- What happens when a brand owner successfully registers a mark in relation to goods or services that it is somewhat descriptive of? How far can they go to assert their rights and to prevent other traders from using the word in their products and what are the effects of disclaimers in opposition and infringement proceedings?
- This case seeks to address some of these issues but left many questions unanswered. Till such time an appellate court addresses the questions more extensively, this case merely adds itself to a list of cases that have sought to resolve the position of disclaimers in trade mark law but have yet to conclusively characterise its purpose.
II. BRIEF FACTS OF THE CASE
- The Opponents are a fashion and accessories business originating from Spain and alleges that they own a well-known MANGO trade mark, in particular that they own (the “Opponents’ Earlier Mark 1”) and (“Opponents’ Earlier Mark 2”) for various products in Singapore, including for cosmetics in Class 3 .
- The Opponents sought to oppose the Applicants’ trade mark application for “MANGO SEED THEFACESHOP” (word mark) (the “Applicants’ Mark”) in Class 3 for mainly cosmetics related specifications based on their earlier MANGO registrations for similar goods under Class 3.
- The Applicants, a South Korean company in the skin care and cosmetics business, had written to the Registrar to request to disclaim the words for “MANGO SEED” in their mark in Class 3 on 13 January 2017 (which request was made after the opposition was filed and in fact after a hearing was set for 28 March 2017, i.e. after all evidence has been submitted).
- The Registrar had then written to the Opponents to seek their comments on the disclaimer requested and the Opponents had responded on 20 January 2017 that the disclaimer does not change their position regarding the opposition proceedings. The disclaimer was then entered onto the Register on 1 February 2017.
- Preliminary Issue: the disclaimer for “MANGO SEED”
- The Opponents had sought to claim that the Applicants were not entitled to enter the disclaimer under s 14 of the Trade Marks Act (Cap. 332, Rev. Ed. 2005) (the “TMA”). Furthermore, after the disclaimer was entered, no request was made to redefine the boundaries of the current opposition through amendments of the pleadings. Lastly, that the disclaimer was only filed 3 years after the Applicants filed their application for the Applicants’ Mark and after all pleadings were closed, which is an abuse of process.
- Opponents’ argument that disclaimer is not allowed under section 14 of the TMA
- In relation to s 14 of the TMA, the PAR has clarified that this is not the applicable section in relation to disclaimers; section 30 is the applicable section. The PAR then went on to examine the issue of whether a disclaimer should be taken into account in determining whether the marks are confusingly similar such that a likelihood of confusion will arise.
- The PAR noted that there are two lines of cases determined at the Registry level and there has been no higher court decision in this regard. Cases like Hu Kim Ai and Coffee Club suggests that disclaimers should not be taken into account in the determination of similarity and is only an indication that the applicant does not have proprietary interest in the disclaimed element. Meanwhile, the case of Pirelli suggests that an objection based upon an earlier registration cannot succeed if the only similarity between the two marks is the disclaimed element.
- Upon reviewing UK case law, the PAR concluded that the position taken in Pirelli is the correct position.
- However, the PAR noted that in this case, the Applicants are the ones who had entered the disclaimer and not the Opponents. As such, whether the disclaimer over the words “MANGO SEEDS” that covers the entire element of similarity (i.e. the word “mango”) should deprive the Opponents of their right to assert proprietary rights over the word “mango” remains a question to be decided.
- In this regard, the PAR left the question open as no submissions were made by either party on this point. In any event, the PAR was of the view that even if the disclaimer was not taken into account, the marks are more dissimilar than similar.
- Opponents’ argument that no request was made to amend the boundaries of the opposition
- It was noted that the Opponents had not raised this objection when the Registrar had written to them for their comments when the disclaimer was being entered.
- Further to the above, the Opponents also submitted that the disclaimer does not affect the opposition proceedings and as discussed above, the PAR is of the same view albeit for different reasons.
- Opponents’ argument that this was an abuse of process
- Although it was argued that the disclaimer should have been filed by the Applicants during the examination process, the Registry noted that s 30 of the TMA appears to contemplate that a disclaimer may be requested at any stage of the registration process, even after registration has been granted.
- Similarity of the Marks
- In determining whether the marks were similar, the PAR (following Staywell ) also had to consider the degree of distinctiveness of the marks involved. In this regard, the PAR was of the view that the Opponents’ Earlier Mark 1 for “MANGO” was relatively descriptively of the goods in Class 3. While the Opponents had adduced sales figures to show acquired distinctiveness, the PAR noted that it was unclear whether these sales figures were related to Class 3 goods.
- On the other hand, the PAR stated that the Applicants’ Mark was more distinctiveness, as she found that the words “THEFACESHOP” was the dominant component of the Applicants’ Mark.
- Given the above, the Opponents’ Earlier Mark 1 was held to be more dissimilar to the Applicants’ Mark than they were similar on a whole.
- With regards to the Opponents’ Earlier Mark 2 for “MANGO ADORABLY”, the PAR was of the view that the word “adorably”, having taken up about 40% of the mark, is as distinctive as the word “mango” and would in fact serve to differentiate the Opponents’ Earlier Mark 2 from the Applicants’ Mark.
- The PAR was therefore also of the view that the marks were more dissimilar than similar, even more so that in comparison to the Opponents’ Earlier Mark 1.
- Similarity of the Good
- Given the specifications filed for both the Opponents’ Marks and the Applicants’ Mark, the PAR had no difficulty finding that there were identical and similar goods covered under Class 3.
- s 8(2)(b): Likelihood of Confusion
- Taking into account all the circumstances of the case as well as the evidence of sales and promotional figures tendered by the Opponents, the PAR was not convinced that the Opponents have proven that there is a reputation for their mark in Class 3 goods. The PAR also rightfully cautioned (citing Staywell) that reputation may not always be in the favour of the Opponents.
- While the PAR discussed various factors in determining that there is no likelihood of confusion. The PAR placed particular emphasis on the fact that the relevant Class 3 goods, being cosmetics and face/body care products, are highly personal products that will require particular attention when consumers are purchasing them. While these products are typically not very expensive, they are not cheap either and more importantly, a wrong purchase may lead to adverse consequences on the consumer’s health and appearance.
- The PAR further noted that even though these products may generally be sold as off-the-shelf products, there are always professionals present to help consumers make choices to determine the more suitable products.
- It was also pointed out that given the personal nature of such products, consumers would pay particular attention to the brand of the products because they may trust certain brands more than others and will ensure that they are purchasing from the correct brand.
- Given the above reasons, the PAR found that there was no likelihood of confusion and hence the ground of opposition under s 8(2)(b) cannot succeed.
- s 8(4)(b)(i): Well-known in Singapore
- Although the PAR already found the Opponents’ Marks to be more dissimilar than similar to the Applicants’ Mark, the PAR went on to analyse whether the Opponents’ Marks satisfied the criteria of being “well-known in Singapore”.
- The PAR concluded that the sales and promotional figures tendered as evidence by the Opponents reflects a strong sales of the Opponents’ goods in Singapore. However, the PAR noted that the invoices generally depicted the Opponents’ Earlier Mark 1. The PAR thus found that the Opponents’ Earlier Mark 1 would be considered well-known in Singapore but this is not the case for the Opponents’ Earlier Mark 2 (for “MANGO ADBORABLY”).
- In relation to whether there would be any confusing connection between the Opponents’ Marks and the Applicants’ Mark, the PAR was of the view that there would be no such confusing connection for reasons that are similar to those stated in relation to the likelihood of confusion test under s 8(2)(b) above. As a result, there would also be no likelihood of damage and thus this ground of opposition must fail as well.
- s 8(4)(b)(ii): Well-known to the public at large
- Similarly on this ground, despite already finding that the Opponents’ Marks are more dissimilar than similar to the Applicants’ Mark, the PAR nonetheless gave an analysis on the other elements of this ground of opposition.
- As the PAR had found that the Opponents’ Earlier Mark 2 was not well-known in Singapore, it clearly would follow that the said mark cannot be well-known to the public at large.
- With regards to the Opponents’ Earlier Mark 1, while the PAR acknowledged that the Opponents’ sales figure in Singapore were substantial, the PAR was unable to conclude that the Opponents’ Earlier Mark had satisfied the criteria to be considered a mark of the “rare and exclusive class” — that is a trade mark “well-known to the public at large”.
- The PAR also noted that the worldwide evidence of sales and promotional figures as well as accolades were impressive but the Opponents failed to draw a link between these evidence and the Singapore context. Even though the Opponents did simply state that “Singaporeans travel extensively to Europe and many other countries…”, the same was unsupported by evidence and the Opponents had failed to make a connection between the travel habits of Singaporeans and the fame enjoyed by its trade mark in Singapore.
- s 8(7)(a): Applicants’ Mark should not be allowed registration on the ground of passing off
- In relation to this ground of opposition, essentially the Opponents had to prove that there was passing off by the Applicants. To this end, there is no dispute that the Opponents’ have satisfied the goodwill limb of the passing off test given their sales and promotional figures in Singapore.
- However, the PAR found that there was no misrepresentation on the Applicants’ part for reasons that are similar to those as stated in her “likelihood of confusion” and “confusing connection” analyses for the grounds of opposition raised under s 8(2)(b) and s 8(4)(b)(i) respectively.
- The PAR considered the Opponents’ argument that the word “MANGO” is distinctive of the Opponents’ goods, goodwill is associated to the same, and the Applicant intended to create confusion between the parties’ business by suggesting that the Applicants’ business is an extension or otherwise connected to the Opponents’ business.
- Nonetheless, after considering all the circumstances of the matter, the PAR was unable to accept the argument above and placed some importance on the inclusion of the word “SEED” in the Applicants’ Mark. At the same time, the PAR noted that the Opponents consistently used their mark as “MANGO” only, without references to parts of a mango fruit such as the seed. In this regard, the PAR found that there would be no likelihood of misrepresentation such that the Applicants will be viewed as economically linked to the Opponents.
- This case demonstrates the inefficacies of the disclaimer system in trade mark registration. Where a term is descriptive of the goods or services it is to be used in relation to, the Registry should ideally be more consistent in ensuring that disclaimers of such terms are either always required before the marks are granted registration or are left to be governed by the descriptiveness doctrine under the trade mark laws. An inconsistent approach in administering the disclaimer system may result in uncertainty for trade mark owners who have registered trade marks containing descriptive components and/or disclaimers.
- The PAR further raised a question as to whether a disclaimer voluntarily included in a later mark can be used as a basis to curtail the exclusive rights of an earlier trade mark. The answer would likely be in the negative. If an earlier registration is not subjected to a disclaimer, it would mean that under the TMA, the owner enjoys exclusive rights to use the mark in relation to the goods and services it is registered for. A subsequent trader seeking to register a trade mark that is similar or identical to the earlier mark should not be allowed to bypass this exclusivity by simply inserting a disclaimer at their own discretion as this would significantly discount the effects of the entire trade mark registration regime.
- With regards to the ground of opposition relying s 8(7)(a) in relation to passing off, in reaching the conclusion that there was no misrepresentation, one of the PAR’s considerations was that the Opponents consistently used only the word “mango” without referring to other parts of the fruit while the Applicant had used the words “mango seed”.
- The risk of such reasoning may be a preclusion of the Opponents’ ability to enforce their rights against other similar marks. It cannot be said that in all cases where another trader uses a mark referring to a specific part of the mango fruit, there will be no misrepresentation simply because the Opponents do not use their mark in reference to other parts of the fruit.
- Furthermore, as the PAR herself noted, based on her other findings in relation to the “likelihood of confusion” limb under the other grounds of opposition and the overall circumstances of the case, the Opponent is unlikely to succeed in showing that there is misrepresentation. There was thus little need for the PAR to have placed reliance on the fact that the Applicants included the word “seed” in their mark while the Opponents consistently used only the word “mango”.
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 See list of Opponents’ earlier marks in Schedule.
 Hu Kim Ai v Liew Yew Thoong  SGIPOS 11.
 Hiang Kie Pte Ltd assigned to Coffee Club Private Limited v PT Super World Wide Foodstuff Industries  SGIPOS 10.
 Pirelli & C. S.P.A. v Tao, Hsiu-Chih  SGIPOS 7.
 Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide  1 SLR 911.