Case Details
- Citation: Compagnie Des Montres Longines, Francillon S.A. (Longines Watch Co., Francillon Ltd.) v POINT tec Products Electronic GmbH [2020] SGIPOS 9
- Court: Intellectual Property Office of Singapore
- Date: 2020-08-28
- Judges: Ms Sandy Widjaja, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Compagnie Des Montres Longines, Francillon S.A. (Longines Watch Co., Francillon Ltd.)
- Defendant/Respondent: POINT tec Products Electronic GmbH
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2009] SGCA 13, [2015] SGHC 216, [2015] SGIPOS 10, [2016] SGHC 32, [2016] SGHC 32, [2016] SGIPOS 6, [2018] SGIPOS 16, [2019] SGIPOS 10, [2019] SGIPOS 1, [2020] SGIPOS 8
- Judgment Length: 28 pages, 9,892 words
Summary
This case involves a trade mark opposition brought by Compagnie Des Montres Longines, Francillon S.A. (the "Opponent") against the registration of the trade mark "40201804512R" (the "Application Mark") by POINT tec Products Electronic GmbH (the "Applicant"). The Opponent opposed the registration of the Application Mark under Sections 8(2)(b), 8(4)(b)(i) and 8(7)(a) of the Singapore Trade Marks Act. After considering the evidence and submissions, the Intellectual Property Office of Singapore (IPOS) found that the Opponent had succeeded under Section 8(2)(b) and dismissed the application to register the Application Mark.
What Were the Facts of This Case?
The Opponent, Compagnie Des Montres Longines, Francillon S.A., is a renowned Swiss watch manufacturer that has used its Longines logo since 1867. The Longines hourglass logo has been registered as a trade mark in Switzerland since 1889, making it the oldest registered trade mark in the world. The Opponent is a market leader in the manufacture and retail of luxury watches, and the Longines brand, including its hourglass logo, is used globally, including in Singapore.
The Applicant, POINT tec Products Electronic GmbH, is a German watch manufacturer that was founded in 1987. The Applicant's watches are inspired by aviation or "pilot" watches, drawing on the design characteristics of such watches while adhering to the high quality standards of German watchmaking and the Bauhaus design aesthetic.
The Application Mark in dispute is the following device mark:
[Image of the Application Mark]
The Applicant sought to register the Application Mark in Class 14 for "Watches and chronometric instruments". The Application Mark was accepted and published for opposition purposes on 20 July 2018.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the Application Mark is similar to the Opponent's earlier registered trade mark, T1315264Z, such that there exists a likelihood of confusion on the part of the public under Section 8(2)(b) of the Trade Marks Act.
- Whether the use of the Application Mark would be contrary to Section 8(4)(b)(i) of the Act, as it is identical or similar to the Opponent's well-known mark and its use would indicate a connection with the Opponent that the public is likely to be confused about.
- Whether the use of the Application Mark would be contrary to Section 8(7)(a) of the Act, as it is an act of passing off.
How Did the Court Analyse the Issues?
The Hearing Officer, Ms Sandy Widjaja, applied the step-by-step approach set out by the Singapore Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 to assess the opposition under Section 8(2)(b).
On the issue of similarity of marks, the Hearing Officer found that the focus should be on the Opponent's earlier registered trade mark T1315264Z, as the evidence and submissions primarily centered around this mark. She considered the visual, aural and conceptual similarity of the marks, taking into account their distinctive and dominant components.
The Hearing Officer found that the Opponent's earlier mark T1315264Z had a high degree of technical distinctiveness, being an arbitrary and fanciful mark. In contrast, she found that the Application Mark had a lower degree of technical distinctiveness, as it consisted of simple geometric shapes and lines that were reminiscent of the Bauhaus design aesthetic.
Weighing the visual, aural and conceptual similarities, the Hearing Officer concluded that the marks were similar overall, as the Application Mark would likely create a similar general impression to the average consumer with imperfect recollection.
On the issue of similarity of goods, the Hearing Officer found that the goods covered by the Application Mark (watches and chronometric instruments) were identical to the goods covered by the Opponent's earlier mark T1315264Z.
Considering the high degree of similarity between the marks and the identity of the goods, the Hearing Officer found that there was a likelihood of confusion on the part of the public, and thus the opposition under Section 8(2)(b) succeeded.
As the opposition under Section 8(2)(b) succeeded, the Hearing Officer did not need to consider the grounds of opposition under Sections 8(4)(b)(i) and 8(7)(a).
What Was the Outcome?
The Hearing Officer allowed the opposition and refused the registration of the Application Mark "40201804512R".
Why Does This Case Matter?
This case provides a useful illustration of the step-by-step approach to assessing trade mark opposition under Section 8(2)(b) of the Singapore Trade Marks Act. It highlights the importance of considering the distinctive and dominant components of the marks, as well as the overall impression created in the mind of the average consumer with imperfect recollection.
The case also demonstrates the significance of the degree of technical distinctiveness of a trade mark in the similarity analysis. A highly distinctive mark will enjoy a higher threshold before a competing sign will be considered dissimilar, whereas a mark with a lower degree of technical distinctiveness may be more easily found similar to another mark.
For trade mark practitioners, this case serves as a reminder of the need to carefully assess the similarity of marks, both visually, aurally and conceptually, in the context of the goods or services covered, in order to determine the likelihood of confusion. The outcome also underscores the importance of conducting thorough trade mark searches and opposition proceedings to protect valuable brand assets.
Legislation Referenced
Cases Cited
- [2009] SGCA 13
- [2015] SGHC 216
- [2015] SGIPOS 10
- [2016] SGHC 32
- [2016] SGHC 32
- [2016] SGIPOS 6
- [2018] SGIPOS 16
- [2019] SGIPOS 10
- [2019] SGIPOS 1
- [2020] SGIPOS 8
Source Documents
This article analyses [2020] SGIPOS 9 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.