Case Details
- Citation: [2024] SGIPOS 7
- Court: Intellectual Property Office of Singapore
- Date: 2024-08-23
- Judges: Principal Assistant Registrar Tan Mei Lin
- Plaintiff/Applicant: Tapout Pte Ltd
- Defendant/Opponent: Craft Drinks Pte Ltd
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2011] SGHC 176, [2013] SGCA 18, [2013] SGIPOS 6, [2017] SGIPOS 8, [2018] SGIPOS 5, [2021] SGHC 49, [2024] SGIPOS 7
- Judgment Length: 38 pages, 8,969 words
Summary
This case involves a trade mark dispute between two local businesses operating beer bars in Singapore. Tapout Pte Ltd, the applicant, applied to register the trade mark "TAP" for restaurant services. Craft Drinks Pte Ltd, the opponent, opposed the registration on several grounds, including that the "TAP" marks it already owns are well-known in Singapore. The Intellectual Property Office of Singapore had to determine whether Craft Drinks' "TAP" marks are indeed well-known, and whether Tapout's proposed mark should be allowed registration.
What Were the Facts of This Case?
Craft Drinks Pte Ltd has been operating beer bars in Singapore under the "TAP" marks since May 2015. It currently has two outlets, one in the Central Business District and another near Orchard Road. Previously, Craft Drinks also had outlets at other locations such as Millenia Walk, Raffles City Shopping Centre, One Raffles Link, and Robertson Quay.
Tapout Pte Ltd commenced business in December 2021 and operates a competing beer bar at 103 East Coast Road. Tapout applied to register the trade mark "TAP" for restaurant services on 10 December 2021.
Craft Drinks opposed the registration of Tapout's "TAP" mark, arguing that its own "TAP" marks are well-known in Singapore and that Tapout's use of a similar mark would cause consumer confusion and dilute the distinctiveness of Craft Drinks' marks.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether Craft Drinks' "TAP" marks are well-known in Singapore under Section 8(4) of the Trade Marks Act.
- If the "TAP" marks are well-known, whether Tapout's use of a similar mark would indicate a connection with Craft Drinks, damage Craft Drinks' interests, cause dilution, or take unfair advantage of the distinctive character of the "TAP" marks.
- Whether Tapout's "TAP" mark is similar to Craft Drinks' "TAP" marks under Section 8(2)(b) of the Act, such that its registration should be refused.
- Whether Tapout's use of the "TAP" mark would constitute passing off under Section 8(7)(a) of the Act.
How Did the Court Analyse the Issues?
The Intellectual Property Office of Singapore first examined whether Craft Drinks' "TAP" marks are well-known in Singapore under Section 8(4) of the Trade Marks Act. The office considered factors such as the degree of public recognition, the duration and extent of use, and the value associated with the marks.
While the office acknowledged that Craft Drinks had been using the "TAP" marks for about 6 years prior to the relevant date and had multiple outlets in prime locations, it ultimately concluded that the evidence did not show the marks to be well-known to the relevant sector of the public - namely, actual and potential consumers of beer beverages. The office found that Craft Drinks' marketing and promotional efforts were limited, and that the "TAP" marks were not sufficiently distinctive or famous to be considered well-known.
Having found that the "TAP" marks were not well-known, the office did not need to consider the other issues of whether Tapout's use of a similar mark would indicate a connection, cause dilution, or constitute passing off. The office proceeded to analyze the similarity of the marks under Section 8(2)(b).
In its analysis of mark similarity, the office considered the visual, aural, and conceptual similarities between Craft Drinks' "TAP" marks and Tapout's proposed "TAP" mark. While there was some degree of similarity, the office ultimately concluded that the marks were not confusingly similar, as the word "tap" is a common term used in the food and beverage industry and consumers would be able to distinguish between the two businesses.
What Was the Outcome?
Based on its findings, the Intellectual Property Office of Singapore dismissed Craft Drinks' opposition and allowed Tapout's application to register the "TAP" mark. The office held that Craft Drinks had failed to establish that its "TAP" marks are well-known in Singapore, and that the similarity between the marks was not sufficient to warrant refusing Tapout's registration.
Why Does This Case Matter?
This case provides guidance on the high threshold required to establish that a trade mark is "well-known" in Singapore, even for a business that has been using the mark for several years and has multiple outlets. The decision emphasizes that mere extensive use and promotion of a mark is not enough - the mark must be truly famous and recognizable to the relevant sector of the public.
The case also demonstrates the nuanced analysis required in assessing the similarity of trade marks, particularly when the mark in question is a common word used in the industry. Even if there is some degree of similarity, the office will consider whether consumers are still able to distinguish between the marks and the businesses behind them.
Overall, this judgment highlights the challenges businesses may face in opposing the registration of similar marks, even when they have prior rights and a history of use. It underscores the importance of building strong brand recognition and distinctiveness to meet the well-known threshold under the Trade Marks Act.
Legislation Referenced
Cases Cited
- [2011] SGHC 176
- [2013] SGCA 18
- [2013] SGIPOS 6
- [2017] SGIPOS 8
- [2018] SGIPOS 5
- [2021] SGHC 49
- [2024] SGIPOS 7
Source Documents
This article analyses [2024] SGIPOS 7 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.