Legal Updates

1. 1. Registered a trademark? What if you see another sign resembling your trademark being used by another business?  Read on to find out if you have a potential infringement claim and what you can do as a trademark owner.

   2. The provisions of section 27(1) and (2) of the Trade Marks Act is reproduced below for ease of reference:

      7.—(1)  A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, the person uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
      (2)  A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, the person uses in the course of trade a sign where because —(a)        the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or
      (b)        the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,there exists a likelihood of confusion on the part of the public.

   3. In an infringement action, your registered trademark is referred to as a registered “Mark” while that of the other party (“the alleged Infringer”) is referred to as an “Infringing Sign”. The goods sold by the alleged Infringer would be referred to in our discussion here as ‘Infringing Goods’ Here, we will focus on the 2 common actions under the Trade Marks Act (“TMA”), namely s 27(1) and s 27(2) TMA.

      Trade Marks Act	Requirement 1	Requirement 2	Requirement 3	Other Requirements
      S 27(1)	Identical Infringing Sign	Identical goods and/or services	The alleged Infringer uses the Infringing Sign in the course of trade	-
      S 27(2)(a)	Identical Infringing Sign	Similar goods and/or services		Members of the public are likely to be confused because of the similarity of the Mark and Infringing Sign.
      S 27(2)(b)	Similar Infringing Sign	Identical/ similar goods and/or services

      
      Requirement 1 – Identicality and similarity of the Infringing Mark

   4. As long as there are differences between the Mark and the Infringing Sign, the Mark and the Infringing Sign are not considered identical. For example, “Nutella” and “Nutello” are not identical but similar .

   5. The Court will undertake a “mark for mark” comparison for their visual, aural, and conceptual similarities to assess the similarities between the registered Mark and the Infringing Sign. There is no need to prove all three similarities to succeed in a successful infringement claim. [1]

      
      Visual similarity

   6. The Mark and the Infringing Sign are not analysed side by side or in minute detail. Instead, the Court looks at the overall impressions created by the Mark and the Infringing Sign on the “imperfect recollection” of the average consumer.[1] In other words, the Court will be concerned with what an average consumer with imperfect memory will recall when recollecting the Mark.

   7. We illustrate our discussion below with some actual examples of trademarks disputes.
      

      

      
      
      
      
      

      

      
      
      
      
      

       

   8. In this case[1], the Mark and the Infringing Sign were held by the Singapore Court of Appeal to be visually similar because the length, number of words and letters used were identical. The SGCA also clarified that the reversed order of the words and different fonts did not affect the visual similarity.

      
      Aural Similarity

   9. A quantitative evaluation is undertaken to ascertain the number of syllables and the syntax of the mark and the Infringing Sign. Returning to our earlier example, there were 3 syllables in both “Nutello” and “Nutella”[1]. Having regard to the customers’ imperfect recollection and careless pronunciation, the SGCA held that it was plausible for a consumer to regard “Nutello” and “Nutella” as being the same.

      
      Conceptual similarity

   10. Conceptual similarity involves assessing the notions and ideas that inspire the Mark and Infringing Sign.
       

   11. In this case[1],the Singapore High Court held that there was conceptual similarity between the Mark and the Infringing Sign because the crest and crown indicated a sense of class and status.

       
       Requirement 2: Identicality and similarity of goods and services

   12. The comparison to be made is not between the Infringing Goods and the actual goods sold by the owner of the Mark but between the Infringing Goods and the products in respect of which the Mark is registered for. The Court will take a multi-factorial and sensible approach and consider factors such as whether the end users and market research companies will classify the goods and/or services as being in the same sectors. Taking the sale of cigarettes as an example, even if the cigarettes are meant to be marketed to different segments of the consumer market, that would not render the goods unidentical or dissimilar.

       
       Requirement 3: Members of the public are likely to be confused

   13. It has been clarified that the mere fact that the Mark is similar to the Infringing Sign and the goods and/or services under which the Infringing Sign is sold is also similar to the goods and/or services in which the Mark is registered does not automatically give rise to the finding that there would be a likelihood of confusion.[1]

   14. To show such likelihood of confusion, it must be shown that a substantial number of actual or potential purchasers or distributors of goods/services marketed under the Mark will be confused by the Infringing Sign[1] and be led to believe that the goods come from the same or related sources. The Court will put itself into the shoes of the “ordinary, sensible member of the public” to look at all the circumstances including (i) the closeness of the goods; (ii) the impression given by the Mark and Infringing Sign; (iii) the possibility of imperfect recollection and (iv) the risk that the public might believe that the goods come from the same source or economically-linked sources. Steps taken by the alleged Infringer to differentiate his goods from those of the registered trademark proprietor would also be relevant.

The discussion above is provided for general reference only and is not meant to be relied on by any individual as legal advice. If you are a registered proprietor of any trademark and have some concerns relating to trademarks, please consult us for a more specific discussion tailored to your needs and circumstances. We would be happy to see how we can assist further.

1 Ferrero SPA v Sarika Connoisseur Café Pte Ltd [2011] SGHC 176 at [75] and [184]; Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2012] SGCA 56 at [15].
2 Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] SGCA 26 at [40(a)] and [40(b)].
3 Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] SGCA 26 at [40(d)].
4 Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] SGCA 26.
5 Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2012] SGCA at [28].
6 Festina Lotus SA v Romanson Co Ltd [2010] SGHC at [45].
7 The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] SGCA 14 at [25].
8 Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2012] SGCA at [57]; Nation Fittings (M) Sdn Bhd v Oystertec Plc [2005] SGHC 225 at [152] and [169].

Ascentsia Law Corporation
Contacts:
Yip Shee Yin (Director)
9622 9119
yipsheeyin@ascentsialawcorp.com

Low Hong Quan (Associate Director)
6327 5763
lowhongquan@ascentsialawcorp.com

Tan Yan Ru (Associate)
6327 5774
tanyanru@ascentsialawcorp.com