Case Details
- Citation: [2019] SGIPOS 17
- Court: Intellectual Property Office of Singapore
- Date: 2019-12-10
- Judges: Ms Sandy Widjaja, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Bavarian N.V.
- Defendant/Respondent: Bayerischer Brauerbund E.V.
- Legal Areas: Trade marks and trade names – Opposition to Registration of Collective Mark
- Statutes Referenced: First Schedule of the Act, First Schedule of the Trade Marks Act, Geographical Indications Act, Preliminary Issue, Interplay with the Geographical Indications Act, Second Schedule of the Act, Trade Marks Act
- Cases Cited: [2007] SGIPOS 11, [2009] SGCA 13, [2015] SGHC 39, [2018] SGIPOS 16, [2018] SGHC 238, [2018] SGIPOS 15, [2019] SGIPOS 1, [2019] SGIPOS 17
- Judgment Length: 43 pages, 15,047 words
Summary
This is the first case in Singapore where an application for a collective mark has been opposed. Unlike a "normal" trade mark which serves to identify a specific trader as the source of goods or services, a "collective" mark can be used by a variety of traders so long as they are members of an association. This raises interesting issues when deciding if the grounds of opposition succeed.
The key issues in this case include whether the application for the collective mark "Bavarian Beer" should be allowed to proceed, and whether the opponent's earlier registered marks can successfully block the registration of the collective mark. The Intellectual Property Office of Singapore had to grapple with the unique nature of collective marks and how the usual trade mark opposition grounds should be applied in this context.
Ultimately, the Registrar found that some of the opponent's grounds of opposition succeeded, while others failed. The case provides important guidance on the legal principles and considerations applicable to collective mark applications and oppositions in Singapore.
What Were the Facts of This Case?
The applicant, Bayerischer Brauerbund e.V. (the "Applicant"), is an umbrella association for the Bavarian brewing industry located in the German Federal State of Bavaria. The Applicant sought to register the collective mark "Bavarian Beer" (the "Application Mark") in Class 32 for "beers".
The opponent, Bavarian N.V. (the "Opponent"), is a company that has been brewing beers in Lieshout, the Netherlands since 1680. The Opponent owns several earlier registered trade marks containing the word "Bavaria" (the "Opponent's Earlier Marks"), which it has used since around 1930.
The Application Mark was accepted and published for opposition purposes on 19 August 2016. The Opponent filed a notice of opposition on 19 October 2016, relying on various grounds under the Trade Marks Act.
The Applicant argued that it has obtained registration of "Bayerisches Bier" as a Protected Geographical Indication ("PGI") in the European Union. However, the Applicant clarified that it was not submitting that "Bavarian Beer" is protected as a geographical indication in Singapore.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Application Mark should be refused registration under Paragraph 4 of the First Schedule of the Trade Marks Act, on the basis that the public is liable to be misled as to the character or significance of the mark.
2. Whether the Application Mark should be refused registration under Section 8(2)(b) of the Trade Marks Act, on the basis of a likelihood of confusion with the Opponent's Earlier Blue Label Mark.
3. Whether the Application Mark should be refused registration under Sections 8(4)(b)(i) and 8(4)(b)(ii) of the Trade Marks Act, on the basis that the Opponent's Earlier Registered Marks are well known in Singapore.
4. Whether the Application Mark should be refused registration under Section 8(7)(a) of the Trade Marks Act, on the basis of passing off.
How Did the Court Analyse the Issues?
On the Paragraph 4 ground, the Registrar noted that this was both an absolute and relative ground of objection. Even if the Registrar required the Application Mark to include an indication that it is a collective mark, this would not prevent confusion from being drawn between the Opponent's Earlier Blue Label Mark and the Application Mark due to their shared common elements.
On the Section 8(2)(b) ground, the Registrar found that there was a likelihood of confusion between the Opponent's Earlier Blue Label Mark and the Application Mark. The Registrar considered the similarity of the marks, the identity of the goods, and the relevant consumers, and concluded that the ground succeeded for the Opponent's Earlier Blue Label Mark.
On the Section 8(4) grounds, the Registrar found that the Opponent's Earlier Registered Marks were not well known in Singapore, either to the relevant sector of the public (Section 8(4)(b)(i)) or to the public at large (Section 8(4)(b)(ii)). Therefore, these grounds of opposition failed.
On the Section 8(7)(a) ground, the Registrar found that the use of the Application Mark would amount to passing off against the Opponent's Earlier Registered Marks. The Registrar considered the goodwill and reputation of the Opponent's marks, the misrepresentation that would be caused by the Application Mark, and the likelihood of damage to the Opponent.
What Was the Outcome?
The Registrar held that the ground of objection under Paragraph 4 of the First Schedule succeeded, as the public was liable to be misled as to the character or significance of the Application Mark.
The ground of objection under Section 8(2)(b) also succeeded, but only in relation to the Opponent's Earlier Blue Label Mark.
The grounds of objection under Sections 8(4)(b)(i) and 8(4)(b)(ii) failed, as the Opponent's Earlier Registered Marks were not found to be well known in Singapore.
The ground of objection under Section 8(7)(a) succeeded, as the use of the Application Mark would amount to passing off against the Opponent's Earlier Registered Marks.
As a result, the Registrar refused the registration of the Application Mark.
Why Does This Case Matter?
This case is significant as it is the first in Singapore where an application for a collective mark has been opposed. The Registrar had to grapple with the unique nature of collective marks and how the usual trade mark opposition grounds should be applied in this context.
The decision provides important guidance on the legal principles and considerations applicable to collective mark applications and oppositions in Singapore. It highlights the need to carefully assess whether the public is likely to be misled as to the character or significance of a collective mark, and the potential for confusion with earlier registered trade marks.
The case also demonstrates the challenges in establishing that an earlier registered trade mark is "well known" in Singapore, even for a long-established brand like the Opponent's. This sets a high bar for trade mark owners seeking to rely on the well-known marks provisions.
Overall, this judgment is a valuable precedent for trade mark practitioners in Singapore, particularly those advising on collective mark applications and oppositions.
Legislation Referenced
- First Schedule of the Trade Marks Act (Cap 332, 2005 Rev Ed)
- Geographical Indications Act (Cap 117B)
- Trade Marks Act (Cap 332, 2005 Rev Ed)
Cases Cited
- [2007] SGIPOS 11
- [2009] SGCA 13
- [2015] SGHC 39
- [2018] SGIPOS 16
- [2018] SGHC 238
- [2018] SGIPOS 15
- [2019] SGIPOS 1
- [2019] SGIPOS 17
Source Documents
This article analyses [2019] SGIPOS 17 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.