Case Details
- Citation: [2020] SGIPOS 4
- Court: Intellectual Property Office of Singapore
- Date: 2020-03-06
- Judges: Anne Loo
- Plaintiff/Applicant: Discovery Communications, LLC
- Defendant/Respondent: A-Star-Education Discovery Camps
- Legal Areas: Trade marks and trade names — Opposition to registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2010] SGHC 16, [2016] SGHC 32, [2017] SGCA 30, [2018] SGHC 238, [2018] SGIPOS 1, [2018] SGIPOS 16, [2018] SGIPOS 2, [2020] SGIPOS 4
- Judgment Length: 48 pages, 20,976 words
Summary
This case involves a trade mark opposition between Discovery Communications, LLC ("the Opponent") and A-Star-Education Discovery Camps Pte. Ltd. ("the Applicant"). The Opponent, a major global media company, opposed the registration of the Applicant's trade mark "A-STAR-EDUCATION DISCOVERY CAMPS" on several grounds, including likelihood of confusion with the Opponent's earlier "DISCOVERY" trade marks. The Hearing Officer had to determine whether the Applicant's mark was similar to the Opponent's earlier marks, whether the goods and services were identical or similar, and whether there was a likelihood of confusion. The Hearing Officer ultimately found in favor of the Opponent on the ground of likelihood of confusion under Section 8(2)(b) of the Trade Marks Act.
What Were the Facts of This Case?
The Applicant, A-Star-Education Discovery Camps Pte. Ltd., applied to register the trade mark "A-STAR-EDUCATION DISCOVERY CAMPS" in Singapore on 26 July 2017. The application covered goods and services in Classes 9, 16, and 43, relating mainly to educational resources.
The Opponent, Discovery Communications, LLC, is a major global media company that owns numerous "DISCOVERY" and "DISCOVERY"-formative trade marks in Singapore, including DISCOVERY, DISCOVERY EDUCATION, DISCOVERY GO, DISCOVERY KIDS, and DISCOVERY CHANNEL. The Opponent filed an opposition against the Applicant's trade mark application on several grounds, including likelihood of confusion under Section 8(2)(b) of the Trade Marks Act.
The Hearing Officer had to assess whether the Applicant's mark was similar to the Opponent's earlier marks, whether the goods and services were identical or similar, and whether there was a likelihood of confusion between the marks.
What Were the Key Legal Issues?
The key legal issue in this case was whether the opposition under Section 8(2)(b) of the Trade Marks Act should succeed. Section 8(2)(b) prohibits the registration of a trade mark if it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, such that there exists a likelihood of confusion on the part of the public.
To determine this, the Hearing Officer had to systematically assess three elements: (i) the similarity of the marks, (ii) the similarity of the goods and services, and (iii) the likelihood of confusion arising from the two similarities.
How Did the Court Analyse the Issues?
The Hearing Officer applied the step-by-step approach set out by the Court of Appeal in Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911.
On the first element of mark similarity, the Hearing Officer compared the Applicant's mark "A-STAR-EDUCATION DISCOVERY CAMPS" with the Opponent's earlier "DISCOVERY" marks. The Hearing Officer found that the dominant and distinctive component of the Applicant's mark was the word "DISCOVERY", which was identical to the Opponent's earlier marks. The additional elements "A-STAR-EDUCATION" and "CAMPS" were found to be less distinctive and did not sufficiently distinguish the Applicant's mark from the Opponent's marks.
On the second element of goods and services similarity, the Hearing Officer found that the Applicant's goods and services in Classes 9, 16, and 43 were identical or highly similar to the goods and services covered by the Opponent's earlier marks. Both parties were involved in the provision of educational resources and services.
Having established the first two elements, the Hearing Officer then considered the third element of likelihood of confusion. The Hearing Officer took into account factors such as the high degree of similarity between the marks, the identity/similarity of the goods and services, the Opponent's reputation and goodwill in the "DISCOVERY" brand, and the possibility of consumer perception that the Applicant's services were affiliated with or endorsed by the Opponent. Ultimately, the Hearing Officer concluded that there was a likelihood of confusion on the part of the public.
What Was the Outcome?
The Hearing Officer found in favor of the Opponent and upheld the opposition under Section 8(2)(b) of the Trade Marks Act. The Applicant's trade mark application was therefore refused registration.
Why Does This Case Matter?
This case provides a useful illustration of the application of the step-by-step approach in assessing likelihood of confusion under Section 8(2)(b) of the Trade Marks Act. It demonstrates the importance of considering the overall impression created by the marks, the degree of similarity between the marks, and the identity or similarity of the goods and services covered.
The case also highlights the significance of a well-known brand owner's reputation and goodwill in establishing a likelihood of confusion, even where the competing mark contains additional distinctive elements. This serves as a reminder to brand owners to vigilantly monitor and oppose potentially confusing trade mark applications to protect their valuable intellectual property rights.
For practitioners, this case provides guidance on the factors that the Intellectual Property Office of Singapore will consider in assessing likelihood of confusion, and the threshold that must be met for a successful opposition on this ground.
Legislation Referenced
Cases Cited
- [2010] SGHC 16
- [2016] SGHC 32
- [2017] SGCA 30
- [2018] SGHC 238
- [2018] SGIPOS 1
- [2018] SGIPOS 16
- [2018] SGIPOS 2
- [2020] SGIPOS 4
Source Documents
This article analyses [2020] SGIPOS 4 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.