Case Details
- Citation: [2022] SGIPOS 18
- Court: Intellectual Property Office of Singapore
- Date: 2022-11-30
- Judges: Not specified
- Plaintiff/Applicant: Aramara Beauty LLC (dba Glow Recipe)
- Defendant/Respondent: Sinchen Group Pte. Ltd.
- Legal Areas: Trade marks and trade names – Invalidation
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2022] SGIPOS 18
- Judgment Length: 7 pages, 2,607 words
Summary
In this case, Aramara Beauty LLC (dba Glow Recipe), a US-based company, applied for a declaration of invalidity against the registration of a trade mark by Sinchen Group Pte. Ltd., a Singaporean company. The key issue was whether Glow Recipe's unregistered "GLOW RECIPE" mark should be considered a well-known trade mark, and whether there was a likelihood of confusion between the two marks. The Intellectual Property Office of Singapore ultimately found in favor of Glow Recipe, ruling that the registration of the similar "GLOW RECIPE" mark by Sinchen Group should be declared invalid.
What Were the Facts of This Case?
Aramara Beauty LLC, doing business as Glow Recipe, is a company incorporated in New York, United States. Glow Recipe operates an online store at www.glowrecipe.com and also has pop-up retail stores, as well as sales channels through other platforms like Amazon and Sephora. Glow Recipe's products have been featured and reviewed in various Singapore media outlets like Daily Vanity, Harper's Bazaar Singapore, Her World, and Tatler Asia since 2016-2018, before the relevant date in this case.
Sinchen Group Pte. Ltd., a Singaporean company, registered the trade mark "GLOW RECIPE" in Singapore under Trade Mark No. 40201917164W on August 8, 2019. The registration covered goods in Classes 3, 5, and 32, including beauty products, dietary supplements, and beverages.
Glow Recipe applied for a declaration of invalidity against Sinchen Group's trade mark registration, citing several grounds under the Trade Marks Act, including that Glow Recipe's unregistered "GLOW RECIPE" mark was well-known in Singapore and that there was a likelihood of confusion between the two marks.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether Glow Recipe's "GLOW RECIPE" mark should be considered a well-known trade mark in Singapore, even though it was unregistered.
- Whether there was a likelihood of confusion between Glow Recipe's well-known mark and Sinchen Group's identical registered mark, given the similarity of the goods and services covered.
How Did the Court Analyse the Issues?
The Intellectual Property Office of Singapore (IPOS) noted that in typical invalidation cases, the applicant bears the burden of proving the facts it alleges. However, in this case, the respondent (Sinchen Group) was deemed to have admitted to the facts alleged by the applicant (Glow Recipe) under Trade Marks Rule 59(2)(d), as Sinchen Group failed to provide proof of serving its evidence on Glow Recipe as required.
Regarding the first issue, IPOS found that Glow Recipe's "GLOW RECIPE" mark qualified as a well-known trade mark under the definition in the Trade Marks Act. Glow Recipe, as a company incorporated in the United States (a Convention country), owned an unregistered trade mark that was well-known in Singapore prior to the relevant date. This was evidenced by Glow Recipe's online presence, media coverage, and sales channels in Singapore since 2016-2018.
On the second issue, IPOS determined that the Subject Mark registered by Sinchen Group was identical to Glow Recipe's well-known "GLOW RECIPE" mark. Additionally, the goods covered by Sinchen Group's registration were similar to the goods and services for which Glow Recipe's mark was protected. Therefore, IPOS concluded that the conditions of Section 8(2)(a) of the Trade Marks Act were satisfied, and there was a likelihood of confusion on the part of the public.
What Was the Outcome?
Based on the analysis, IPOS ruled that Sinchen Group's trade mark registration should be declared invalid under Section 23(3)(a)(i) of the Trade Marks Act. The registration was found to be in violation of Section 8(2)(a) of the Act, as it was identical to Glow Recipe's well-known unregistered trade mark and covered similar goods, thereby creating a likelihood of confusion among consumers.
Why Does This Case Matter?
This case is significant for several reasons:
- Protection of Well-Known Unregistered Marks: The decision highlights that unregistered trade marks can be afforded protection in Singapore if they are well-known, even if the owner is not based in Singapore. This provides an important safeguard for brand owners, especially smaller or newer companies, against the registration of confusingly similar marks by third parties.
- Likelihood of Confusion: The case demonstrates that the test for likelihood of confusion under Section 8(2)(a) of the Trade Marks Act can be satisfied even when the marks are identical, and the goods and services are similar, regardless of whether the earlier mark is registered or unregistered.
- Consequences of Non-Compliance: The decision underscores the importance of complying with procedural requirements in trade mark proceedings. Sinchen Group's failure to serve its evidence on Glow Recipe resulted in the former being deemed to have admitted to the facts alleged by the applicant, which ultimately led to the invalidation of its trade mark registration.
This case provides valuable guidance for trade mark practitioners and brand owners on the protection of well-known unregistered marks and the factors considered in assessing likelihood of confusion under Singapore's trade mark law.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2022] SGIPOS 18 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.