Case Details
- Citation: [2018] SGIPOS 2
- Court: Intellectual Property Office of Singapore
- Date: 2018-02-01
- Judges: Ong Sheng Li, Gabriel, Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Clarins Fragrance Group fka Thierry Mugler Parfums SAS
- Defendant/Respondent: BenQ Materials Corp
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Opponent relied on six grounds of opposition under the Trade Marks Act
- Cases Cited: [2011] SGHC 176, [2014] SGIPOS 14, [2016] SGIPOS 5, [2016] SGIPOS 8, [2017] SGCA 30, [2017] SGIPOS 12, [2017] SGIPOS 17, [2017] SGIPOS 19
- Judgment Length: 21 pages, 10,356 words
Summary
This case involves a trade mark opposition between Clarins Fragrance Group, the owner of the "ANGEL" trade mark for perfumes and other goods, and BenQ Materials Corp, which sought to register the mark "derma ANGEL" for cosmetic products. The Intellectual Property Office of Singapore had to determine whether the competing marks were similar, whether the goods were identical or similar, and whether there was a likelihood of confusion for consumers. The Hearing Officer ultimately found that the marks were not similar and dismissed the opposition.
What Were the Facts of This Case?
Clarins Fragrance Group, formerly known as Thierry Mugler Parfums S.A.S., is a French company in the fragrance business. It owns the registered trade mark "ANGEL" for perfumes and other goods in Class 3 in Singapore. BenQ Materials Corp is a Taiwanese company that manufactures and sells healthcare and personal care products, including a new line of skin care products launched in 2014 under the brand name "derma ANGEL".
On 5 May 2015, BenQ Materials Corp applied to register the mark "derma ANGEL" in Class 3 in Singapore for a range of cosmetic products. Clarins Fragrance Group subsequently filed an opposition against the registration of this mark, relying on several grounds under the Trade Marks Act.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the competing marks "ANGEL" and "derma ANGEL" were similar, taking into account the visual, aural, and conceptual aspects of similarity.
- Whether the goods covered by the two marks were identical or similar.
- Whether there was a likelihood of confusion on the part of the public arising from the similarity of the marks and the identity or similarity of the goods.
How Did the Court Analyse the Issues?
The Hearing Officer, Assistant Registrar Ong Sheng Li, Gabriel, applied the three-step test set out in the Staywell case:
1. Marks similarity: The Hearing Officer considered the visual, aural, and conceptual similarity of the marks. He noted that the word "ANGEL" was the dominant and distinctive element of the Opponent's mark, but found that the addition of the prefix "derma" in the Applicant's mark significantly altered the overall impression and rendered the marks dissimilar. He also found that the stylized "derma" element in the Applicant's mark was a distinctive feature that distinguished it from the Opponent's mark.
2. Goods similarity: The Hearing Officer found that the goods covered by the two marks were identical or highly similar, as they both related to cosmetic and personal care products in Class 3.
3. Likelihood of confusion: Despite the identity/similarity of the goods, the Hearing Officer concluded that there was no likelihood of confusion due to the dissimilarity of the marks. He held that the dominant and distinctive "ANGEL" element in the Opponent's mark would not be mistaken for the Applicant's "derma ANGEL" mark by the average consumer.
The Hearing Officer also considered the role of distinctiveness in the marks similarity assessment. He acknowledged the concerns raised in previous decisions about the precise application of the distinctiveness concept at this stage, but ultimately found that it was permissible to have regard to the respective goods when assessing the distinctiveness of the marks.
What Was the Outcome?
The Hearing Officer dismissed all grounds of opposition and allowed the registration of the "derma ANGEL" mark. He found that the competing marks were not similar and, therefore, there was no likelihood of confusion despite the identity/similarity of the goods.
Why Does This Case Matter?
This case provides useful guidance on the assessment of marks similarity, particularly the role of distinctiveness in this analysis. It demonstrates that the addition of a distinctive prefix or element to a mark can be sufficient to render the marks dissimilar, even if they share a common word. The decision also highlights the importance of considering the overall impression of the marks from the perspective of the average consumer, rather than focusing on isolated differences or similarities.
The case is significant for trade mark practitioners as it clarifies the approach to be taken when evaluating marks similarity, especially in situations where one of the marks incorporates an earlier registered mark. It reinforces the principle that the marks must be compared as a whole, and that the final assessment is one of legal correctness rather than mere discretion.
Legislation Referenced
- Trade Marks Act (Cap. 332, Rev Ed 2005)
Cases Cited
- [2011] SGHC 176
- [2014] SGIPOS 14
- [2016] SGIPOS 5
- [2016] SGIPOS 8
- [2017] SGCA 30 (Caesarstone)
- [2017] SGIPOS 12 (Mixi)
- [2017] SGIPOS 17
- [2017] SGIPOS 19
Source Documents
This article analyses [2018] SGIPOS 2 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.