals”, as well as “bread, pastry and confectioner y”.
A year later, Kimanis Food Industries Sdn. Bhd. (﴾“Applicant”)﴿ applied to register a trade mark, covering “flour based savour y snacks”, “cereal based snack food” and “flour confectionary” in Singapore (﴾“Application”)﴿:
Having failed to prevent registration of the Angry Bite Mark in opposition proceedings against the Application before the Intellectual Property Office of Singapore (﴾“IPOS”)﴿, the Opponent appealed to the High Court against the decision of IPOS to allow the Application.
In essence, the Opponent argued that the Angry Bite Mark was similar to a combination of the Red Bird Mark and the Angry Birds Word Mark which, although separately registered, were used together in practice, so that the Angry Bite Mark ought to be disallowed registration on that basis.
The Court rejected this argument, emphasising the importance of certainty as to what exactly is protected by registration; to allow the Opponent to claim proprietary rights over a composite of two separately registered marks would create considerable uncertainty and was therefore undesirable. Denying the Opponent such rights, the Court went on to separately compare each of the Opponent’s registered marks with the Applicant’s Angry Bite Mark, and found that there was no confusing similarity between them. The Court accordingly upheld the earlier decision of IPOS and allowed the Application.
Despite its resounding resistance against allowing protection over a combination of separately registered marks, the Court suggested in obiter that even if the Angry Bite Mark were compared against a combination of the Red Bird Mark and the Angry Bird Mark, it would have found, on the facts, that the marks were not confusingly similar. Hence, while the Opponent may not have fared any better even if it had registered a combination of the Red Bird Mark and the Angry Bird Mark, the lesson to be drawn from this case is clear – brand owners need to be vigilant in seeking registration of the various permutations of marks that they use in practice, even if these evolve over time. Indeed, the Court was explicit that this expectation of businesses would not be unduly onerous or “unfair”.
For further information, please contact:
Joyce Tan, Partner, Joyce A Tan & Partners
