Case Details
- Citation: [2025] SGIPOS 1
- Court: Intellectual Property Office of Singapore
- Date: 2025-01-13
- Judges: IP Adjudicator Tan Tee Jim, SC
- Plaintiff/Applicant: Tianrong Co Ltd
- Defendant/Opponent: Essity Hygiene and Health Aktiebolag
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2015] SGHC 216, [2021] SGHC 165, [2025] SGIPOS 1
- Judgment Length: 48 pages, 10,632 words
Summary
This case involves a trade mark opposition by Essity Hygiene and Health Aktiebolag ("Essity") against an application by Tianrong Co Ltd ("Tianrong") to register the trade mark " " under TM No. 40202125945T ("Application Mark") in Classes 3 and 5. Essity, the opponent, is the registered proprietor of several trade marks including "TENA" which it uses for its hygiene and health products. The IP Adjudicator, Tan Tee Jim SC, dismissed Essity's opposition, finding that there was no likelihood of confusion between the competing marks and goods.
What Were the Facts of This Case?
On 16 September 2021, Tianrong applied to register the Application Mark in Classes 3 and 5. Essity, the opponent, is the registered proprietor of several trade marks including "TENA" which it uses for its hygiene and health products such as incontinence care products, baby diapers, wet wipes, consumer tissues, and feminine care products.
On 18 April 2022, Essity filed a notice of opposition to the registration of Tianrong's Application Mark. Essity relied on Sections 8(2)(b), 8(7)(a), 8(4)(b)(i), 8(4)(b)(ii) and 7(6) of the Trade Marks Act 1998 in its opposition.
Essity submitted evidence in the form of two statutory declarations by its Vice President IP, Jeanette Annergren. Tianrong submitted a statutory declaration by its President and CEO, Huang Huaixiang, stating that it is involved in the business of manufacturing and selling baby care products under the Application Mark.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the competing marks (Essity's "TENA" marks and Tianrong's Application Mark) are similar under Section 8(2)(b) of the Trade Marks Act.
2. Whether the goods covered by the competing marks are identical or similar.
3. Whether there exists a likelihood of confusion on the part of the public as a result of the similarities in the marks and goods.
The IP Adjudicator had to systematically and individually assess these three elements to determine if Essity's opposition under Section 8(2)(b) should succeed.
How Did the Court Analyse the Issues?
The IP Adjudicator applied the step-by-step approach endorsed by the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc. [2014] 1 SLR 911 for determining an opposition under Section 8(2)(b).
On the issue of similarity of marks, the Adjudicator considered the three aspects of similarity - visual, aural and conceptual. He noted that the assessment of similarity is ultimately a matter of impression rather than a quantitative exercise, and that the competing marks must be viewed and compared as a whole. The Adjudicator also considered the distinctive and dominant components of the marks.
On the issue of similarity of goods, the Adjudicator compared the specifications of goods covered by the competing marks and determined the extent to which they overlapped or were related.
Finally, on the issue of likelihood of confusion, the Adjudicator considered the overall impression created by the similarities (or dissimilarities) in the marks and goods, from the viewpoint of the average consumer who would exercise some care and good sense.
What Was the Outcome?
After considering the evidence and arguments, the IP Adjudicator dismissed Essity's opposition. He found that while there was some similarity between the competing marks and goods, the differences were sufficient to negate a likelihood of confusion on the part of the public.
Specifically, the Adjudicator concluded that the dominant and distinctive component of Essity's "TENA" marks was the word "TENA", whereas the dominant and distinctive component of Tianrong's Application Mark was the stylized Chinese characters. He found that the visual, aural and conceptual differences between the marks were sufficient to avoid a likelihood of confusion.
The Adjudicator also found that while there was some overlap in the goods covered by the competing marks, the differences in the nature, purpose and channels of trade of the goods were sufficient to negate a likelihood of confusion.
Why Does This Case Matter?
This case provides useful guidance on the application of the step-by-step approach under Section 8(2)(b) of the Trade Marks Act. It demonstrates the importance of carefully analyzing the similarities and differences in the competing marks and goods, from the perspective of the average consumer.
The case also highlights that the assessment of similarity of marks is ultimately a matter of impression, and that the competing marks must be viewed and compared as a whole. The Adjudicator's analysis of the distinctive and dominant components of the marks, and the trade-offs between the different aspects of similarity, provides helpful insights for trade mark practitioners.
More broadly, the case underscores the need for trade mark owners to carefully monitor and oppose potentially conflicting trade mark applications, in order to protect their brand and goodwill. At the same time, it shows that trade mark oppositions will be decided on the specific facts and evidence of each case, and that a finding of some similarity between marks or goods does not necessarily lead to a conclusion of likelihood of confusion.
Legislation Referenced
- Trade Marks Act
- Trade Marks Act 1998
Cases Cited
- [2015] SGHC 216
- [2021] SGHC 165
- [2025] SGIPOS 1
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc. [2014] 1 SLR 911
- Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] 2 SLR 941
Source Documents
This article analyses [2025] 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.