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
- Judges: Tay Yong Kwang J
- Case Number: Originating Summons No 240/2010/H
- Decision Date: 16 July 2010
- Tribunal/Court: High Court
- Coram: Tay Yong Kwang J
- Parties: Festina Lotus SA (Appellant/Applicant) v Romanson Co Ltd (Respondent)
- Counsel: G. Radakrishnan (Infinitus Law Corporation) for the Appellant; Jonathan Yuen and Joana Teo (Harry Elias Partnership LLP) for the Respondent
- Legal Areas: Trade Marks and Trade Names — Grounds for Refusal of Registration
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”)
- Key Provisions: s 8(2)(b) TMA; s 7(6) TMA; s 75(2)(a) TMA; Order 87 r 4 Rules of Court
- Judgment Length: 28 pages, 14,401 words
- Procedural History: Opposition dismissed by Principal Assistant Registrar of Trade Marks (“PAR”); appeal to High Court
- Earlier Related Decision: Festina Lotus SA v Romanson Co Ltd [2010] SGIPOS 2 (“GD”)
Summary
Festina Lotus SA v Romanson Co Ltd concerned an opposition to the registration of a trade mark for Class 14 goods. The respondent, Romanson Co Ltd, applied to register the mark “J.ESTINA” with a crown device for goods including wrist watches, clocks, necklaces, rings, bracelets, earrings, medals and brooches. The applicant, Festina Lotus SA, opposed the application, relying on its earlier registered trade mark(s) incorporating the word “FESTINA” and a distinctive crest device, and also alleging that the respondent’s application was made in bad faith.
The Principal Assistant Registrar (“PAR”) dismissed the opposition. On the relative ground under s 8(2)(b) TMA, the PAR found that although the goods were identical or similar, the marks were not sufficiently similar overall to create a likelihood of confusion. On the absolute ground under s 7(6) TMA, the PAR found that the evidence did not establish that the respondent’s conduct fell below acceptable commercial standards. On appeal, the High Court (Tay Yong Kwang J) addressed the correct standard of review for appeals from the Trade Marks PAR and then considered whether the PAR’s assessment of similarity and confusion, and its conclusion on bad faith, were materially wrong.
While the excerpt provided truncates the remainder of the judgment, the structure of the High Court’s analysis is clear from the portions available: the court first set out the appellate “rehearing” framework under Order 87 r 4 of the Rules of Court, then examined the applicant’s arguments on (i) the identification of the relevant “earlier trade mark” for s 8(2)(b) TMA and (ii) the global appreciation of visual, aural and conceptual similarity. The court also addressed the evidential burden for bad faith under s 7(6) TMA, including the applicant’s reliance on alleged copying and the respondent’s failure to provide a counterstatement.
What Were the Facts of This Case?
Festina Lotus SA is the proprietor of multiple trade marks in Singapore that are variations of “FESTINA and device”. The applicant’s marks were registered in several classes, including Class 3, 9, 14, 16, 18 and 25. For the purposes of the opposition, the key earlier mark was the applicant’s Class 14 registration, trade mark number T9004265I (“Appellant’s mark 1”). Appellant’s mark 1 is a composite mark featuring a crest with a crown device at the top, two prancing horses on the sides, and a curved banner at the bottom bearing the word “FESTINA”.
In addition to Appellant’s mark 1, the applicant had other registrations in Classes 9, 18 and 25 that used the same crest device but with the word “FESTINA” in larger, bold plain lettering positioned at the bottom of the device. The applicant’s evidence described the brand as founded in Switzerland in 1902 and as a mid-range watch leader in Europe, with distribution and sales across more than 50 countries. However, the applicant conceded that there were no specific sales figures for Singapore because its marks had not been used in Singapore.
Romanson Co Ltd, the respondent, filed a trade mark application on 16 December 2005 for registration of “J.ESTINA and device” in Class 14 (application number T05/25465Z). The specification included “wrist watches, electric watches, desk clocks, alarm clocks, necklaces, rings, bracelets, earrings, medals and brooches”. The respondent’s mark consisted of the word “J.ESTINA” with a crown device positioned above the word. The respondent did not use the mark in Singapore either; instead, it tendered evidence of approximate sales value of jewellery, watches and horological articles under the mark in countries such as China and Vietnam.
After the applicant filed a notice of opposition on 22 September 2006, the PAR dismissed the opposition. The applicant appealed against the PAR’s findings under s 8(2)(b) and s 7(6) TMA. The appeal therefore required the High Court to revisit both the relative ground (likelihood of confusion based on similarity of marks and similarity/identity of goods) and the absolute ground (bad faith in filing the application).
What Were the Key Legal Issues?
The first key issue concerned the scope of the “earlier trade mark” relevant to the s 8(2)(b) analysis. The applicant argued that the goods covered by its other registrations (Classes 9, 14, 18 and 25) could be broadly categorised as “fashion accessories”. On that basis, the applicant contended that the relevant earlier mark should include not only Appellant’s mark 1 but also its other marks, because the goods were sufficiently similar in nature. This was strategically important because the applicant conceded that its other marks might bear greater visual similarity to the respondent’s “J.ESTINA and device”.
The second key issue was whether the PAR correctly applied the “global appreciation” approach to determine whether there was a likelihood of confusion on the part of the public. This required assessing similarity between the marks in their visual, aural and conceptual aspects, and then weighing those similarities against the identity/similarity of the goods. The PAR had found visual dissimilarity, aural similarity, and conceptual dissimilarity, ultimately concluding that there was no likelihood of confusion.
The third issue related to the absolute ground of refusal under s 7(6) TMA: whether the respondent’s application was made in bad faith. The applicant’s case was that the respondent was likely aware of the applicant’s mark and reputation, that the respondent’s explanation for the derivation of “J.ESTINA” was unsatisfactory, and that the respondent’s failure to respond by counterstatement supported an inference of copying. The respondent’s position was that the applicant provided no distinct proof of unacceptable commercial behaviour and that, given the alleged lack of similarity between the marks, there was no need to address bad faith in any event.
How Did the Court Analyse the Issues?
The High Court began by addressing the standard of review. Appeals from the Trade Marks PAR are governed by s 75(2)(a) TMA and Order 87 r 4 of the Rules of Court. Order 87 r 4(2) provides that an appeal is by way of rehearing and that the evidence used on appeal must be the same as that used before the Registrar, subject to leave for further evidence. The parties agreed that “rehearing” in this context should be understood by reference to the approach taken in an appeal from the High Court to the Court of Appeal.
The court then adopted the principle articulated in SC Prodal 94 SRL v Spirits International NV [2003] EWHC 2756 (Ch), endorsed in Future Enterprises Pte Ltd v McDonald’s Corp [2007] 2 SLR(R) 845. The principle is that it is not the duty of the appellate court to overturn the PAR’s decision merely because it might have decided differently. Instead, the appellant must demonstrate that the decision was wrong in a material way—meaning there must be a significant departure from a proper assessment of the law or the facts. This matters because trade mark similarity and likelihood of confusion are inherently evaluative and subjective, so the appellate court’s role is not to conduct a wholly fresh assessment without regard to the PAR’s reasoning.
On the s 8(2)(b) issue, the High Court had to consider whether the PAR correctly identified the relevant earlier mark(s). The applicant’s argument depended on categorising the applicant’s goods across multiple classes as “fashion accessories” and then using that categorisation to broaden the set of earlier marks considered. The respondent resisted this, arguing that there was no overlap between the specification of goods for the applicant’s Classes 9 and 18 (and 25) and the respondent’s Class 14 goods. The High Court’s analysis therefore required careful attention to the statutory structure of s 8(2)(b): the comparison is between the applied-for mark and an earlier trade mark that is protected for goods or services identical with or similar to those for which the applied-for mark is sought.
In the excerpt, the PAR’s findings are summarised: Appellant’s mark 1 was treated as the relevant earlier trade mark; the PAR found visual dissimilarity between the marks, aural similarity, and conceptual dissimilarity. The PAR also found that the goods in the respondent’s application for watches and clocks were identical to the applicant’s Class 14 goods, and that jewellery items such as necklaces, rings, bracelets, earrings, medals and brooches were similar to the applicant’s Class 14 goods. Despite these findings on goods, the PAR concluded that there was no likelihood of confusion. The High Court’s task, therefore, was to determine whether the PAR’s global appreciation—balancing the different dimensions of similarity—was materially wrong, particularly given the evaluative nature of the assessment.
On bad faith under s 7(6) TMA, the PAR had required evidence showing that the respondent’s actions fell short of acceptable commercial behaviour observed by reasonable and experienced men in the relevant area of trade. The PAR found that the applicant’s evidence did not meet that threshold. On appeal, the applicant sought to infer bad faith from (i) the alleged awareness of the applicant’s reputation, (ii) the respondent’s failure to counter the allegation by counterstatement, and (iii) the respondent’s allegedly unsatisfactory explanation for the derivation of “J.ESTINA”. The respondent maintained that the applicant had not provided distinct proof of unacceptable commercial behaviour and that the lack of similarity between the marks undermined the copying narrative.
Although the remainder of the judgment is truncated in the provided extract, the High Court’s approach would necessarily involve assessing whether the applicant’s evidence supported a finding of bad faith on the balance of probabilities, and whether the PAR’s conclusion reflected a proper application of the legal test. The court also had to consider the evidential weight of inferences drawn from non-response and from brand-name derivation explanations, bearing in mind that bad faith is a serious allegation requiring more than speculation.
What Was the Outcome?
The provided extract does not include the final orders of the High Court. However, the decision-making framework is clear: the court would either dismiss the appeal if it found that the PAR’s conclusions on (i) likelihood of confusion under s 8(2)(b) and (ii) bad faith under s 7(6) were not materially wrong, or allow the appeal if it found a significant departure from proper assessment.
Practically, the outcome would determine whether Romanson’s “J.ESTINA and device” mark could proceed to registration in Class 14, and whether Festina’s opposition succeeded on relative and/or absolute grounds. For trade mark applicants and opposers, the result would also clarify how strictly Singapore courts will treat arguments about “fashion accessories” categorisation and how robust the evidence must be to establish bad faith.
Why Does This Case Matter?
Festina Lotus SA v Romanson Co Ltd is significant for trade mark practitioners because it illustrates the structured yet evaluative nature of the s 8(2)(b) inquiry in Singapore. The case highlights that even where goods are identical or similar, the likelihood of confusion depends on a global appreciation of the marks’ similarities and differences across visual, aural and conceptual dimensions. The PAR’s findings (visual dissimilarity and conceptual dissimilarity, notwithstanding aural similarity) underscore that not every similarity dimension will carry equal weight in the overall assessment.
Second, the case is useful for understanding how courts may treat attempts to broaden the set of earlier marks considered under s 8(2)(b). The applicant’s “fashion accessories” categorisation strategy shows how litigants may seek to reframe the goods comparison to expand the earlier rights relied upon. The respondent’s rebuttal, focusing on the lack of overlap in specifications, reflects the countervailing approach: the statutory comparison is anchored in the goods/services for which the earlier mark is protected and the goods/services covered by the application.
Third, the case addresses the evidential burden for bad faith under s 7(6) TMA. Allegations of copying or awareness of reputation are often made in trade mark disputes, but Festina’s failure at first instance (as reflected in the excerpt) demonstrates that courts will look for evidence of unacceptable commercial behaviour rather than relying solely on inference. For opposers, this means that strategic pleading must be supported by concrete evidence; for applicants, it means that explanations for brand derivation and conduct may be relevant, but the overall evidential picture remains decisive.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) — s 7(6)
- Trade Marks Act (Cap 332, 2005 Rev Ed) — s 8(2)(b)
- 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] SGHC 200
- [2010] SGIPOS 2
- SC Prodal 94 SRL v Spirits International NV [2003] EWHC 2756 (Ch)
- Future Enterprises Pte Ltd v McDonald’s Corp [2007] 2 SLR(R) 845
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.