Case Details
- Citation: [2018] SGIPOS 5
- Court: Intellectual Property Office of Singapore
- Date: 2018-03-27
- Judges: Ms Tan Mei Lin
- Plaintiff/Applicant: Deestone Limited
- Defendant/Opponent: Bridgestone Corporation and Bridgestone Licensing Services, Inc.
- Legal Areas: Trade marks and trade names – Opposition to registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2007] SGIPOS 2, [2012] SGCA 56, [2013] SGCA 18, [2014] SGIPOS 3, [2015] SGHC 216, [2016] SGCA 25, [2016] SGCA 33
- Judgment Length: 22 pages, 9,372 words
Summary
This case involves an opposition by Bridgestone Corporation and Bridgestone Licensing Services, Inc. (the "Opponents") against the registration of a trade mark application by Deestone Limited (the "Applicant"). The Opponents argued that the Applicant's trade mark should not be registered on several grounds, including that it is confusingly similar to the Opponents' existing "STONE" family of trade marks. The Hearing Officer had to determine whether the Opponents had established the existence of a protectable "family of marks" and whether the Applicant's mark was likely to cause confusion with that family.
What Were the Facts of This Case?
The Applicant, Deestone Limited, applied to register the trade mark "DEESTONE" in Singapore in February 2015 for various tire and automotive goods in Class 12. The Opponents, Bridgestone Corporation and Bridgestone Licensing Services, Inc., opposed the registration on several grounds, including that the Applicant's mark was confusingly similar to their existing "STONE" family of trade marks.
The Opponents are a major multinational tire and rubber products manufacturer based in Japan. Bridgestone Corporation is the registered proprietor of the "BRIDGESTONE" trade mark in Singapore, while Bridgestone Licensing Services, Inc. owns the "FIRESTONE" trade mark. The Opponents argued that these two marks, along with other "STONE" formative marks used by the Bridgestone group, constitute a protectable family of marks.
The Applicant disputed the existence of a Bridgestone "family of marks", arguing that the various "STONE" marks are not owned by a single entity and have not been used in a way that would establish public association with a common trade origin.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the Opponents had established the existence of a protectable "family of marks" comprising the "STONE" formative marks, despite the marks not all being owned by the same entity.
- Whether the Applicant's "DEESTONE" mark was confusingly similar to the Opponents' "STONE" family of marks, such that its registration should be refused.
How Did the Court Analyse the Issues?
On the first issue, the Hearing Officer noted that the family of marks doctrine provides protection where a party applies to register a mark incorporating the common characteristic of an existing family, as the public may assume the new mark originates from the same undertaking. However, the Hearing Officer acknowledged that it was unclear whether a family of marks can be established when the marks are not all owned by the same entity.
Examining the evidence, the Hearing Officer found that the Opponents had used the "BRIDGESTONE" and "FIRESTONE" marks extensively and in an integrated way, such that the public would recognize them as belonging to the same commercial source. The Hearing Officer was satisfied that the Opponents had established the existence of a protectable "STONE" family of marks.
On the second issue, the Hearing Officer compared the visual, aural and conceptual similarities between the Applicant's "DEESTONE" mark and the Opponents' "STONE" family. The Hearing Officer concluded that the marks were highly similar, with the dominant and distinctive "STONE" component being identical. This, combined with the Opponents' established reputation and the relatedness of the goods, led the Hearing Officer to find that the Applicant's mark was likely to cause confusion among consumers.
What Was the Outcome?
The Hearing Officer upheld the opposition and refused the registration of the Applicant's "DEESTONE" trade mark application. The Hearing Officer was satisfied that the Opponents had established their grounds of opposition under Sections 8(2)(b), 8(4)(a) read with 8(4)(b)(i), and 8(7)(a) of the Trade Marks Act.
Why Does This Case Matter?
This case provides useful guidance on the application of the "family of marks" doctrine in Singapore trade mark law. It confirms that a family of marks can be established even where the individual marks are not all owned by the same entity, as long as the public associates them with a common trade origin through the way they have been used.
The case also demonstrates the high bar that must be met to show that a later mark is confusingly similar to an existing family of marks. The Hearing Officer's detailed analysis of the visual, aural and conceptual similarities, combined with the reputation and relatedness of the goods, provides a framework for assessing such claims.
This judgment is therefore an important precedent for trade mark owners seeking to protect their brand families, as well as for those defending against claims of family of marks infringement. It highlights the need for careful management and integration of a portfolio of related marks to establish the necessary public association.
Legislation Referenced
Cases Cited
- [2007] SGIPOS 2
- [2012] SGCA 56
- [2013] SGCA 18
- [2014] SGIPOS 3
- [2015] SGHC 216
- [2016] SGCA 25
- [2016] SGCA 33
Source Documents
This article analyses [2018] 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.