Case Details
- Citation: [2022] SGIPOS 19
- Court: Intellectual Property Office of Singapore
- Date: 2022-12-29
- Judges: Principal Assistant Registrar Mark Lim
- Plaintiff/Applicant: LAC Co., Ltd.
- Defendant/Opponent: Fair Isaac Corporation
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2005] SGHC 175, [2018] SGHC 238, [2018] SGIPOS 1, [2018] SGIPOS 2, [2020] SGIPOS 3, [2020] SGIPOS 6, [2021] SGHC 165, [2022] SGHC 293, [2022] SGIPOS 19, [2022] SGIPOS 4
- Judgment Length: 43 pages, 10,653 words
Summary
This case involves a trade mark opposition filed by Fair Isaac Corporation, the owner of the "FALCON" trade mark, against the registration of the " " trade mark application by LAC Co., Ltd. The key issues were whether the Application Mark was similar to the Opponent's Mark, and whether there was a likelihood of confusion between the two marks. The Intellectual Property Office of Singapore ultimately found in favor of the Applicant, LAC Co., Ltd., and dismissed the opposition.
What Were the Facts of This Case?
On February 21, 2020, LAC Co., Ltd. (the "Applicant") applied to register the trade mark " " (the "Application Mark") in Singapore. The Application Mark covered a broad range of goods and services in classes 9, 35, 42, and 45, including computer software, cybersecurity services, and business management services.
Fair Isaac Corporation (the "Opponent") opposed the registration of the Application Mark. The Opponent relied on its prior registration for the "FALCON" trade mark (the "Opponent's Mark"), which was registered for software and services related to fraud detection and management. The Opponent also relied on several other "FALCON" branded trade marks and trade names it owned.
The Applicant is a leading Japanese IT solutions and cybersecurity company, employing over 2,000 people and serving over a thousand Japanese corporate clients. The Applicant's cybersecurity business has been operating since 1995 through its predecessor company. The Applicant is active in the international cybersecurity scene, participating in events and conducting training workshops.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Application Mark was similar to the Opponent's Mark under Section 8(2)(b) of the Trade Marks Act, such that there was a likelihood of confusion between the two marks.
2. Whether the use of the Application Mark would be contrary to Section 8(7)(a) of the Trade Marks Act, as it would constitute passing off of the Opponent's goodwill and reputation.
How Did the Court Analyse the Issues?
On the issue of similarity of marks under Section 8(2)(b), the Registrar considered the visual, aural, and conceptual similarity between the Application Mark and the Opponent's Mark. The Registrar rejected the Opponent's argument that the Application Mark was visually similar because it wholly incorporated the Opponent's Mark. Instead, the Registrar found that the additional elements in the Application Mark, such as the stylized " " device, reduced the visual similarity.
The Registrar also considered the distinctiveness of the Opponent's Mark, noting that there were many other trade marks on the Singapore register that contained or were identical to the "FALCON" element. The Registrar held that the state of the register was relevant in assessing the distinctiveness of the Opponent's Mark, and that this reduced the weight to be given to the visual similarity between the marks.
On aural and conceptual similarity, the Registrar found that the additional elements in the Application Mark were sufficient to distinguish it from the Opponent's Mark. Overall, the Registrar concluded that the Application Mark was not similar to the Opponent's Mark under the step-by-step approach laid out in relevant case law.
On the issue of passing off under Section 8(7)(a), the Registrar found that the Opponent had not established the necessary goodwill in Singapore to succeed on this ground. The Registrar noted that the Opponent's evidence focused primarily on its global operations, without sufficient evidence of its local reputation and goodwill in Singapore.
What Was the Outcome?
The Registrar dismissed the opposition and allowed the registration of the Application Mark. The Registrar found that the Application Mark was not similar to the Opponent's Mark, and that the Opponent had failed to establish a case for passing off.
Why Does This Case Matter?
This case provides useful guidance on the principles to be applied when assessing the similarity of trade marks, particularly in situations where the later mark wholly incorporates an earlier mark. The Registrar's analysis on the relevance of the state of the register in assessing distinctiveness is also significant, as it clarifies that this factor can be taken into account when evaluating the similarity of marks.
The case also highlights the importance of providing sufficient evidence of local goodwill and reputation when relying on a passing off claim. Opponents cannot solely rely on global operations and reputation, but must demonstrate the specific goodwill and reputation established in the jurisdiction where protection is sought.
This decision will be a useful reference for trade mark practitioners in Singapore when advising clients on the registrability of their marks and the likelihood of success in trade mark oppositions.
Legislation Referenced
Cases Cited
- [2005] SGHC 175
- [2018] SGHC 238
- [2018] SGIPOS 1
- [2018] SGIPOS 2
- [2020] SGIPOS 3
- [2020] SGIPOS 6
- [2021] SGHC 165
- [2022] SGHC 293
- [2022] SGIPOS 19
- [2022] SGIPOS 4
Source Documents
This article analyses [2022] SGIPOS 19 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.