Case Details
- Citation: [2019] SGIPOS 11
- Court: Intellectual Property Office of Singapore
- Date: 2019-06-18
- Judges: Ong Sheng Li, Gabriel, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Société Des Produits Nestlé S.A.
- Defendant/Opponent: Abbott Laboratories
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2001] SGIPOS 4, [2017] SGIPOS 3, [2018] SGIPOS 9, [2019] SGIPOS 11
- Judgment Length: 17 pages, 8,460 words
Summary
In this case, the Intellectual Property Office of Singapore (IPOS) considered an opposition by global healthcare company Abbott Laboratories against the registration of the trademark "HM-O" by Société Des Produits Nestlé S.A. for goods in Classes 5 and 29. The key issue was whether "HM-O" was descriptive and/or non-distinctive of the registered goods, which included nutritional supplements, infant formula, and dairy products.
The Opponent argued that "HM-O" was an abbreviation for "human milk oligosaccharides", a component of human breast milk, and therefore the mark was descriptive and lacked distinctiveness. The Applicant countered that the presence of the hyphen distinguished "HM-O" from the abbreviation "HMO", and that average consumers would not recognize the connection to human milk oligosaccharides.
Ultimately, the IPOS Hearing Officer found that the relevant date for assessing descriptiveness and distinctiveness was the date of the subsequent designation, April 24, 2017. Applying the relevant legal principles, the Hearing Officer concluded that "HM-O" was not descriptive under Section 7(1)(c) of the Trade Marks Act, nor was it devoid of distinctive character under Section 7(1)(b). Accordingly, the opposition was dismissed, and the "HM-O" trademark was allowed to proceed to registration.
What Were the Facts of This Case?
The Applicant, Société Des Produits Nestlé S.A., is part of the Nestlé group of companies, one of the largest food and beverage groups in the world. On April 24, 2017, the Applicant applied to register the trademark "HM-O" in Singapore in Classes 5 and 29 for a range of goods including nutritional supplements, infant formula, and dairy products.
The Opponent, Abbott Laboratories, is a global healthcare company based in the United States. Abbott opposed the registration of the "HM-O" trademark, arguing that it was descriptive and/or non-distinctive of the registered goods.
The parties were already embroiled in trademark opposition and cancellation disputes in several other jurisdictions, including Brazil, Ecuador, Panama, Colombia, Vietnam, Peru, and Costa Rica. In each case, the Opponent had raised similar grounds of attack against the "HM-O" mark, largely based on the premise that "HMO" was an abbreviation for "human milk oligosaccharides".
The Applicant had successfully registered the "HM-O" mark in various other countries, including the European Union, United Kingdom, and Switzerland, without the Opponent challenging its registrability in those jurisdictions. However, the Applicant had faced some trade mark office objections to "HM-O" in other markets.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the trademark "HM-O" was descriptive of the registered goods under Section 7(1)(c) of the Trade Marks Act, which prohibits the registration of marks that "consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services".
2. Whether the trademark "HM-O" was devoid of any distinctive character under Section 7(1)(b) of the Trade Marks Act, which prohibits the registration of "trade marks which are devoid of any distinctive character".
3. The relevant date for assessing the descriptiveness and distinctiveness of the "HM-O" mark, given that it was the subject of a subsequent designation under an international registration.
How Did the Court Analyse the Issues?
The Hearing Officer first addressed the issue of the relevant date for assessing descriptiveness and distinctiveness. He noted that in cases involving a subsequent designation under an international registration, the relevant date is the date on which the request for subsequent designation was recorded in the International Register, which in this case was April 24, 2017.
Turning to the ground of opposition under Section 7(1)(c) (descriptiveness), the Hearing Officer outlined the key principles, noting that a sign must be refused registration under this provision if at least one of its possible meanings designates a characteristic of the goods concerned. He emphasized that the situations listed in Section 7(1)(c) are not exhaustive, and the provision covers any descriptive characteristic, regardless of whether it is explicitly mentioned in the statute.
The Hearing Officer carefully considered the evidence submitted by both parties regarding the meaning and perception of "HMO" and "HM-O" among consumers. He noted that while the Opponent had provided evidence showing that "HMO" was an abbreviation for "human milk oligosaccharides" in the scientific and medical community, the Applicant had argued that this did not necessarily translate to how average consumers in Singapore would perceive the term.
Ultimately, the Hearing Officer found that the presence of the hyphen in "HM-O" was a distinguishing factor that prevented the mark from being considered descriptive under Section 7(1)(c). He concluded that the Opponent had not shown that average consumers in Singapore would recognize "HM-O" as directly designating a characteristic of the registered goods.
Regarding the ground of opposition under Section 7(1)(b) (lack of distinctiveness), the Hearing Officer noted the overlap between this ground and the descriptiveness objection under Section 7(1)(c). He found that since "HM-O" was not descriptive, it also possessed the requisite degree of distinctiveness to be registrable under Section 7(1)(b).
What Was the Outcome?
The Hearing Officer dismissed the opposition and allowed the "HM-O" trademark to proceed to registration. He found that the Opponent had failed to establish that the mark was descriptive under Section 7(1)(c) or devoid of distinctive character under Section 7(1)(b) of the Trade Marks Act.
Why Does This Case Matter?
This case provides valuable guidance on the assessment of descriptiveness and distinctiveness of trademarks, particularly in the context of subsequent designations under the international registration system. The Hearing Officer's analysis of the role of the hyphen in distinguishing "HM-O" from the abbreviation "HMO" is noteworthy, as it highlights the importance of considering the mark as a whole when evaluating these grounds of opposition.
The case also underscores the principle that the mere fact that a term may have a descriptive meaning in a specialized field does not necessarily mean it will be perceived as descriptive by average consumers. This is an important consideration for brand owners seeking to protect their trademarks, as it suggests that the relevant consumer perception, rather than just the inherent meaning of the term, is a crucial factor in the assessment.
More broadly, the decision reinforces the need for trademark owners to carefully consider the potential descriptiveness and distinctiveness of their marks, particularly when seeking to register them in new jurisdictions. The Opponent's unsuccessful challenges to the "HM-O" mark in various countries highlight the importance of a thorough and well-reasoned approach to trademark opposition proceedings.
Legislation Referenced
- Trade Marks Act (Cap. 332, Rev Ed 2005)
- Trade Marks (International Registration) Rules (Cap. 332, R 3, Rev. Ed. 2002)
Cases Cited
- [2001] SGIPOS 4
- [2017] SGIPOS 3
- [2018] SGIPOS 9
- [2019] SGIPOS 11
- [2008] 1 SLR(R) 561
- [2015] 2 SLR 825
Source Documents
This article analyses [2019] SGIPOS 11 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.