Case Details
- Citation: [2022] SGIPOS 5
- Court: Intellectual Property Office of Singapore
- Date: 2022-03-14
- Judges: Principal Assistant Registrar Tan Mei Lin
- Plaintiff/Applicant: Biba (Zhejiang) Nursing Products Co., Ltd
- Defendant/Opponent: BEABA
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2006] SGHC 241, [2012] SGCA 56, [2013] SGCA 18, [2015] SGHC 216, [2016] SGIPOS 1, [2017] SGCA 30, [2022] SGIPOS 5
- Judgment Length: 48 pages, 11,319 words
Summary
This case involves a trade mark opposition action between BEABA, a French company that produces baby products, and Biba (Zhejiang) Nursing Products Co., Ltd, a Chinese company that sought to register the mark "BIBA" in Singapore. BEABA opposed the registration of Biba's mark on several grounds, including that it was similar to BEABA's earlier registered mark and would likely cause confusion among consumers. The Intellectual Property Office of Singapore had to assess the similarity of the marks and the likelihood of confusion in order to determine whether Biba's trade mark applications should be allowed.
What Were the Facts of This Case?
On 6 May 2019, Biba (Zhejiang) Nursing Products Co., Ltd ("the Applicant") filed two separate applications to register the mark "BIBA" in Classes 5 and 16 in Singapore. The Applicant sought to register the mark for goods such as baby formula, diapers, and stationery products.
BEABA ("the Opponent") is a French company that was established in 1989 and is the registered proprietor of the "BEABA" trade mark in Singapore. BEABA's products, which include baby food-making appliances, feeding bottles, and other childcare items, have been available in Singapore since 2009.
The Opponent opposed the registration of the Applicant's "BIBA" mark on several grounds, including that it was similar to the Opponent's earlier registered "BEABA" mark and would likely cause confusion among consumers.
The Applicant and the Opponent have been engaged in disputes over their respective marks in several other jurisdictions as well.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Applicant's "BIBA" mark was similar to the Opponent's earlier registered "BEABA" mark under Section 8(2)(b) of the Trade Marks Act, such that there was a likelihood of confusion among consumers.
2. Whether the use of the "BIBA" mark would constitute passing off under Section 8(7)(a) of the Act.
3. Whether the "BIBA" mark was an unauthorized use of the Opponent's well-known "BEABA" mark under Section 8(4)(b)(i) of the Act.
4. Whether the registration of the "BIBA" mark should be refused under Section 7(6) of the Act on the basis that the application was made in bad faith.
5. Whether the registration of the "BIBA" mark should be refused under Sections 7(4)(a) and (b) of the Act on the basis that it was likely to deceive the public.
6. Whether the registration of the "BIBA" mark for Class 16 goods should be refused under Section 8(7)(b) of the Act on the basis that it would take unfair advantage of, or be detrimental to, the distinctive character or repute of the Opponent's "BEABA" mark.
How Did the Court Analyse the Issues?
The Registrar first examined the issue of similarity between the "BIBA" and "BEABA" marks under Section 8(2)(b) of the Act. The Registrar applied the established principles for assessing marks similarity, considering visual, aural, and conceptual similarities between the marks. The Registrar found that while there were some visual and aural differences, the marks were conceptually similar as they both consisted of four-letter words starting with "B" and ending in "A".
The Registrar then assessed the similarity between the goods covered by the respective marks. For the Class 5 goods, the Registrar found a high degree of similarity between the Applicant's goods (e.g., baby formula, diapers) and the Opponent's registered goods (e.g., baby feeding apparatus and instruments). For the Class 16 goods, the Registrar found a lower degree of similarity.
Weighing the marks similarity and goods similarity, the Registrar concluded that there was a likelihood of confusion among consumers for the Class 5 goods, but not for the Class 16 goods.
The Registrar then considered the other grounds of opposition. On the issue of passing off under Section 8(7)(a), the Registrar found that the Opponent had not established the necessary goodwill in Singapore to succeed on this ground.
Regarding the ground under Section 8(4)(b)(i) for unauthorized use of a well-known mark, the Registrar found that the Opponent's "BEABA" mark was not sufficiently well-known in Singapore at the relevant time to succeed on this ground.
On the issue of bad faith under Section 7(6), the Registrar concluded that the Opponent had not provided sufficient evidence to show that the Applicant's application was made in bad faith.
The Registrar also rejected the Opponent's arguments under Sections 7(4)(a) and (b) regarding deception of the public.
Finally, on the ground of unfair advantage under Section 8(7)(b), the Registrar found that the Opponent had not shown that the use of the "BIBA" mark for Class 16 goods would take unfair advantage of, or be detrimental to, the distinctive character or repute of the "BEABA" mark.
What Was the Outcome?
Based on the analysis, the Registrar allowed the Applicant's trade mark application for Class 16 goods but refused the application for Class 5 goods. The Registrar found that there was a likelihood of confusion between the "BIBA" and "BEABA" marks for the Class 5 goods, but not for the Class 16 goods.
Consequently, the Applicant's trade mark application for Class 5 goods was refused, while the application for Class 16 goods was allowed to proceed to registration.
Why Does This Case Matter?
This case provides valuable guidance on the assessment of marks similarity and likelihood of confusion under Section 8(2)(b) of the Singapore Trade Marks Act. The Registrar's detailed analysis of the visual, aural, and conceptual similarities between the "BIBA" and "BEABA" marks, as well as the assessment of goods similarity, offers a framework for practitioners to understand how such issues are evaluated in trade mark opposition proceedings.
The case also highlights the importance of establishing sufficient goodwill and reputation in order to succeed on grounds such as passing off and well-known mark protection. The Registrar's findings on the other grounds of opposition, such as bad faith and deception of the public, further illustrate the high evidentiary threshold required for these types of arguments.
Overall, this decision serves as a useful reference for trade mark practitioners in Singapore, particularly when advising clients on the risks of potential trade mark conflicts and the likelihood of success in opposition proceedings.
Legislation Referenced
Cases Cited
- [2006] SGHC 241
- [2012] SGCA 56
- [2013] SGCA 18
- [2015] SGHC 216
- [2016] SGIPOS 1
- [2017] SGCA 30
- [2022] SGIPOS 5
Source Documents
This article analyses [2022] SGIPOS 5 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.