Case Details
- Citation: Daimler AG v Vivo Mobile Communication Co., Ltd. [2022] SGIPOS 1
- Court: Intellectual Property Office of Singapore
- Date: 2022-02-09
- Judges: Principal Assistant Registrar Sandy Widjaja
- Plaintiff/Applicant: Daimler AG
- Defendant/Respondent: Vivo Mobile Communication Co., Ltd.
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2007] SGIPOS 12, [2011] SGHC 176, [2012] SLR 193, [2015] SGHC 216, [2016] SGIPOS 4, [2022] SGIPOS 1
- Judgment Length: 30 pages, 6,488 words
Summary
This case involves an opposition by German automaker Daimler AG against the trade mark application of Chinese electronics company Vivo Mobile Communication Co., Ltd. Daimler opposed Vivo's application to register a trade mark for "Electric vehicles; Cars; Motorcycles; Driverless cars [autonomous cars]; Bicycles; Mobility scooters; Trolleys; Tires for vehicle wheels; Remote control vehicles, other than toys; Water vehicles; Air vehicles; Upholstery for vehicles" on the grounds that it was similar to Daimler's earlier registered trade mark and would likely cause confusion among consumers. The Intellectual Property Office of Singapore (IPOS) ultimately found that while Daimler's earlier mark was distinctive, it had not acquired a high level of distinctiveness through use in Singapore. Accordingly, IPOS held that the marks were not sufficiently similar and there was no likelihood of confusion, dismissing Daimler's opposition.
What Were the Facts of This Case?
Daimler AG is a major German automaker that was founded in 1882 and is one of the largest vehicle manufacturers in the world, including producing vans. Vivo Mobile Communication Co., Ltd. is a global Chinese technology company primarily known for producing smartphones, which was founded in 2009 and now has over 370 million customers worldwide, including a presence in Singapore.
On November 9, 2017, Vivo applied to register a trade mark for a range of vehicle-related goods in Singapore, including electric vehicles, cars, motorcycles, bicycles, and more. Daimler opposed this application, relying on its earlier registered trade mark T0112764E covering "Motor vehicles; parts and fittings therefor" in Class 12.
Daimler argued that Vivo's mark was similar to its earlier mark and would be registered for identical or similar goods, creating a likelihood of confusion among consumers. Vivo defended its application, arguing that Daimler's earlier mark was not highly distinctive and had not acquired distinctiveness through use in Singapore.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether Daimler's earlier registered trade mark T0112764E was sufficiently distinctive, either inherently or through acquired distinctiveness, to enjoy a high threshold before a competing sign would be considered dissimilar.
2. Whether Vivo's applied-for mark was similar to Daimler's earlier mark in terms of visual, aural, and conceptual similarity.
3. Whether there was a likelihood of confusion among consumers given the similarity of the marks and the similarity/identity of the goods covered.
How Did the Court Analyse the Issues?
The Registrar first outlined the applicable legal principles for assessing trade mark similarity and likelihood of confusion under Section 8(2)(b) of the Singapore Trade Marks Act. This involves a three-step test of: (1) assessing similarity of the marks, (2) assessing similarity of the goods/services, and (3) determining if there is a likelihood of confusion arising from the two similarities.
On the issue of the distinctiveness of Daimler's earlier mark, the Registrar agreed that the mark was inherently distinctive as it had no direct meaning or significance in relation to the registered goods. However, the Registrar found that Daimler had not established that the mark had acquired a high level of distinctiveness through use in Singapore. The evidence provided by Daimler on its sales volumes in Singapore was "sparse" and suggested the mark was "seldom, if ever, used on its own."
In assessing the similarity of the marks, the Registrar considered the visual, aural, and conceptual similarities. While there were some visual and aural similarities, the Registrar ultimately found that the marks were not similar overall, given the lack of distinctiveness of Daimler's earlier mark.
Finally, in considering the likelihood of confusion, the Registrar held that given the lack of similarity between the marks, there was no likelihood of confusion among consumers, even though the goods covered were identical or similar.
What Was the Outcome?
The Registrar dismissed Daimler's opposition and allowed Vivo's trade mark application to proceed to registration. Daimler's earlier mark was found to be inherently distinctive but not to have acquired a high level of distinctiveness through use in Singapore. As a result, the marks were not considered sufficiently similar, and there was no likelihood of confusion among consumers.
Why Does This Case Matter?
This case provides important guidance on the assessment of trade mark similarity and likelihood of confusion under Singapore law. It highlights that even where an earlier mark is inherently distinctive, the owner must establish that it has acquired a high level of distinctiveness through extensive use and reputation in order to enjoy a high threshold before a competing mark will be found dissimilar.
The case also demonstrates the importance of adducing sufficient evidence of actual use and sales of a trade mark in Singapore, as opposed to just asserting the mark's reputation. Trade mark owners seeking to oppose applications on the basis of their earlier marks must be prepared to provide detailed evidence of the use and recognition of their marks in the local market.
More broadly, this decision reinforces the principle that the assessment of trade mark similarity and likelihood of confusion is a holistic, qualitative exercise based on the overall impression of the marks, rather than a purely quantitative or mechanistic exercise. The Registrar must consider the distinctiveness of the earlier mark as a key factor in this assessment.
Legislation Referenced
Cases Cited
- [2007] SGIPOS 12
- [2011] SGHC 176
- [2012] SLR 193
- [2015] SGHC 216
- [2016] SGIPOS 4
- [2022] SGIPOS 1
Source Documents
This article analyses [2022] SGIPOS 1 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.