Case Details
- Citation: [2021] SGIPOS 6
- Court: Intellectual Property Office of Singapore
- Date: 2021-06-03
- Judges: Ong Sheng Li, Gabriel, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Hardwood Private Limited
- Defendant/Opponent: GCIH Trademarks Limited
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act (Cap. 332)
- Cases Cited: [2016] SGIPOS 6, [2017] SGIPOS 12, [2017] SGIPOS 3, [2018] SGHC 238, [2018] SGIPOS 16, [2018] SGIPOS 2, [2019] SGIPOS 1, [2019] SGIPOS 10, [2020] SGIPOS 11, [2020] SGIPOS 6
- Judgment Length: 26 pages, 13,120 words
Summary
This case involves a trade mark opposition by GCIH Trademarks Limited, the owner of the "TANGO" trade mark, against Hardwood Private Limited's application to register the mark "OT TANGO" for various food and beverage products in Class 30. The Intellectual Property Office of Singapore (IPOS) ultimately allowed the opposition, finding that the competing marks were similar and the respective goods were identical, resulting in a likelihood of confusion for consumers.
What Were the Facts of This Case?
On 31 May 2018, Hardwood Private Limited (the Applicant) applied to register the trade mark "OT TANGO" in Class 30 for a range of food and beverage products, including wafers, waffles, cookies, biscuits, coffee, tea, chocolate, candies, and more. This application was opposed by GCIH Trademarks Limited (the Opponent), the owner of the registered "TANGO" trade mark (the TANGO Mark) and the "TANGO" composite mark (the TANGO Composite Mark), both covering similar chocolate and cocoa products in Class 30.
The Opponent is a subsidiary of the Malaysian conglomerate Malayan United Industries Bhd (MUI), which operates a chocolate factory in Malaysia that produces TANGO branded chocolate and confectionery products. The Opponent claimed that the TANGO brand has been used worldwide, including in Singapore, since at least 1991 or 1992.
The Applicant is part of the Indonesian Orang Tua Group, which produces a range of consumer goods including food and beverages. The Applicant claimed that the "OT TANGO" brand was first launched in Indonesia in 1994 and in Singapore in 2000.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the competing marks, "TANGO" and "OT TANGO", are similar under Section 8(2)(b) of the Trade Marks Act.
- Whether the respective goods covered by the competing marks are identical or similar.
- Whether there exists a likelihood of confusion on the part of the public due to the similarity of the marks and identity/similarity of the goods.
How Did the Court Analyse the Issues?
The Hearing Officer applied the three-step test set out in the Staywell v Starwood Hotels case:
1. Similarity of marks: The Hearing Officer focused the analysis on the comparison between the "TANGO" mark and the "OT TANGO" mark, as the Opponent's reliance on the TANGO Composite Mark was primarily based on the distinctive "Tango" word element. The Hearing Officer found that the TANGO mark is more similar to the OT TANGO mark than the TANGO Composite Mark, as the TANGO mark contains no additional elements beyond the word "TANGO".
2. Similarity of goods: The Hearing Officer found that a number of the goods covered by the TANGO marks, such as chocolate, cocoa products, and chocolate beverages, are identical to the goods covered by the OT TANGO application. The Applicant did not dispute the similarity of the goods.
3. Likelihood of confusion: Given the similarity of the marks and the identity/similarity of the goods, the Hearing Officer concluded that there exists a likelihood of confusion on the part of the public. Consumers are likely to believe that the OT TANGO products originate from, or are economically linked to, the Opponent's TANGO brand.
What Was the Outcome?
The Hearing Officer allowed the opposition and refused the registration of the OT TANGO trade mark application. The Applicant's application was found to be contrary to Section 8(2)(b) of the Trade Marks Act, as the similarity of the marks and identity/similarity of the goods would likely result in consumer confusion.
Why Does This Case Matter?
This case provides useful guidance on the application of the three-step test for assessing likelihood of confusion under Section 8(2)(b) of the Singapore Trade Marks Act. It demonstrates the importance of conducting a thorough mark-for-mark comparison, even when an opponent relies on multiple earlier marks, and highlights the significance of the distinctiveness of the common element in the competing marks.
The case also underscores the principle that the similarity of goods is a crucial factor in the likelihood of confusion analysis. Even if the marks are not identical, a finding of identical or highly similar goods can tip the scales in favor of a likelihood of confusion.
For trade mark practitioners, this decision serves as a reminder to carefully consider the strength and distinctiveness of their client's marks, as well as the scope of goods covered, when assessing the risk of opposition or infringement. The case illustrates the need to thoroughly evaluate the potential for consumer confusion, even when the competing marks are not exactly the same.
Legislation Referenced
Cases Cited
- [2016] SGIPOS 6
- [2017] SGIPOS 12
- [2017] SGIPOS 3
- [2018] SGHC 238
- [2018] SGIPOS 16
- [2018] SGIPOS 2
- [2019] SGIPOS 1
- [2019] SGIPOS 10
- [2020] SGIPOS 11
- [2020] SGIPOS 6
- Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911
Source Documents
This article analyses [2021] SGIPOS 6 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.