Case Details
- Citation: [2024] SGIPOS 5
- Court: Intellectual Property Office of Singapore
- Date: 2024-06-14
- Judges: Principal Assistant Registrar Mark Lim
- Plaintiff/Applicant: Dol Technology Pte Ltd
- Defendant/Opponent: Bytedance Ltd
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2011] SGHC 17, [2014] SGIPOS 8, [2015] SGIPOS 2, [2018] SGIPOS 1, [2021] SGHC 165, [2024] SGIPOS 1, [2024] SGIPOS 5
- Judgment Length: 59 pages, 14,238 words
Summary
This case involves a trade mark opposition brought by Bytedance Ltd, the multinational internet technology company behind the popular short video sharing platform TikTok, against two trade mark applications filed by Dol Technology Pte Ltd for the mark "TIKI". Bytedance opposed the registration of the "TIKI" mark on several grounds, including that it is similar to Bytedance's prior registered trade marks and is liable to cause confusion. After a detailed analysis of the similarity of the marks and the likelihood of confusion, the Intellectual Property Office of Singapore ultimately found in favor of Dol Technology, dismissing Bytedance's opposition.
What Were the Facts of This Case?
Dol Technology Pte Ltd, a Singapore-incorporated company, applied to register the trade mark "TIKI" in several classes covering goods and services related to its TIKI mobile application. The TIKI app allows users to create, watch, and share short videos, similar to the functionality of Bytedance's TikTok platform.
Bytedance Ltd, the multinational company behind TikTok, opposed the registration of the "TIKI" mark. Bytedance relied on its prior registrations for the "TikTok" word mark, the TikTok device mark, and its "Bytedance" composite mark. Bytedance argued that the "TIKI" mark is similar to its registered marks and would cause confusion among consumers.
The judgment does not specify the exact dates of Dol Technology's trade mark applications, but notes they were filed in May 2021 and August 2021. Bytedance filed its notices of opposition in December 2021 and January 2022.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the "TIKI" mark applied for by Dol Technology is similar to Bytedance's prior registered trade marks, including the "TikTok" word mark and device mark, as well as Bytedance's "Bytedance" composite mark.
2. Whether, due to the similarity of the marks and the goods/services covered, there exists a likelihood of confusion on the part of the public.
3. Whether Bytedance's marks should be afforded enhanced protection as "well known" trade marks in Singapore, either to the public at large or to the relevant sector of the public.
4. Whether use of the "TIKI" mark would be liable to be prevented under the law of passing off.
How Did the Court Analyse the Issues?
The Intellectual Property Office of Singapore, through Principal Assistant Registrar Mark Lim, conducted a detailed analysis of each of the key issues.
On the issue of similarity of marks, the Registrar examined the visual, aural, and conceptual similarity between the "TIKI" mark and Bytedance's "TikTok" word and device marks, as well as the "Bytedance" composite mark. The Registrar found that while there were some visual and aural similarities, the overall impression created by the marks was sufficiently different such that they were not similar.
In assessing the likelihood of confusion, the Registrar considered the similarity of the marks, the similarity of the goods and services covered, and the relevant consumer factors. However, given the lack of similarity between the marks, the Registrar concluded that there was no likelihood of confusion.
On the issue of whether Bytedance's marks should be afforded enhanced protection as "well known" marks, the Registrar examined the evidence submitted by Bytedance. The Registrar found that the "TikTok" word mark was well known to the public at large in Singapore, but that the "TikTok" device mark and "Bytedance" composite mark were only well known within the relevant sector of the public in Singapore, not to the public at large.
Finally, on the ground of passing off, the Registrar found that since the "TIKI" mark was not similar to Bytedance's marks, Bytedance had failed to establish the required element of misrepresentation, and therefore the passing off ground also failed.
What Was the Outcome?
The Intellectual Property Office of Singapore dismissed Bytedance's opposition in its entirety. The Registrar ordered that Dol Technology's trade mark applications for the "TIKI" mark be allowed to proceed to registration.
Why Does This Case Matter?
This case provides important guidance on the test for similarity of trade marks and the likelihood of confusion, as well as the requirements for establishing that a trade mark is "well known" in Singapore. The decision highlights that even where there are some visual and aural similarities between marks, the overall impression created by the marks must be assessed to determine if they are truly similar.
The case also reinforces that the "well known" trade mark status is a high threshold, requiring either recognition by the public at large or by the relevant sector of the public. Mere popularity or fame of a mark is not sufficient to qualify it as "well known" for the purposes of enhanced trade mark protection.
From a practical perspective, this judgment provides useful guidance for trade mark owners seeking to oppose the registration of similar marks, as well as for companies seeking to register new trade marks that may be similar to existing well-known marks. The detailed analysis of the legal principles and their application to the facts of this case will be valuable for trade mark practitioners in Singapore.
Legislation Referenced
Cases Cited
- [2011] SGHC 17
- [2014] SGIPOS 8
- [2015] SGIPOS 2
- [2018] SGIPOS 1
- [2021] SGHC 165
- [2024] SGIPOS 1
- [2024] SGIPOS 5
Source Documents
This article analyses [2024] 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.