Case Details
- Citation: [2024] SGIPOS 6
- Court: Intellectual Property Office of Singapore
- Date: 2024-08-08
- Judges: Principal Assistant Registrar Ong Sheng Li, Gabriel
- Plaintiff/Applicant: Survivalverse Pte Ltd
- Defendant/Opponent: Amazon Technologies Inc
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act 1998
- Cases Cited: [2018] SGIPOS 2, [2018] SGIPOS 9, [2021] SGIPOS 6, [2024] SGIPOS 6, [2014] 1 SLR 911, [2013] 1 SLR 531, [2013] 2 SLR 941, [2017] 2 SLR 308, [2023] 5 SLR 513
- Judgment Length: 28 pages, 6,395 words
Summary
This case concerns an opposition filed by Amazon Technologies Inc against a trade mark application by Survivalverse Pte Ltd to register the mark " " in Class 09 for "software" and Class 41 for "providing online computer games". The Opponent argued that the Application Mark is similar to its earlier registered "AMAZON" trade mark, and that its registration would likely cause confusion among consumers. After analyzing the visual, aural, and conceptual similarity of the marks, as well as the identity of the goods and services, the Intellectual Property Office of Singapore found in favor of the Opponent and refused registration of the Application Mark.
What Were the Facts of This Case?
The Opponent, Amazon Technologies Inc, is an affiliate of the Amazon.com Inc group of companies. Amazon is a multinational e-commerce and technology company founded in 1994, and is one of the largest companies in the world. Amazon has been operating an e-commerce website accessible to consumers worldwide, including in Singapore, since 1994. Over time, Amazon has expanded into various industries beyond its initial core business, including the computer games industry.
The Applicant, Survivalverse Pte Ltd, is a games software publisher that develops blockchain-based video games and software. On 8 December 2021, AMC Asia (SG) Pte Ltd applied to register the Application Mark " ", which was subsequently transferred to the Applicant. The Applicant stated that the Application Mark was meant to be used in connection with an Amazon rainforest-themed video game world, as part of a series of game world locations set within a fictional "SURVIVAL VERSE".
The Opponent filed an opposition against the registration of the Application Mark, raising four grounds under the Trade Marks Act 1998: sections 8(2)(b), 8(4)(b)(i), 8(4)(b)(ii), and 8(7)(a). The cornerstone of the Opponent's case was that the Application Mark conflicts with its numerous earlier trade mark registrations comprising or containing the word "AMAZON", chief among them the plain word mark "AMAZON".
What Were the Key Legal Issues?
The key legal issue in this case was whether the Application Mark " " is similar to the Opponent's earlier registered "AMAZON" trade mark, and whether its registration would result in a likelihood of confusion among consumers, thereby warranting refusal under section 8(2)(b) of the Trade Marks Act 1998.
The assessment of marks-similarity involves three steps: (1) whether the competing marks are similar; (2) whether the goods/services are identical or similar; and (3) whether there is a likelihood of confusion arising from the foregoing. All three steps must be established for the opposition under this ground to succeed.
How Did the Court Analyse the Issues?
The tribunal began its analysis by examining the visual, aural, and conceptual similarity of the marks. On visual similarity, the tribunal found that the " " element is the dominant and distinctive component of the Application Mark, while the " " element is much smaller in comparison. Considering the principle of imperfect recollection, the tribunal concluded that average consumers would likely focus on the dominant " " element, rendering the marks visually similar to a high degree.
On aural similarity, the tribunal noted that the Application Mark would be pronounced as "survival verse", while the Opponent's "AMAZON" mark would be pronounced as "amazon". The tribunal found that the aural differences were not sufficient to outweigh the visual similarity, particularly given the likelihood that consumers would refer to the Application Mark by the dominant " " element.
Conceptually, the tribunal acknowledged that the Application Mark makes reference to the "Amazon rainforest" theme, while the Opponent's "AMAZON" mark has no such conceptual association. However, the tribunal held that the conceptual differences were not enough to offset the high degree of visual and aural similarity between the marks.
Having found the marks to be similar, the tribunal then considered the identity of the goods and services covered by the respective marks. The tribunal noted that the goods and services were identical, as both covered computer software and online computer games.
Lastly, the tribunal assessed the likelihood of confusion. Considering the high degree of marks-similarity and the identity of the goods and services, the tribunal concluded that a likelihood of confusion would result, and therefore the opposition under section 8(2)(b) should succeed.
What Was the Outcome?
The tribunal allowed the opposition under section 8(2)(b) of the Trade Marks Act 1998 and accordingly refused registration of the Application Mark " ". The tribunal found that the Application Mark is similar to the Opponent's earlier registered "AMAZON" trade mark, the goods and services are identical, and there is a likelihood of confusion among consumers.
Why Does This Case Matter?
This case provides valuable guidance on the assessment of marks-similarity under section 8(2)(b) of the Trade Marks Act 1998. It reaffirms the three-step test established in the Staywell decision, and clarifies the role of distinctiveness in the marks-similarity inquiry.
The tribunal's analysis of visual, aural, and conceptual similarity, as well as its consideration of the identity of goods and services and the likelihood of confusion, offers a comprehensive framework for evaluating conflicts between trade marks. This decision will be a useful reference for trade mark practitioners and applicants when navigating the registration process and assessing the risk of opposition.
Furthermore, the case highlights the importance of brand protection for large multinational companies like Amazon, which have built significant goodwill and reputation in their trade marks. The tribunal's finding that the Application Mark was too similar to Amazon's well-known "AMAZON" mark underscores the need for such companies to vigilantly monitor and defend their intellectual property rights.
Legislation Referenced
Cases Cited
- [2018] SGIPOS 2
- [2018] SGIPOS 9
- [2021] SGIPOS 6
- [2024] SGIPOS 6
- [2014] 1 SLR 911 (Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide)
- [2013] 1 SLR 531 (Sarika Connoisseur Café Pte Ltd v Ferrero SpA)
- [2013] 2 SLR 941 (Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd)
- [2017] 2 SLR 308 (Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd)
- [2023] 5 SLR 513 (V V Technology Pte Ltd v Twitter, Inc)
Source Documents
This article analyses [2024] SGIPOS 6 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.