Festina Lotus SA v Romanson Co Ltd

Case Details

• Citation: [2010] SGHC 200
• Case Number: Originating Summons No 240/2010/H
• Decision Date: 16 July 2010
• Court: High Court of Singapore
• Coram: Tay Yong Kwang J
• Judgment Delivered By: Tay Yong Kwang J
• Appellant(s): Festina Lotus SA
• Respondent(s): Romanson Co Ltd
• Counsel for Appellant: G. Radakrishnan (Infinitus Law Corporation)
• Counsel for Respondent: Jonathan Yuen and Joana Teo (Harry Elias Partnership LLP)
• Legal Areas: Trade Marks; Grounds for Refusal of Registration
• Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed); Rules of Court (Cap 322, R 5, 2006 Rev Ed)
• Key Provisions: s 7(6) TMA; s 8(2)(b) TMA; s 75(2)(a) TMA; O 87 r 4 ROC
• Disposition: Appeal allowed; Principal Assistant Registrar's decision set aside; Respondent's trade mark application refused; costs to Appellant.
• Reported Related Decisions: Festina Lotus SA v Romanson Co Ltd [2010] SGIPOS 2

Summary

Festina Lotus SA v Romanson Co Ltd concerned an appeal against the Principal Assistant Registrar of Trade Marks' (PAR) decision to dismiss an opposition to a trade mark application. The Appellant, Festina Lotus SA ("Festina"), opposed the Respondent, Romanson Co Ltd's ("Romanson"), application to register the mark "J.ESTINA and device" for Class 14 goods (watches and jewellery). Festina's opposition was based on two grounds: first, that Romanson's mark was similar to Festina's earlier registered marks and likely to cause confusion under s 8(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) ("TMA"); and second, that Romanson's application was made in bad faith under s 7(6) TMA.

The PAR had dismissed both grounds of opposition, finding no likelihood of confusion and no bad faith. On appeal, the High Court (Tay Yong Kwang J) reviewed the PAR's findings. The Court clarified the appellate standard of review for PAR decisions, noting that such appeals are by way of "rehearing" but require a "material error of principle" or "significant departure from a proper assessment of law or facts" to overturn the initial decision. Applying this standard, the High Court disagreed with the PAR's assessment on both substantive grounds.

The High Court found that, despite some visual dissimilarities, the marks "FESTINA" and "J.ESTINA" possessed sufficient aural and conceptual similarities, which, when combined with the identical or similar goods, created a likelihood of confusion on the part of the public under s 8(2)(b) TMA. Crucially, the Court also found that Romanson's application was made in bad faith under s 7(6) TMA. The Court deemed Romanson's explanation for the derivation of "J.ESTINA" to be "extremely contrived" and concluded that the word "ESTINA" was "blatantly copied" from Festina's mark. This "cut and paste" job, in the Court's view, fell short of acceptable commercial behaviour. Consequently, the High Court allowed Festina's appeal, setting aside the PAR's decision and refusing Romanson's trade mark application.

Timeline of Events

1. 1902: Festina Lotus SA, the Appellant, was founded in Switzerland.
2. April 1998: Romanson Co Ltd, the Respondent, was established in South Korea as a watch manufacturer.
3. 2002: Romanson ventured into the jewellery market.
4. 1 October 2002: A "Report on Result of Naming Research for New Business" was prepared, leading to the selection of "J.ESTINA" as a brand name.
5. 16 December 2005: Romanson filed trade mark application number T05/25465Z for "J.ESTINA and device" in Class 14 in Singapore.
6. 22 September 2006: Festina filed a notice of opposition to Romanson's trade mark application.
7. 8 February 2009: The Principal Assistant Registrar of Trade Marks (PAR) dismissed Festina's opposition in Festina Lotus SA v Romanson Co Ltd [2010] SGIPOS 2.
8. 16 July 2010: The High Court delivered its judgment, allowing Festina's appeal against the PAR's decision.

What Were the Facts of This Case?

The Appellant, Festina Lotus SA ("Festina"), is a Swiss company founded in 1902, known as a leader in the mid-range watch sector in Europe with distribution in over 50 countries. Festina is the proprietor of several trade marks in Singapore, including variations of "FESTINA and device" across various Nice Classes (3, 9, 14, 16, 18, and 25). The primary mark relevant to the dispute was Festina's Class 14 registration, trade mark number T9004265I ("Appellant's mark 1"), which is a composite mark featuring a crest with a crown device, two prancing horses, and a curved banner bearing the word "FESTINA". Festina also held other registered marks in Classes 9, 18, and 25 that used the same crest device but with the word "FESTINA" in a larger, bold font as a plain word mark below the device. While Festina demonstrated significant international brand presence and turnover, it acknowledged having no specific sales figures for its marks in Singapore.

The Respondent, Romanson Co Ltd ("Romanson"), is a South Korean manufacturer of watches, established in April 1998, which expanded into the jewellery market in 2002. On 16 December 2005, Romanson filed trade mark application number T05/25465Z for the mark "J.ESTINA and device" ("Respondent's mark") in Class 14. The specification of goods included "wrist watches, electric watches, desk clocks, alarm clocks, necklaces, rings, bracelets, earrings, medals and brooches". Romanson also provided evidence of approximate sales value for its "J.ESTINA" products in countries like China and Vietnam, but similarly, had no specific sales figures for Singapore.

Festina opposed Romanson's application on two main grounds. First, under s 8(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) ("TMA"), Festina argued that Romanson's mark was similar to its earlier marks and was to be registered for identical or similar goods, leading to a likelihood of confusion on the part of the public. Second, under s 7(6) TMA, Festina contended that Romanson's application was made in bad faith, suggesting that Romanson had copied Festina's mark given its international reputation and Romanson's allegedly unsatisfactory explanation for its mark's derivation.

The Principal Assistant Registrar of Trade Marks ("PAR") dismissed Festina's opposition on both grounds. The PAR found that while some goods were identical or similar, there was no likelihood of confusion due to visual and conceptual dissimilarities between the marks. The PAR also concluded that the evidence did not establish bad faith. Festina subsequently appealed the PAR's decision to the High Court.

What Were the Key Legal Issues?

The High Court was tasked with reviewing the Principal Assistant Registrar's (PAR) decision on Festina's opposition to Romanson's trade mark application. This involved addressing the following key legal issues:

• Scope of "Earlier Trade Mark" under s 8(2)(b) TMA: The primary question was whether the PAR had correctly confined the "earlier trade mark" for the s 8(2)(b) analysis to Festina's Class 14 mark (Appellant's mark 1). Festina contended that its other registered marks in Classes 9, 18, and 25 should also be considered, arguing that the goods across these classes could be broadly categorised as "fashion accessories," thereby expanding the scope of relevant earlier marks.
• Likelihood of Confusion under s 8(2)(b) TMA: The Court had to determine if the PAR erred in its assessment of the similarity between Festina's mark and Romanson's mark, and consequently, the likelihood of confusion. This involved a global appreciation of the visual, aural, and conceptual similarities of the marks, as well as the similarity or identity of the goods, to ascertain if the overall impression would lead to public confusion.
• Bad Faith under s 7(6) TMA: The Court considered whether Romanson's application was made in bad faith. Festina argued that Romanson's likely awareness of Festina's reputation, coupled with an allegedly unsatisfactory explanation for the derivation of "J.ESTINA," indicated copying and thus bad faith. The issue required an assessment of whether Romanson's conduct fell short of acceptable commercial standards.

How Did the Court Analyse the Issues?

Before delving into the substantive trade mark issues, the High Court addressed the standard of review for appeals from the Principal Assistant Registrar of Trade Marks (PAR). The Court noted that an appeal under s 75(2)(a) TMA and Order 87 rule 4 of the Rules of Court is by way of "rehearing." Citing SC Prodal 94 SRL v Spirits International NV [2003] EWHC 2756 (Ch), endorsed in Future Enterprises Pte Ltd McDonald’s Corp [2007] 2 SLR(R) 845, the Court affirmed that it would not overturn the PAR's decision merely because it might have reached a different conclusion. Instead, it had to be demonstrated that the PAR's decision was "wrong in a material way," involving a "significant departure from a proper assessment of the law or the facts" (at [21]).

The Court then proceeded to analyse the s 8(2)(b) TMA ground, which requires three cumulative conditions to be met: (1) similarity of marks, (2) identity or similarity of goods/services, and (3) likelihood of confusion (at [23], citing Ozone Community Corp v Advance Magazine Publishers Inc [2010] SGHC 16). The Court first considered the scope of the "earlier trade mark." Festina had argued for a broad categorisation of goods as "fashion accessories" to include its marks in Classes 9, 18, and 25. However, the Court upheld the PAR's finding that the relevant "earlier trade mark" for the s 8(2)(b) analysis was confined to Festina's Class 14 mark (Appellant's mark 1), as there was no overlap between the specification of goods for Festina's other marks and Romanson's Class 14 goods (at [10(a)], [16]).

On the similarity of marks, the Court conducted a structured comparison across visual, aural, and conceptual dimensions. For visual similarity, the Court agreed with the PAR that the marks were visually dissimilar. It noted that in Romanson's mark, the word "J.ESTINA" was dominant, while in Festina's mark, the crest device was the dominant component, with "FESTINA" subsumed within a banner (at [28], [30]). The Court rejected Festina's argument that "FESTINA" had an independent distinctive role (citing Medion AG v Thomson Multimedia Sales Germany & Austria GmbH [2005] ECR I-8551), as this principle applies where the non-dominant element is "widely-known," which was not established for "FESTINA" in Singapore (at [33]-[34]).

Regarding conceptual similarity, the PAR had found dissimilarity by distinguishing the "high-class" look of a crest from the "royal patronage" connotation of a crown (at [35]). The High Court disagreed with this strict distinction. While acknowledging that a crown evokes royalty, it noted that both crests and crowns, in modern usage, primarily evoke a sense of "class" and "status" (at [43]). The Court found that insofar as both marks comprised an invented word ("FESTINA" and "J.ESTINA") and a pictorial element hinting at "class" and "status," there were "some conceptual similarities" (at [45]). For aural similarity, the Court agreed with the PAR that the marks were aurally similar, as the pronunciation would largely focus on "-ESTINA," with the initial consonants "F" and "J" receiving less emphasis (at [46], [49]). The Court rejected Romanson's attempt to differentiate based on syllable count as a fragmented analysis (at [48], citing Mystery Drinks Gmbh v OHIM [2004] ETMR (18) 217).

Having found visual dissimilarity but aural and conceptual similarity, the Court proceeded to the "likelihood of confusion" (Condition 3). The PAR had found no likelihood of confusion (at [10(g)]). However, the High Court, applying the "global appreciation" test, concluded that the PAR had erred. Considering the overall impression, the Court found that the aural and conceptual similarities, coupled with the identical or similar goods (watches, clocks, and jewellery), were sufficient to create a likelihood of confusion on the part of the public (at [54]). The Court therefore allowed Festina's appeal on the s 8(2)(b) ground.

Finally, the Court addressed bad faith under s 7(6) TMA. The PAR had found no bad faith (at [11]). The High Court disagreed, emphasising that bad faith is an "absolute ground for refusal" and an "independent and distinct ground" (at [113], citing Tan Tee Jim SC). The Court noted that bad faith encompasses "underhand practice involving absence of good faith" and often requires showing a "nexus" between the parties or marks, such as outright copying (at [113], [115]). The Court found Romanson's brand story for "J.ESTINA" to be "extremely contrived." Romanson's explanation for the "J." (from Princess Jovanna) did not account for the "ESTINA" component, which was identical in sequence to six out of seven letters in Festina's mark (at [122]). The Court concluded that the "irresistible conclusion" was that "ESTINA" was "blatantly copied" from Festina by a "cut and paste" job (at [123]). Such outright copying, the Court held, fell short of acceptable commercial behaviour and thus constituted bad faith (at [123]-[124]).

What Was the Outcome?

The High Court allowed Festina Lotus SA's appeal, overturning the decision of the Principal Assistant Registrar of Trade Marks. Consequently, Romanson Co Ltd's application to register the trade mark "J.ESTINA and device" (application number T05/25465Z) was refused on the basis of Festina's opposition under both s 7(6) and s 8(2)(b) of the Trade Marks Act.

The Respondent, Romanson Co Ltd, was ordered to pay the Appellant, Festina Lotus SA, the costs of the appeal, to be taxed or agreed. The operative paragraph of the judgment stated:

For the foregoing reasons, the Appellant’s appeal is allowed on the basis of its opposition based on s 7(6) and s 8(2)(b) TMA. (at [125])

Why Does This Case Matter?

Festina Lotus SA v Romanson Co Ltd is a significant authority for practitioners in Singaporean trade mark law, particularly for its robust treatment of both relative grounds for refusal (likelihood of confusion) and absolute grounds (bad faith). The case clarifies the High Court's appellate standard of review for decisions of the Principal Assistant Registrar of Trade Marks (PAR), establishing that an appeal, while a "rehearing," requires demonstrating a "material error of principle" or a "significant departure from a proper assessment of law or facts" to succeed. This sets a high bar for overturning PAR decisions, guiding litigants on the necessary evidential and argumentative burden.

Doctrinally, the decision refines the application of the "global appreciation" test for likelihood of confusion under s 8(2)(b) TMA. It demonstrates that a holistic assessment of visual, aural, and conceptual similarities is paramount. Even where marks exhibit some visual dissimilarities, strong aural and conceptual similarities, especially when coupled with identical or highly similar goods, can lead to a finding of confusion. The case also reinforces that the "earlier trade mark" analysis is strictly tied to the goods or services for which it is protected, cautioning against overly broad categorisations like "fashion accessories" to expand the scope of relevant earlier marks.

Most notably, this case provides a powerful precedent for establishing "bad faith" under s 7(6) TMA. The Court's finding that a "contrived" or "unsatisfactory" explanation for a mark's derivation, particularly when it bears a striking resemblance to an earlier mark, can lead to an "irresistible conclusion" of "blatant copying," which constitutes bad faith. This is crucial for opponents who may lack direct evidence of dishonest intent but can demonstrate a lack of credible independent origin for the impugned mark. For both transactional and litigation work, this case underscores the importance of thorough due diligence in brand creation and the necessity of a clear, independently verifiable origin story for new trade marks to withstand scrutiny.

Practice Pointers

• Appellate Strategy for PAR Decisions: When appealing a decision from the Principal Assistant Registrar of Trade Marks (PAR), practitioners must demonstrate a "material error of principle" or a "significant departure from a proper assessment of law or facts" by the PAR. Merely arguing that the appellate court might have decided differently is insufficient to overturn the original decision.
• Specificity in "Earlier Trade Mark" Arguments: When relying on s 8(2)(b) TMA, ensure that arguments regarding "earlier trade marks" are precisely linked to the specific goods or services for which they are protected. Broad categorisations of goods (e.g., "fashion accessories") across different Nice Classes may be rejected if there is no direct overlap in the specifications of goods.
• Holistic Assessment of Likelihood of Confusion: The "global appreciation" test for likelihood of confusion requires a comprehensive assessment of visual, aural, and conceptual similarities. Even if one aspect (e.g., visual) shows dissimilarity, strong similarities in other aspects (e.g., aural and conceptual), particularly when combined with identical or highly similar goods, can still lead to a finding of confusion.
• Evidential Burden for Bad Faith (s 7(6) TMA): Bad faith is an independent and absolute ground for refusal. While direct evidence of dishonesty can be challenging, practitioners should focus on establishing a "nexus" between the parties or marks. A "contrived" or "unsatisfactory" explanation for a mark's derivation, especially when it closely resembles an earlier mark, can be a strong basis for inferring "blatant copying" and thus bad faith.
• Documenting Brand Derivation: For clients developing new brands, advise them to meticulously document the independent origin and development process of their trade marks. A clear, credible, and verifiable derivation story is crucial to defend against potential bad faith allegations, particularly if the mark bears any resemblance to existing marks.
• Scrutiny of "Invented Words": Where a significant portion of an applicant's mark is an "invented word" that closely mirrors an existing mark, the court will demand a credible explanation for its derivation. A failure to provide such an explanation can lead to an "irresistible conclusion" of copying and a finding of bad faith.

Subsequent Treatment

As a High Court decision from 2010, Festina Lotus SA v Romanson Co Ltd has served as a significant authority in Singaporean trade mark jurisprudence, particularly for its detailed analysis of the likelihood of confusion under s 8(2)(b) of the Trade Marks Act (TMA) and, more notably, for its robust interpretation and application of the "bad faith" ground under s 7(6) TMA. The case is frequently cited for its articulation of the "blatant copying" inference where an applicant provides a contrived or unsatisfactory explanation for a mark's derivation that closely resembles an earlier mark.

Subsequent Singapore decisions have applied and affirmed the principles laid down in Festina Lotus SA, especially concerning the evidentiary requirements for bad faith and the holistic approach to assessing trade mark similarity. It remains a key reference for practitioners navigating trade mark opposition proceedings, particularly when allegations of copying or improper motives are central to the dispute. The case's emphasis on the independent nature of the bad faith ground and the circumstances under which it can be inferred from circumstantial evidence continues to shape arguments in this area of law.

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 27(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 rule 4

Cases Cited

• SC Prodal 94 SRL v Spirits International NV [2003] EWHC 2756 (Ch): Cited for the standard of review in appeals from the Trade Mark Registry.
• Future Enterprises Pte Ltd McDonald’s Corp [2007] 2 SLR(R) 845: Endorsed the standard of review from SC Prodal 94 SRL for appeals from the Trade Marks PAR.
• Ozone Community Corp v Advance Magazine Publishers Inc [2010] SGHC 16: Cited for the three cumulative conditions under s 8(2)(b) TMA and for conceptual similarity analysis.
• The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] 2 SLR(R) 690: Cited for the cumulative nature of s 27(2)(b) TMA conditions and that no rigid principle dictates the importance of the first syllable.
• Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp) [2007] 1 SLR(R) 1082: Cited for the proposition that similarity of marks is essentially a question of fact.
• Sabel BV v Puma AG, Rudolf Dassler Sport, Case C-251/95 [1997] ECR I- 6191: Cited for the principle that assessment of similarity must be based on the overall impression created by the marks.
• Lloyd Schuhfabrik Meyer v Klijsen Handel BV, Case C-342/97 [1999] 2 CMLR 1343: Cited for the principle that assessment of similarity must be based on the overall impression created by the marks.
• Medion AG v Thomson Multimedia Sales Germany & Austria GmbH, Case C- 120/04 [2005] ECR I-8551: Cited for the possibility that a non-dominant component of a composite mark might have an independent distinctive role if widely-known.
• Itochu Corporation v Worldwide Brands, Inc [2007] SGIPOS 9: Cited as an illustration of conceptual dissimilarity between marks.
• Imperial Tobacco Co (of Great Britain and Ireland) Ltd’s Trade Marks [1915] 2 Ch 27: Cited for the modern interpretation of crests and crowns as design elements rather than signifying royal patronage.
• Mystery Drinks Gmbh v OHIM, T 99/01 [2004] ETMR (18) 217: Cited to reject fragmented analysis of aural similarity.
• Nautical Concept Pte Ltd v Jeffery West Ltd [2009] 4 SLR(R) 1088: Cited as an example of bad faith where an applicant's explanation for a mark's derivation was found to be too far-fetched.
• Lancome Parfums et Beaute & Cie’s Community Trade Mark Application [2001] ETMR 89: Cited for the definition of bad faith as "underhand practice involving absence of good faith."
• Rothmans of Pall Mall Ltd v Maycolson International Pte Ltd [2006] 2 SLR(R) 551: Cited for inferring bad faith from suspicious circumstances and improper motives, even if marks are not confusingly similar.
• Festina Lotus SA v Romanson Co Ltd [2010] SGIPOS 2: The Principal Assistant Registrar's decision that was the subject of this appeal.

Source Documents

• Archived Copy (PDF) — Litt Law CDN
• Original Judgment (HTML) — eLitigation