Case Details
- Title: Festina Lotus SA v Romanson Co Ltd
- Citation: [2010] SGHC 200
- 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
- Decision Date: 16 July 2010 (judgment reserved)
- 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 Areas: 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; s 75(2)(a) TMA; O 87 r 4 ROC
- Judgment Length: 28 pages; 14,625 words
- Earlier Related Decision Mentioned: 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 jewellery and horological goods. The applicant, Festina Lotus SA (“Festina”), owned earlier registered marks incorporating the word “FESTINA” and a distinctive crest device. The respondent, Romanson Co Ltd (“Romanson”), applied to register a mark consisting of the word “J.ESTINA” with a crown device above it for Class 14 goods including watches and jewellery items. The Principal Assistant Registrar of Trade Marks (“PAR”) dismissed Festina’s opposition on two grounds: first, that the respondent’s mark was similar to an earlier mark and likely to cause confusion under s 8(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”); and second, that the application was made in bad faith under s 7(6) TMA.
On appeal, the High Court (Tay Yong Kwang J) addressed the appropriate appellate standard of review for decisions of the Trade Marks PAR made under the statutory appeal framework. The court then considered whether the PAR had erred in its assessment of (i) the relevant “earlier trade mark” for the purposes of s 8(2)(b) TMA, (ii) the similarity of the marks (visual, aural and conceptual), (iii) the similarity or identity of the goods, and (iv) whether there was a likelihood of confusion applying the “global appreciation” approach. The court also considered whether the evidence supported a finding of bad faith under s 7(6) TMA.
Ultimately, the appeal failed. The High Court upheld the PAR’s dismissal of the opposition, confirming that the evidence did not establish the requisite likelihood of confusion under s 8(2)(b) TMA and did not show that Romanson’s application fell short of acceptable commercial standards such that it amounted to bad faith under s 7(6) TMA.
What Were the Facts of This Case?
Festina is the proprietor of multiple trade marks in Singapore that are variations of “FESTINA and device”. These marks are registered across several Nice classes, including Classes 3, 9, 14, 16, 18 and 25. The case focused particularly on Festina’s Class 14 registration, trade mark number T9004265I (“Appellant’s mark 1”), which is a composite mark comprising 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”. Festina also had other registered marks in Classes 9, 18 and 25 that used the same crest device but with the word “FESTINA” in larger bold font as a plain word mark at the bottom of the device.
Romanson filed a trade mark application, number T05/25465Z, for the mark “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 by filing a notice of opposition on 22 September 2006. The PAR dismissed the opposition, and Festina appealed to the High Court.
In support of its opposition, Festina provided evidence intended to show the extent of its brand reputation and commercial presence. Through statutory declarations made by its managing director, Mr Javier Ribas, Festina stated that it was founded in Switzerland in 1902 and that “FESTINA” is a leader in the mid-range watch sector in Europe. It also claimed that the brand distributes and sells watches and time pieces in more than 50 countries worldwide, sponsors professional cycling events, and is an official time keeper of the Tour de France. Festina tendered evidence of annual turnover and selected invoices demonstrating sales in East Asia, including 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 through a statutory declaration by its general manager of the “J.ESTINA” division, Mr Myoung-chul Shin. Romanson stated 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 explained that it ventured into the jewellery market in 2002 and filed its Class 14 trade mark application on 16 December 2005. Since the mark had not been used in Singapore, Romanson tendered evidence of approximate sales value of jewellery, watches and horological articles under the “J.ESTINA” mark in countries such as China and Vietnam.
What Were the Key Legal Issues?
The first key legal issue was the scope of the “earlier trade mark” relevant to the s 8(2)(b) analysis. Under s 8(2)(b) TMA, registration must be refused if the respondent’s mark is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier mark is protected, and there exists a likelihood of confusion on the part of the public. Festina argued that the court should treat not only its Class 14 mark (Appellant’s mark 1) but also its other registered marks in Classes 9, 18 and 25 as “earlier trade marks” for the purposes of s 8(2)(b). Its strategy was to categorise the goods across those classes as “fashion accessories” and thereby argue that Romanson’s Class 14 goods were similar to Festina’s goods across multiple classes.
The second key issue concerned the likelihood of confusion under s 8(2)(b) TMA, which required a global appreciation of similarity between marks and similarity/identity of goods. The PAR had found that Appellant’s mark 1 and Romanson’s mark were visually dissimilar, aurally similar, and conceptually dissimilar, and that while some goods were identical and others similar, the overall assessment did not show a likelihood of confusion. Festina challenged these findings, asserting that the marks were sufficiently similar across visual, aural and conceptual dimensions.
The third key issue was whether Romanson’s application was made in bad faith under s 7(6) TMA. Bad faith in this context is not merely dishonesty in the abstract; it is assessed against the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the relevant area of trade. Festina argued that Romanson must have been aware of Festina’s reputation and that Romanson’s failure to respond to the bad faith allegation, together with an allegedly unsatisfactory explanation for the derivation of “J.ESTINA”, indicated copying and therefore bad faith. Romanson maintained that Festina had not provided distinct proof of unacceptable commercial behaviour.
How Did the Court Analyse the Issues?
Before addressing the substantive trade mark issues, the High Court considered the standard of review. The appeal was governed by s 75(2)(a) TMA and Order 87 rule 4 of the Rules of Court. The court noted that an appeal under this framework 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 were not in dispute that the standard of review aligned with the approach taken in appeals from the High Court to the Court of Appeal, meaning that the High Court would not overturn the PAR’s decision simply because it might have reached a different conclusion. Instead, it had to be shown that the PAR’s decision was wrong in a material way, involving a significant departure from a proper assessment of law or facts.
The court then turned to the s 8(2)(b) analysis. A central question was whether Festina’s other marks (in Classes 9, 18 and 25) could be treated as the relevant “earlier trade marks” for the goods in Romanson’s Class 14 application. The PAR had confined the analysis to Appellant’s mark 1. Festina’s argument relied on a broad categorisation of the goods across classes as “fashion accessories”. The court examined whether such categorisation could rationally expand the set of earlier marks considered under s 8(2)(b). The respondent resisted this approach, arguing that there was no overlap between the specification of goods for Festina’s marks in Classes 9, 18 and 25 and Romanson’s Class 14 goods.
In assessing this, the court implicitly reinforced that the s 8(2)(b) inquiry is anchored in the statutory structure: the “earlier trade mark” is tied to the goods or services for which it is protected, and the similarity assessment must be grounded in the actual specifications of goods rather than in broad thematic labels. While the global appreciation test is used to assess likelihood of confusion, the court did not accept that Festina’s “fashion accessories” framing was sufficient to treat all of its other class registrations as relevant earlier marks for Romanson’s Class 14 goods. Accordingly, the court accepted that the relevant earlier mark for the s 8(2)(b) analysis was Appellant’s mark 1.
On the similarity of marks, the PAR’s findings were not merely mechanical; they reflected a structured comparison across visual, aural and conceptual dimensions. The PAR found visual dissimilarity, aurally similarity, and conceptual dissimilarity. Festina argued that there were similarities across all three dimensions and that the overall impression would lead to confusion. The High Court, applying the global appreciation approach, considered whether the PAR’s evaluation of similarity and the overall impression was materially wrong. Given the composite nature of Festina’s crest device and the distinctive “J.” prefix in Romanson’s mark, the court accepted that the marks did not produce the same overall commercial impression. The presence of different dominant elements and the conceptual divergence between the marks weighed against a finding of likelihood of confusion.
As to goods, the PAR had found identity for the watch and clock items: Romanson’s “wrist watches, electric watches, desk clocks, alarm clocks” were identical to Festina’s registered “watches, clocks and other chronometric instruments” in Class 14. For jewellery items such as necklaces, rings, bracelets, earrings, medals and brooches, the PAR found similarity to Festina’s Class 14 goods. The High Court accepted that the goods overlap in the relevant sense, but it still had to determine whether, in light of the similarity of marks, the overall circumstances created a likelihood of confusion. The court agreed with the PAR that even with identical or similar goods, the lack of sufficient similarity in the marks—particularly the visual and conceptual differences—meant that confusion was not likely.
Finally, the court addressed bad faith under s 7(6) TMA. The PAR had held that the evidence did not show that Romanson’s actions fell short of acceptable commercial behaviour. The High Court considered Festina’s submission that Romanson likely copied Festina’s mark due to Festina’s reputation and Romanson’s failure to provide a satisfactory explanation for the derivation of “J.ESTINA”. However, the court emphasised that bad faith requires more than suspicion or inference; it requires evidence capable of showing unacceptable commercial conduct. Festina’s evidence, while showing Festina’s international brand presence, did not establish that Romanson’s filing in Singapore was made in a manner that fell below the relevant standard of commercial behaviour. The court therefore upheld the PAR’s conclusion that the bad faith ground was not made out.
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 being blocked by Festina’s earlier rights under s 8(2)(b) TMA or by Festina’s bad faith claim under s 7(6) TMA.
The decision confirms that, even where goods are identical or similar, the likelihood of confusion analysis remains sensitive to the overall impression created by the marks. It also underscores that bad faith allegations require evidence demonstrating unacceptable commercial behaviour rather than relying primarily on inference.
Why Does This Case Matter?
Festina Lotus SA v Romanson Co Ltd is a useful authority for practitioners because it illustrates how Singapore courts approach the s 8(2)(b) framework in a structured yet holistic manner. The case demonstrates that the “global appreciation” test does not eliminate the need for disciplined analysis of (i) the relevant earlier mark(s), (ii) the similarity of marks across visual, aural and conceptual dimensions, and (iii) the similarity/identity of goods. Even where goods overlap significantly, the court may still find no likelihood of confusion if the marks do not create a sufficiently similar overall commercial impression.
From a procedural standpoint, the case is also relevant for understanding the standard of review on appeal from the Trade Marks PAR. The court’s discussion of rehearing and the “material wrong” threshold provides guidance to litigants on the evidential and argumentative burden required to overturn a PAR decision. This is particularly important in trade mark matters where similarity and confusion assessments are inherently fact-sensitive and involve subjective judgments.
For bad faith claims under s 7(6) TMA, the case highlights the evidentiary discipline expected by the court. Brand reputation abroad and the possibility of awareness are not, by themselves, determinative of bad faith. Applicants opposing registration should therefore marshal concrete evidence of copying, improper motives, or conduct falling below acceptable commercial standards, rather than relying on gaps in the respondent’s explanation or on conjecture.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 7(6) [CDN] [SSO]
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 8(2)(b) [CDN] [SSO]
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 75(2)(a) [CDN] [SSO]
- Rules of Court (Cap 322, R 5, 2006 Rev Ed), Order 87 rule 4
Cases Cited
- [2007] SGIPOS 9
- [2009] SGIPOS 3
- [2010] SGHC 16
- [2010] SGHC 200
- [2010] SGIPOS 2
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.