Case Details
- Citation: [2022] SGIPOS 9
- Court: Intellectual Property Office of Singapore
- Date: 2022-05-20
- Judges: Principal Assistant Registrar Ong Sheng Li, Gabriel
- Plaintiff/Applicant: Floor Xpert Pte. Ltd.
- Defendant/Respondent: N/A (Ex Parte Hearing)
- Legal Areas: Trade marks and trade names – Ex Parte Hearing
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2022] SGIPOS 9
- Judgment Length: 22 pages, 6,108 words
Summary
This case involves an application by Floor Xpert Pte. Ltd. to register the trade mark "Floor Xpert" in Class 37 for various flooring-related services. The trade mark examiner initially objected to the application on the grounds that "Floor Xpert" was descriptive and lacked distinctive character. The applicant sought to overcome this objection by filing evidence to show that the mark had acquired distinctiveness through use prior to the application date. After reviewing the evidence, the Principal Assistant Registrar ultimately agreed that the mark had acquired distinctiveness and allowed the application to proceed to registration.
What Were the Facts of This Case?
Floor Xpert Pte. Ltd. ("the Applicant") filed an application to register the trade mark "Floor Xpert" in a series of marks in Class 37 for various flooring-related services, including floor polishing, installing wood flooring, floor maintenance, and tiling services.
The initial trade mark examiner ("the 1st Examiner") found "Floor Xpert" to be descriptive and non-distinctive in relation to the applied-for services, and raised objections under sections 7(1)(b) and 7(1)(c) of the Trade Marks Act 1998. The examiner's view was that "Floor Xpert" would be understood by consumers as meaning "Floor Expert", which merely conveys that the applicant possesses expertise in providing quality floor-related services, rather than functioning as a badge of trade origin.
In response, the Applicant filed a statutory declaration and written representations arguing that the mark had acquired distinctiveness through use prior to the application date. However, a subsequent examiner ("the 2nd Examiner") remained unconvinced, finding that the evidence showed use of the Applicant's corporate name "Floor Xpert Pte. Ltd." or a stylized version of "Floor Xpert", rather than the precise mark applied for.
What Were the Key Legal Issues?
The key legal issue in this case was whether the trade mark "Floor Xpert" had acquired distinctiveness through use prior to the application date, such that it could be registered under section 7(2) of the Trade Marks Act 1998 despite being inherently non-distinctive.
Section 7(2) provides a saving provision for trade marks that are initially devoid of distinctive character or descriptive, but have subsequently acquired distinctiveness as a result of use. For the Applicant to succeed, it needed to demonstrate that the "Floor Xpert" mark had in fact acquired a distinctive character as a result of the use made of it before the application date of 9 January 2018.
How Did the Court Analyse the Issues?
The Principal Assistant Registrar carefully reviewed the evidence submitted by the Applicant, including the statutory declaration of the Applicant's sole director, Lim Lena, and the accompanying materials.
The Registrar acknowledged the initial examiner's concerns that "Floor Xpert" was inherently non-distinctive, as it would be understood by consumers as meaning "Floor Expert" and merely conveying the Applicant's expertise in flooring-related services. However, the Registrar found that the Applicant's evidence was sufficient to show that the mark had acquired distinctiveness through use prior to the application date.
The Registrar noted that while the evidence showed use of the Applicant's corporate name "Floor Xpert Pte. Ltd." and a stylized version of "Floor Xpert", rather than the precise mark applied for, this was still sufficient to demonstrate that the "Floor Xpert" element had acquired distinctiveness. The Registrar was satisfied that the evidence, taken as a whole, established that the "Floor Xpert" mark had come to be recognized by the relevant public as designating the Applicant's flooring services.
In reaching this conclusion, the Registrar emphasized that the hearing was ex parte, meaning there were no counter-arguments or opposing evidence presented. The Registrar also noted that the decision was not binding on any future opposition or invalidation proceedings, where the issue could be considered afresh.
What Was the Outcome?
The Principal Assistant Registrar allowed the application for the "Floor Xpert" trade mark to be accepted for registration, finding that the Applicant had successfully demonstrated that the mark had acquired distinctiveness through use prior to the application date.
Although the Registrar could have simply notified the Applicant of the decision to accept the mark, the Registrar chose to issue these detailed Grounds of Decision to be made publicly available. This was to provide full transparency and reasoning for the decision, given that the hearing was ex parte and the decision could be subject to future challenges.
Why Does This Case Matter?
This case is significant as it provides guidance on the application of the acquired distinctiveness exception under section 7(2) of the Trade Marks Act 1998. It demonstrates that even inherently non-distinctive or descriptive marks can be registered as trade marks if the applicant can show that the mark has acquired a distinctive character through use prior to the application date.
The case also highlights the importance of the evidence submitted to support a claim of acquired distinctiveness. While the Applicant's evidence in this case was ultimately found to be sufficient, the Registrar noted that the use of the Applicant's corporate name and a stylized version of the mark, rather than the precise mark applied for, was a potential concern.
The decision serves as a reminder that trade mark applicants seeking to rely on acquired distinctiveness must carefully consider the nature and extent of the evidence required to demonstrate that the mark has come to be recognized by the relevant public as a badge of origin for the applicant's goods or services.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2022] SGIPOS 9 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.