Case Details
- Citation: [2022] SGIPOS 14
- Court: Intellectual Property Office of Singapore
- Date: 2022-10-03
- Judges: Principal Assistant Registrar Ong Sheng Li, Gabriel
- 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 1998
- Cases Cited: [2017] SGIPOS 17, [2021] SGIPOS 15, [2021] SGIPOS 6, [2022] SGIPOS 14, [2022] SGIPOS 4
- Judgment Length: 32 pages, 8,454 words
Summary
This case involves a trade mark opposition by GCIH Trademarks Limited (the "Opponent") against the registration of the mark " " by Hardwood Private Limited (the "Applicant"). The Opponent relied on four grounds of opposition under the Trade Marks Act 1998, including that the Application Mark is similar to its earlier "TANGO" trade mark and would likely cause confusion among consumers. The Intellectual Property Office of Singapore (IPOS) had to determine whether the competing marks are similar, whether the goods are identical or similar, and whether there is a likelihood of confusion.
What Were the Facts of This Case?
This is the second trade mark opposition between the same parties. In the earlier case, GCIH Trademarks Limited v Hardwood Private Limited [2021] SGIPOS 6 ("Tango 1"), the Opponent successfully opposed the Applicant's application to register the mark "OT TANGO" on the basis of the Opponent's earlier "TANGO" trade mark.
In the present case, the Applicant has applied to register the mark " " in Class 30 for goods including wafers, candy, and chocolate-based beverages. The Opponent has again opposed the registration, relying on its earlier "TANGO" trade mark registered in Class 30 for chocolate and cocoa products.
The Opponent has used the "TANGO" mark in Singapore for decades, with evidence of sales dating back to the 1990s. In contrast, the Applicant is a relative newcomer to the Singapore market, with limited evidence of use of its "OT TANGO" mark prior to 2019 when it appointed a local distributor.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the Application Mark is similar to the Opponent's earlier "TANGO" trade mark under section 8(2)(b) of the Trade Marks Act 1998;
- Whether the Application Mark is an unauthorized use of the Opponent's well-known "TANGO" mark under section 8(4)(b)(i) of the Act;
- Whether the Application Mark is likely to deceive or cause confusion under section 8(7)(a) of the Act; and
- Whether the Application Mark was applied for in bad faith under section 7(6) of the Act.
How Did the Court Analyse the Issues?
On the first ground under section 8(2)(b), the tribunal applied the three-step test from the Staywell decision: (1) are the competing marks similar? (2) are the goods identical or similar? and (3) is there a likelihood of confusion?
In assessing similarity of the marks, the tribunal considered the visual, aural, and conceptual aspects. It found that the TANGO mark is inherently distinctive to an ordinary degree, as the word is meaningless in relation to chocolate and cocoa products. The tribunal also considered whether the Opponent's evidence of extensive use and reputation of the TANGO mark should be taken into account at the marks-similarity stage, but ultimately concluded that this was not appropriate.
Comparing the marks, the tribunal found a high degree of visual and aural similarity, as well as conceptual similarity to a reasonable degree. Given the identity of the goods, the tribunal concluded that there was a likelihood of confusion between the marks.
On the other grounds of opposition, the tribunal found that the Opponent had not established that the Application Mark was an unauthorized use of a well-known mark under section 8(4)(b)(i), nor that it was likely to deceive or cause confusion under section 8(7)(a). However, the tribunal did find that the Application Mark was applied for in bad faith under section 7(6), based on the Applicant's knowledge of the Opponent's earlier rights in the TANGO mark.
What Was the Outcome?
The opposition was successful. The tribunal found that the Application Mark was similar to the Opponent's earlier TANGO mark, the goods were identical, and there was a likelihood of confusion. As a result, the application to register the " " mark was refused.
Why Does This Case Matter?
This case is significant for a few reasons:
- Consistency in Trade Mark Decisions: This is the second time the Opponent has successfully opposed the Applicant's attempt to register a mark containing "TANGO". The tribunal's consistent findings on the similarity of the marks and likelihood of confusion demonstrate the importance of respecting earlier trade mark rights, even where the later mark contains additional elements like "OT".
- Evidential Burden in Trade Mark Opposition: The case highlights the high evidential burden on an opponent seeking to rely on its reputation and extensive use of a mark to establish similarity at the first stage of the Staywell test. The tribunal was not persuaded that such evidence should be considered at the marks-similarity stage.
- Bad Faith Registration: The tribunal's finding that the Application Mark was applied for in bad faith is noteworthy. This ground of opposition can be difficult to establish, but the tribunal was satisfied that the Applicant's knowledge of the Opponent's earlier rights meant the application was made in bad faith.
Overall, this decision reinforces the importance of respecting earlier trade mark rights, even where the later mark contains additional elements. It also demonstrates the high bar for opponents seeking to rely on reputation and use to establish marks similarity. Trade mark owners should carefully consider these principles when seeking to protect their brands.
Legislation Referenced
Cases Cited
- [2017] SGIPOS 17
- [2021] SGIPOS 15
- [2021] SGIPOS 6
- [2022] SGIPOS 14
- [2022] SGIPOS 4
- Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911
Source Documents
This article analyses [2022] SGIPOS 14 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.