Case Details
- Citation: [2024] SGIPOS 10
- Court: Intellectual Property Office of Singapore
- Date: 2024-12-18
- Judges: Principal Assistant Registrar See Tho Sok Yee
- Plaintiff/Applicant: Penta Security Inc
- Defendant/Opponent: Apple Inc
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2004] SGIPOS 8, [2017] SGIPOS 10, [2024] SGIPOS 1, [2024] SGIPOS 10, [2024] SGIPOS 5
- Judgment Length: 31 pages, 6,928 words
Summary
In this case, Apple Inc opposed the registration of a trademark application by Penta Security Inc for the mark "PENTA" in Class 9 for various computer-related goods. Apple argued that the "PENTA" mark was similar to its earlier "APPLE" trademarks and would likely cause confusion among consumers. The Intellectual Property Office of Singapore had to determine whether the opposition should be successful under several grounds, including Section 8(2)(b) of the Trade Marks Act.
What Were the Facts of This Case?
Penta Security Inc ("the Applicant") applied to register the trademark "PENTA" in Singapore in Class 9 for goods including recorded computer software, computer operating programs, computers, and computer memories. Apple Inc ("the Opponent") opposed the registration, relying on its earlier registered "APPLE" trademarks covering similar computer-related goods.
The Opponent, Apple Inc, is a well-known multinational technology company incorporated in California, USA in 1977. It designs, manufactures, and markets mobile devices, personal computers, and related software and services. Apple has had a significant presence in Singapore since opening its first retail store there in 2017, though its products have been sold through authorized resellers since 2007. The "APPLE" brand is recognized as one of the most valuable in the world.
The Applicant, Penta Security Inc, is a South Korean company incorporated in 1997 that provides IT security offerings, including web and data security products and services under the "WAPPLES" trademark. The "WAPPLES" products were first released in South Korea in 2005 and later distributed in Singapore in 2010. The Applicant was recognized as the "Application Security" winner at the 2020 Fortress Cyber Security Awards.
What Were the Key Legal Issues?
The key legal issues in this case were whether the "PENTA" trademark applied for by the Applicant was:
- Similar to the Opponent's earlier "APPLE" trademarks under Section 8(2)(b) of the Trade Marks Act, such that there was a likelihood of confusion;
- Identical or similar to the Opponent's well-known "APPLE" trademarks and likely to deceive the public under Section 8(4)(b);
- An unauthorized use of the Opponent's reputation under Section 8(7)(a); and
- Applied for in bad faith under Section 7(6).
How Did the Court Analyse the Issues?
The court applied the three-step test set out in the Staywell decision for assessing opposition under Section 8(2)(b):
- Marks-similarity: The court conducted a detailed analysis of the visual, aural, and conceptual similarity between the "PENTA" and "APPLE" marks. It found that while there were some visual and aural differences, the marks were conceptually similar as they both incorporated a common English word.
- Goods-similarity: The court determined that the goods covered by the "PENTA" application were identical or highly similar to those protected by the Opponent's earlier "APPLE" trademarks.
- Likelihood of confusion: Considering the reputation of the "APPLE" brand, the nature of the goods, and the conceptual similarity of the marks, the court concluded that there was a likelihood of confusion among consumers.
On the other grounds of opposition, the court found that:
- The "PENTA" mark was not identical or similar enough to the Opponent's well-known "APPLE" marks to satisfy the requirements of Section 8(4)(b).
- The Applicant's use of the "PENTA" mark did not amount to unauthorized use of the Opponent's reputation under Section 8(7)(a).
- There was insufficient evidence to conclude the application was filed in bad faith under Section 7(6).
What Was the Outcome?
The Intellectual Property Office of Singapore upheld the opposition under Section 8(2)(b), finding that the "PENTA" mark was similar to the Opponent's earlier "APPLE" trademarks, the goods were identical or similar, and there was a likelihood of confusion among consumers. As a result, the application to register the "PENTA" trademark was refused.
The opposition was dismissed on the other grounds under Sections 8(4)(b), 8(7)(a), and 7(6).
Why Does This Case Matter?
This case provides valuable guidance on the application of the three-step test under Section 8(2)(b) of the Singapore Trade Marks Act. It demonstrates the importance of considering not just the visual and aural similarities between marks, but also their conceptual similarity, especially when a common English word is incorporated into an invented mark.
The judgment also highlights the high bar for establishing that a mark is similar to a well-known trademark under Section 8(4)(b), as well as the difficulty in proving bad faith filing under Section 7(6). This case will be a useful reference for trademark practitioners advising clients on opposition proceedings in Singapore.
Legislation Referenced
Cases Cited
- [2004] SGIPOS 8
- [2017] SGIPOS 10
- [2024] SGIPOS 1
- [2024] SGIPOS 10
- [2024] SGIPOS 5
- Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911
Source Documents
This article analyses [2024] SGIPOS 10 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.