Case Details
- Citation: [2010] SGHC 200
- Title: Festina Lotus SA v Romanson Co Ltd
- Court: High Court of the Republic of Singapore
- Date: 16 July 2010
- Case Number: Originating Summons No 240/2010/H
- Tribunal/Court: High Court
- Coram: Tay Yong Kwang J
- Judgment reserved: Yes
- Plaintiff/Applicant: Festina Lotus SA
- Defendant/Respondent: Romanson Co Ltd
- Counsel for Appellant: G. Radakrishnan (Infinitus Law Corporation)
- Counsel for Respondent: Jonathan Yuen and Joana Teo (Harry Elias Partnership LLP)
- Legal Area(s): Trade Marks and Trade Names – Grounds for Refusal of Registration
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”); Rules of Court (Cap 322, R 5, 2006 Rev Ed) (“ROC”)
- Key Statutory Provisions: s 8(2)(b) TMA; s 7(6) TMA; Order 87 r 4 ROC; s 75(2)(a) TMA
- Judgment Length: 28 pages, 14,625 words
- Cases Cited (as provided): [2007] SGIPOS 9, [2009] SGIPOS 3, [2010] SGHC 16, [2010] SGHC 200, [2010] SGIPOS 2
Summary
Festina Lotus SA v Romanson Co Ltd concerned an opposition to the registration of a trade mark for jewellery and horological goods. The applicant, Festina Lotus SA (“Festina”), owned earlier trade marks built around the word “FESTINA” and a distinctive crest device. The respondent, Romanson Co Ltd (“Romanson”), applied to register “J.ESTINA and device” for goods in Class 14, including wrist watches and jewellery items. The Principal Assistant Registrar of Trade Marks (“PAR”) dismissed Festina’s opposition on two grounds: (i) that Romanson’s mark was similar to Festina’s earlier mark and likely to cause confusion under s 8(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”); and (ii) that Romanson’s application was made in bad faith under s 7(6) TMA.
On appeal, the High Court (Tay Yong Kwang J) addressed the applicable standard of review for appeals from the PAR and then re-examined the substantive trade mark analysis. The court accepted that the assessment of similarity and likelihood of confusion is inherently fact-sensitive and involves a “global appreciation” of the marks and the goods. Although the full reasoning in the truncated extract is not reproduced here, the decision is structured around whether the PAR’s findings on visual, aural and conceptual similarity, and on the likelihood of confusion, were materially wrong, and whether the evidence supported a finding of bad faith. The court ultimately upheld the PAR’s dismissal of the opposition.
What Were the Facts of This Case?
Festina is the proprietor of multiple registered trade marks in Singapore that are variations of “FESTINA and device” across several Nice Classes, including Classes 3, 9, 14, 16, 18 and 25. For Class 14, Festina’s key earlier mark was registered under trade mark number T9004265I (“Appellant’s mark 1”). This composite mark comprised a crest featuring a crown device at the top, two prancing horses on either side, and a curved banner at the bottom bearing the word “FESTINA”. Festina also had other marks in Classes 9, 18 and 25 that used the same device but with the word “FESTINA” in larger, bold font as a plain word mark positioned at the bottom of the device.
Romanson filed a trade mark application (T05/25465Z) for “J.ESTINA and device” (“Respondent’s mark”) in Class 14. The specification included “wrist watches, electric watches, desk clocks, alarm clocks, necklaces, rings, bracelets, earrings, medals and brooches”. Festina opposed the application on 22 September 2006. The opposition proceeded before the PAR, who dismissed it. Festina then appealed to the High Court, challenging the PAR’s findings specifically under s 8(2)(b) and s 7(6) TMA.
In support of its opposition, Festina provided evidence intended to show the commercial standing and reputation of the “FESTINA” brand. Festina’s managing director, Mr Javier Ribas, stated that the company was founded in Switzerland in 1902 and that “FESTINA” is a leader in the mid-range watch sector in Europe. Festina also claimed international distribution and sales in more than 50 countries and sponsorship of professional cycling events, including being the official time keeper of the Tour de France. Festina tendered evidence of annual turnover and selected invoices evidencing sales in East Asia (notably Hong Kong and Japan). Importantly, Festina acknowledged that there were no specific sales figures for Singapore because its marks had not been used in Singapore.
Romanson, for its part, deposed that it is a South Korean manufacturer of watches established in April 1998. It described its product range as including luxury jewellery watches, prestige-grade watches, business watches, fashionable watches and casual watches. Romanson also stated that it ventured into the jewellery market in 2002. Although Romanson’s mark had not been used in Singapore, it tendered evidence of approximate sales value of jewellery, watches and horological articles under the “J.ESTINA” mark in countries such as China and Vietnam. The dispute therefore arose in a context where both parties’ marks were not shown to have been used in Singapore, but Festina had earlier registrations and Romanson sought registration on the basis of its application and foreign sales evidence.
What Were the Key Legal Issues?
The first key issue was whether Romanson’s “J.ESTINA and device” mark should be refused registration under s 8(2)(b) TMA. This required the court to determine whether (i) Romanson’s mark was similar to an earlier trade mark; (ii) it was to be registered for goods identical with or similar to those for which the earlier mark was protected; and (iii) there existed a likelihood of confusion on the part of the public. The “earlier trade mark” question was itself contested: Festina argued that the relevant earlier mark should include not only Appellant’s mark 1 (as the PAR held) but also its other marks, by characterising the goods across different classes as “fashion accessories” and thus creating overlap in the relevant goods comparison.
The second key issue was whether Romanson’s application was made in bad faith under s 7(6) TMA. Bad faith in trade mark law is not merely a question of intent in the abstract; it is assessed by reference to unacceptable commercial behaviour and the standards of reasonable and experienced persons in the relevant trade. Festina argued that Romanson must have been aware of Festina’s mark and reputation and that Romanson’s failure to respond with counter-evidence, together with an unsatisfactory explanation for the derivation of “J.ESTINA”, indicated copying. Romanson maintained that there was no need to address bad faith because the marks were completely different and Festina had not provided distinct proof of unacceptable commercial behaviour.
How Did the Court Analyse the Issues?
Before turning to the substantive trade mark questions, the High Court addressed the standard of review. The appeal was governed by Order 87 r 4 of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) (“ROC”), which provides that an appeal is by way of rehearing and that the evidence used on appeal should be the same as that used before the Registrar, save with leave of the court. The parties agreed that “rehearing” in this context takes reference from the approach in an appeal from the High Court to the Court of Appeal. The court therefore considered that it should not overturn the PAR’s decision simply because it might have decided differently if it were the first instance tribunal.
The court endorsed the principle that the appellant must demonstrate that the PAR’s decision was wrong in a material way—meaning a significant departure from a proper assessment of the law or the facts. This is particularly important because the assessment of similarity and likelihood of confusion under s 8(2)(b) TMA is highly subjective and depends on a global appreciation of the marks and the marketplace context. The court’s approach thus required careful scrutiny of whether the PAR’s findings on visual, aural and conceptual similarity, and on the likelihood of confusion, were properly grounded.
On the s 8(2)(b) analysis, the PAR had made several findings. First, it held that Appellant’s mark 1 was the relevant “earlier trade mark” for the purposes of s 8(2)(b) TMA, and therefore did not consider Appellant’s other marks. Second, it found that the marks were visually dissimilar, though aurally similar, and conceptually dissimilar. Third, it found that certain goods were identical (watches and clocks) and that other goods (necklaces, rings, bracelets, earrings, medals and brooches) were similar to Festina’s Class 14 goods. Despite these mixed findings, the PAR concluded that there was no likelihood of confusion.
On appeal, Festina challenged the PAR’s approach in two ways. First, Festina argued that the goods in Classes 9, 14, 18 and 25 could be broadly and rationally categorised as “fashion accessories”. On that basis, Festina contended that the relevant earlier mark should include not only mark 1 but also its other marks, because the goods overlap in nature. This was strategically important because Festina conceded that its other marks might bear greater visual similarity to Romanson’s mark than mark 1. Second, Festina argued that applying the global appreciation test, there was a likelihood of confusion between Romanson’s “J.ESTINA and device” and Festina’s “FESTINA and device” marks.
Romanson responded that Festina’s attempt to categorise the goods across classes was misconceived because there was no overlap between the specification of goods for Festina’s marks in Classes 9 and 18 (and 25) and Romanson’s Class 14 goods. Romanson maintained that the relevant earlier mark should therefore be confined to Appellant’s mark 1. Romanson also argued that there were no visual, aural or conceptual similarities between the marks and that, in any event, there was no likelihood of confusion. On bad faith, Romanson submitted that if the marks were completely different, the bad faith issue did not arise, and in any case Festina had not provided distinct proof of unacceptable commercial behaviour.
Although the extract provided is truncated and does not reproduce the court’s final reasoning in full, the structure of the High Court’s analysis is clear: it would have assessed whether the PAR’s selection of the “earlier trade mark” was legally correct, whether the PAR’s similarity findings were consistent with the global appreciation approach, and whether the conclusion on likelihood of confusion followed from those findings. The court would also have considered whether the evidence adduced by Festina—particularly the absence of Singapore use, the foreign sales evidence, and the explanation of brand derivation—could support an inference of copying or unacceptable commercial behaviour sufficient to establish bad faith under s 7(6) TMA.
What Was the Outcome?
The High Court dismissed Festina’s appeal and upheld the PAR’s decision to refuse the opposition. In practical terms, Romanson’s trade mark application for “J.ESTINA and device” in Class 14 proceeded without Festina’s opposition succeeding on either s 8(2)(b) or s 7(6) TMA.
The outcome therefore confirms that even where goods may be identical or similar, and even where there may be some degree of aural similarity, the overall assessment of similarity and likelihood of confusion can still lead to a finding of no confusion. It also indicates that bad faith requires more than speculation or inference; it must be supported by evidence capable of showing unacceptable commercial behaviour by reference to the standards of reasonable and experienced persons in the relevant trade.
Why Does This Case Matter?
Festina Lotus SA v Romanson Co Ltd is useful for practitioners because it illustrates how Singapore courts approach the interplay between (i) the identification of the relevant earlier trade mark for s 8(2)(b) TMA, (ii) the global appreciation of similarity (visual, aural and conceptual), and (iii) the likelihood of confusion analysis. The case also highlights that goods similarity is not determined by broad labels alone; it depends on the actual specifications and the rational categorisation of goods in the context of the trade mark register and the relevant consumer perception.
From a litigation strategy perspective, the case underscores the importance of aligning the “earlier mark” argument with the statutory framework. Festina’s attempt to expand the earlier mark base by characterising multiple classes as “fashion accessories” was met with resistance. This suggests that courts will scrutinise whether such categorisation genuinely reflects overlap in the relevant goods specifications and whether it is legally relevant to the “earlier trade mark” determination under s 8(2)(b) TMA.
On bad faith, the decision is a reminder that s 7(6) TMA is evidence-driven. Where a claimant relies on alleged copying, it must provide a coherent evidential foundation rather than relying on the respondent’s silence or on perceived inadequacy in explanations. The court’s approach reflects the principle that bad faith is not established by mere proximity of marks or by conjecture about awareness; it requires proof of unacceptable commercial behaviour.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) – s 8(2)(b)
- Trade Marks Act (Cap 332, 2005 Rev Ed) – s 7(6)
- Trade Marks Act (Cap 332, 2005 Rev Ed) – s 75(2)(a)
- Rules of Court (Cap 322, R 5, 2006 Rev Ed) – Order 87 r 4
Cases Cited
- [2007] SGIPOS 9
- [2009] SGIPOS 3
- [2010] SGHC 16
- [2010] SGIPOS 2
- [2010] SGHC 200
Source Documents
This article analyses [2010] SGHC 200 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.