Case Details
- Citation: [2021] SGIPOS 3
- Court: Intellectual Property Office of Singapore
- Date: 2021-02-15
- Judges: Ong Sheng Li, Gabriel, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Elements Cosmeceuticals Pte. Ltd.
- Defendant/Opponent: B.R.
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act (Cap. 332)
- Cases Cited: [2017] SGIPOS 17, [2018] SGHC 238, [2018] SGIPOS 1, [2018] SGIPOS 18, [2018] SGIPOS 2, [2019] SGIPOS 7, [2021] SGIPOS 3
- Judgment Length: 26 pages, 14,160 words
Summary
This case involves a trade mark opposition between Elements Cosmeceuticals Pte Ltd, a Singaporean skincare company, and B.R., a French skincare company. Elements Cosmeceuticals applied to register the trade mark "Recherché" in Singapore, which B.R. opposed on several grounds, including that the mark is similar to B.R.'s earlier registered trade mark "BIOLOGIQUE RECHERCHE". The Intellectual Property Office of Singapore had to determine whether the competing marks are similar, whether the goods and services are identical or similar, and whether there is a likelihood of confusion for consumers.
What Were the Facts of This Case?
On 7 November 2017, Elements Cosmeceuticals Pte Ltd (the "Applicant") applied to register the trade mark "Recherché" in Singapore in Classes 3 and 44 for various skincare products and beauty salon services. The application was opposed by B.R. (the "Opponent"), a French skincare company that owns an earlier registered trade mark "BIOLOGIQUE RECHERCHE" in Singapore.
The Opponent is a long-established luxury skincare brand founded in Paris in the 1970s, known for its clinical approach and use of pure, concentrated ingredients. The Opponent's products and treatments have been available in Singapore through various high-end beauty spas and retailers. In contrast, the Applicant is a relatively new Singaporean company that manufactures and sells its "Recherché" branded skincare products through online platforms and department stores, targeting the mass market.
The Opponent raised five grounds of opposition against the Applicant's trade mark application, including that the "Recherché" mark is similar to the Opponent's earlier "BIOLOGIQUE RECHERCHE" mark, and that its use would likely cause confusion among consumers.
What Were the Key Legal Issues?
The key legal issue in this case was whether the Applicant's "Recherché" trade mark is similar to the Opponent's earlier "BIOLOGIQUE RECHERCHE" trade mark, such that its registration would be prohibited under Section 8(2)(b) of the Singapore Trade Marks Act.
To determine this, the tribunal had to consider the following three steps: (1) Are the competing marks similar? (2) Are the goods and/or services identical or similar? (3) Is there a likelihood of confusion arising from the foregoing?
How Did the Court Analyse the Issues?
In analysing the first step of mark similarity, the tribunal compared the visual, aural and conceptual aspects of the competing marks. It noted that the Opponent's mark consists of the words "BIOLOGIQUE RECHERCHE" in dark blue block letters, with a botanical device in the background, while the Applicant's mark simply comprises the word "Recherché" in a shade of grey.
Visually, the tribunal found that the marks are not identical, but share the common element of the French word "recherché". Aurally, the marks are also not identical, as the Opponent's mark contains the additional word "biologique". Conceptually, the tribunal acknowledged that both marks evoke a sense of exclusivity and sophistication, but the Opponent's mark also conveys a meaning of "biological research" through the translation clause.
Overall, the tribunal concluded that while the marks are not identical, they are similar to a moderate degree, as the dominant and distinctive element of "recherché" is common to both. This was sufficient to satisfy the first step of the test.
On the second step of goods/services similarity, the tribunal found that the Applicant's skincare products in Class 3 are identical or highly similar to the Opponent's registered goods in the same class. However, the tribunal was less certain about whether the Applicant's beauty salon services in Class 44 are similar to the Opponent's registered goods. It therefore invited further submissions from the parties on this issue.
Lastly, on the likelihood of confusion, the tribunal considered factors such as the degree of similarity between the marks, the degree of similarity between the goods/services, the strength of the Opponent's mark, and the relevant consumer's level of attention. It concluded that given the moderate similarity between the marks and the identity/similarity of the goods, there is a likelihood of confusion that would justify upholding the opposition under Section 8(2)(b).
What Was the Outcome?
Based on the analysis above, the tribunal upheld the Opponent's opposition against the registration of the Applicant's "Recherché" trade mark under Section 8(2)(b) of the Trade Marks Act. The Applicant's trade mark application was therefore refused.
Why Does This Case Matter?
This case provides useful guidance on the application of the step-by-step test for determining trade mark similarity and likelihood of confusion under Section 8(2)(b) of the Singapore Trade Marks Act. It demonstrates that even where the competing marks are not identical, a finding of moderate similarity in the dominant and distinctive elements can be sufficient to establish a likelihood of confusion, particularly where the goods are identical or highly similar.
The case also highlights the importance of considering all three aspects of similarity (visual, aural, conceptual) in the mark comparison, and the need to assess the overall impression of the marks from the perspective of the average consumer. Practitioners should be mindful that even where a mark contains additional distinctive elements, this does not necessarily preclude a finding of similarity if the dominant component is shared.
Finally, the tribunal's invitation for further submissions on the issue of whether beauty salon services are similar to skincare products underscores the nuanced analysis required in assessing the similarity of goods and services. This is a useful reminder that the tribunal will carefully consider the specific nature and characteristics of the products and services at issue in making this determination.
Legislation Referenced
Cases Cited
- [2017] SGIPOS 17
- [2018] SGHC 238
- [2018] SGIPOS 1
- [2018] SGIPOS 18
- [2018] SGIPOS 2
- [2019] SGIPOS 7
- [2021] SGIPOS 3
Source Documents
This article analyses [2021] SGIPOS 3 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.