Case Details
- Citation: [2020] SGIPOS 11
- Court: Intellectual Property Office of Singapore
- Date: 2020-10-14
- Judges: Jason Chan
- Plaintiff/Applicant: Dhamani Jewels DMCC
- Defendant/Opponent: Damiani International BV
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Interpretation Act
- Cases Cited: [2001] SGIPOS 4, [2007] SGIPOS 12, [2011] SGHC 176, [2016] SGIPOS 1, [2016] SGIPOS 15, [2017] SGIPOS 16, [2018] SGIPOS 2, [2018] SGIPOS 9, [2019] SGIPOS 1, [2020] SGIPOS 11
- Judgment Length: 44 pages, 19,155 words
Summary
This case involves a trade mark opposition between two companies that use their family names as trade marks in the jewellery and precious stones business. Dhamani Jewels DMCC, the applicant, applied to register the trade mark "DHAMANI 1969" in Singapore. Damiani International BV, the opponent, opposed the registration on the basis that the mark is similar to its earlier registered trade mark "DAMIANI" and there is a likelihood of confusion.
The Intellectual Property Office of Singapore (IPOS) found that while the competing marks are visually and aurally similar, the conceptual differences between them mean that there is no likelihood of confusion. The opposition was therefore dismissed, and the applicant's trade mark was allowed to proceed to registration.
What Were the Facts of This Case?
The applicant, Dhamani Jewels DMCC, is a company incorporated and headquartered in Dubai that manufactures and retails jewellery. The Dhamani family business was started in 1969 in Jaipur, India, and the "Dhamani" name is the family's surname. The applicant does not operate a physical retail store in Singapore, but has made private sales to individual customers and jewellers in Singapore.
The opponent, Damiani International BV, is a subsidiary of the Italian luxury jewellery group Damiani S.p.A. The Damiani Group was founded in Valenza, Italy in 1924 by Enrico Grassi Damiani. The group designs, manufactures, distributes and sells jewellery and luxury watches worldwide, and operates a boutique in Singapore through its local subsidiary Damiani Singapore Pte. Ltd.
The applicant applied to register the trade mark "DHAMANI 1969" in Singapore in Classes 14 and 35 for jewellery, precious stones, and related retail and wholesale services. The opponent opposed the registration, relying on its earlier registered trade mark "DAMIANI" in Class 14 for jewellery and precious stones.
What Were the Key Legal Issues?
The key legal issue in this case was whether the applicant's trade mark "DHAMANI 1969" is similar to the opponent's earlier registered trade mark "DAMIANI", such that there exists a likelihood of confusion on the part of the public under Section 8(2)(b) of the Trade Marks Act.
The opponent also relied on Sections 8(4)(b)(i) and 8(7)(a) of the Act, but the hearing officer focused his analysis primarily on the Section 8(2)(b) ground.
How Did the Court Analyse the Issues?
The hearing officer applied the three-step test set out in the Staywell case for assessing similarity of marks under Section 8(2)(b):
1. Are the competing marks similar?
2. Are the goods/services identical or similar?
3. Is there a likelihood of confusion?
On the first step, the hearing officer examined the visual, aural and conceptual similarity of the marks. He found that the marks are visually and aurally similar, as they both prominently feature the word elements "DAMIANI" and "DHAMANI" respectively. However, he found that the marks are conceptually different, as "DAMIANI" refers to the opponent's family name, while "DHAMANI" refers to the applicant's family name.
The hearing officer also considered the distinctiveness of the marks, noting that the word elements are the dominant and distinctive components. He found that while the opponent's "DAMIANI" mark has a high degree of technical distinctiveness, the applicant's "DHAMANI 1969" mark also has a reasonable level of technical distinctiveness.
On the second step, the hearing officer found that the goods and services covered by the competing marks are identical or highly similar, as they both relate to jewellery, precious stones, and retail/wholesale services.
However, on the third step, the hearing officer concluded that despite the visual and aural similarities, the conceptual differences between the marks would be sufficient to prevent a likelihood of confusion. He held that the average consumer would be able to distinguish between the two marks and understand that they refer to different family names.
What Was the Outcome?
The hearing officer dismissed the opposition and allowed the applicant's trade mark "DHAMANI 1969" to proceed to registration. He found that while the competing marks are similar to a certain degree, the conceptual differences between them mean that there is no likelihood of confusion on the part of the public.
Why Does This Case Matter?
This case provides useful guidance on the assessment of trade mark similarity and likelihood of confusion under Section 8(2)(b) of the Trade Marks Act. It demonstrates that even where there is visual and aural similarity between competing marks, conceptual differences can be a decisive factor in finding no likelihood of confusion.
The case also highlights the importance of considering the distinctiveness of the marks, both in the ordinary/non-technical sense and the technical sense, as part of the overall similarity analysis. A mark with a high degree of technical distinctiveness may enjoy a higher threshold before a competing mark will be found dissimilar.
For practitioners, this case serves as a reminder that the assessment of trade mark similarity is a holistic exercise, and that all three aspects of similarity (visual, aural, conceptual) must be considered, along with the distinctiveness of the marks. The outcome will ultimately depend on the specific facts and circumstances of each case.
Legislation Referenced
Cases Cited
- [2001] SGIPOS 4
- [2007] SGIPOS 12
- [2011] SGHC 176
- [2016] SGIPOS 1
- [2016] SGIPOS 15
- [2017] SGIPOS 16
- [2018] SGIPOS 2
- [2018] SGIPOS 9
- [2019] SGIPOS 1
- [2020] SGIPOS 11
Source Documents
This article analyses [2020] SGIPOS 11 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.