Case Details
- Citation: [2019] SGIPOS 3
- Court: Intellectual Property Office of Singapore
- Date: 2019-02-20
- Judges: Ms Sandy Widjaja, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Jen, Chi
- Defendant/Opponent: Guess?, Inc
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2009] SGCA 13, [2011] SGHC 176, [2014] SGIPOS 8, [2015] SGIPOS 11, [2015] SGHC 216, [2015] SGHC 39, [2015] SGIPOS 11, [2015] SGIPOS 2, [2018] SGIPOS 1, [2018] SGIPOS 16
- Judgment Length: 34 pages, 12,216 words
Summary
This case involves a trade mark opposition filed by Guess?, Inc ("the Opponent") against the registration of the trade mark "T1417856A" by Jen, Chi ("the Applicant"). The Opponent relied on Sections 8(2)(b), 8(4) and 8(7)(a) of the Trade Marks Act to oppose the registration of the Applicant's mark. After analyzing the similarity of the marks, the distinctiveness of the Opponent's earlier marks, and the likelihood of confusion, the Intellectual Property Office of Singapore ("IPOS") found that the opposition failed on all grounds.
What Were the Facts of This Case?
The Applicant, Jen, Chi, sought to register the trade mark "T1417856A" for various goods in Class 25, including clothing, shoes, and accessories. The Opponent, Guess?, Inc, is a well-known fashion brand that has been operating in Singapore since 1991 and owns several registered trade marks, including the "GUESS" word mark and a device mark.
The Opponent filed an opposition against the registration of the Applicant's mark, arguing that it was similar to the Opponent's earlier marks and would likely cause confusion among consumers. The Applicant did not file any written submissions or attend the hearing, but submitted evidence that the previous owner had used the mark in Taiwan since 2012 and that the goods were being sold online and in retail stores in Singapore.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the Applicant's mark was similar to the Opponent's earlier registered marks under Section 8(2)(b) of the Trade Marks Act, such that there was a likelihood of confusion among consumers.
- Whether the Opponent's earlier registered marks were well-known in Singapore under Section 8(4) of the Trade Marks Act, and if so, whether the Applicant's mark was an unauthorized use of a well-known mark.
- Whether the use of the Applicant's mark would amount to passing off under Section 8(7)(a) of the Trade Marks Act.
How Did the Court Analyse the Issues?
The Hearing Officer, Ms Sandy Widjaja, applied the three-step test established in the Staywell case to assess the similarity of the marks under Section 8(2)(b):
- Similarity of the marks (visual, aural, and conceptual).
- Similarity of the goods or services.
- Likelihood of confusion among the relevant segment of the public.
In her analysis, the Hearing Officer found that the Applicant's mark was more dissimilar than similar to the Opponent's earlier registered device mark and word mark, both visually and conceptually. She noted that the distinctive component of the Opponent's "GUESS" mark was the word itself, and the Applicant's mark did not contain this distinctive element.
Regarding the ground of opposition under Section 8(4), the Hearing Officer was prepared to hold that the Opponent's "GUESS" mark was well-known in Singapore. However, since the Opponent's unregistered mark was not found to be well-known, the ground of opposition under Section 8(4) failed.
Finally, on the ground of passing off under Section 8(7)(a), the Hearing Officer found that there was no misrepresentation, as the Applicant's mark was sufficiently dissimilar to the Opponent's marks.
What Was the Outcome?
The Hearing Officer dismissed the Opponent's opposition on all grounds. The Applicant's mark, "T1417856A", was allowed to proceed to registration.
Why Does This Case Matter?
This case provides valuable guidance on the assessment of trade mark similarity and the likelihood of confusion under Section 8(2)(b) of the Trade Marks Act. The Hearing Officer's detailed analysis of the visual, aural, and conceptual similarities between the marks, as well as the distinctiveness of the Opponent's earlier marks, offers a framework for future trade mark opposition cases.
Additionally, the case highlights the importance of well-known mark status under Section 8(4) and the high threshold required to establish an unregistered mark as well-known in Singapore. The Hearing Officer's finding that the Opponent's unregistered mark did not qualify as an "earlier mark" under Section 8(4) is a significant outcome for the Opponent.
Finally, the case demonstrates the difficulty in establishing a passing off claim under Section 8(7)(a) when the marks are found to be sufficiently dissimilar. This decision reinforces the principle that the likelihood of confusion is the key consideration in trade mark opposition proceedings.
Legislation Referenced
Cases Cited
- [2009] SGCA 13
- [2011] SGHC 176
- [2014] SGIPOS 8
- [2015] SGIPOS 11
- [2015] SGHC 216
- [2015] SGHC 39
- [2015] SGIPOS 11
- [2015] SGIPOS 2
- [2018] SGIPOS 1
- [2018] SGIPOS 16
Source Documents
This article analyses [2019] SGIPOS 3 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.