Case Details
- Citation: [2023] SGIPOS 1
- Court: Intellectual Property Office of Singapore
- Date: 2023-01-03
- Judges: IP Adjudicator Vince Gui
- Plaintiff/Applicant: Schweiger, Martin Rainer Gabriel
- 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 8, [2023] SGIPOS 1
- Judgment Length: 19 pages, 5,315 words
Summary
This case involves an application by Schweiger, Martin Rainer Gabriel to register the word mark "STRONG BY CHOICE" in Class 25 for "Shorts; T-shirts". The application was initially refused by an Assistant Registrar on the grounds that the mark is devoid of any distinctive character and merely serves as a promotional slogan. The applicant appealed the decision, arguing that the mark should be considered inherently distinctive when viewed as a whole. After a hearing, the IP Adjudicator agreed with the applicant and found that the mark has the necessary distinctiveness to be registered as a trade mark.
What Were the Facts of This Case?
The applicant, Schweiger, Martin Rainer Gabriel, sought to register the word mark "STRONG BY CHOICE" in Class 25 for "Shorts; T-shirts". The mark was represented graphically as follows:
(the "Mark")
The application was initially refused by an Assistant Registrar (the "Examiner") on the basis that the mark is devoid of any distinctive character. The Examiner found that the phrase "STRONG BY CHOICE" is merely a "commercial tagline or an advertising phrase which simply serves to suggest that the Applicant is committed to providing shorts and T-shirts which are able to withstand wear, i.e. durable and lasting". The Examiner considered it to be a "promotional slogan which conveys a laudatory connotation" and noted that the mark did not bear "any form of stylisation or device to render it adequate distinctive character".
The Examiner further reasoned that while slogans should not be subject to a stricter test than other types of marks, they are not readily accepted by the relevant public as an indication of trade source due to their inherent promotional and advertising quality. The Examiner found that consumers would have "no issue in understanding the rather straightforward message conveyed, i.e. the Applicant is committed to providing shorts and T-shirts which are able to withstand wear".
What Were the Key Legal Issues?
The key legal issue in this case was whether the mark "STRONG BY CHOICE" is inherently distinctive and therefore registrable as a trade mark under the Trade Marks Act 1998.
Specifically, the Examiner had found that the mark is "devoid of any distinctive character" under Section 7(1)(b) of the Act, and therefore not registrable. The applicant appealed this decision, arguing that the mark should be considered inherently distinctive when viewed as a whole.
How Did the Court Analyse the Issues?
The IP Adjudicator, Vince Gui, began by explaining the legal framework for assessing the distinctiveness of a trade mark. He noted that a trade mark must first be "capable of distinguishing goods or services in the course of trade" under Section 2(1) of the Act, which is a "threshold requirement".
However, the Examiner's objection was not that the mark failed to meet this threshold, but rather that it did not satisfy the "more onerous" requirement of distinctiveness under Section 7(1)(b) of the Act. The Adjudicator explained that marks that are "devoid of distinctive character" should not be registered, as they would not enable consumers to meaningfully distinguish the proprietor's goods or services from other sources.
In assessing inherent distinctiveness, the Adjudicator noted that this is a question of degree and judgment, with marks falling on a spectrum. At one end are fanciful or arbitrary marks that have no bearing on the characteristics of the goods, which are highly distinctive. At the other end are descriptive marks that merely describe the goods, which are not registrable.
The Adjudicator then turned to analyze the applicant's mark in this context. He agreed with the applicant that the Examiner had focused too narrowly on the word "STRONG" in isolation, rather than considering the mark as a whole. The Adjudicator found that the combination of "STRONG BY CHOICE" does not obviously or naturally describe the characteristics of shorts and t-shirts, and requires some interpretation by the consumer to arrive at the message the Examiner had identified.
What Was the Outcome?
Based on the above analysis, the IP Adjudicator concluded that the mark "STRONG BY CHOICE" has the necessary distinctiveness to be registered as a trade mark. He therefore allowed the application to proceed to registration.
Why Does This Case Matter?
This case provides useful guidance on the assessment of inherent distinctiveness for trade marks, particularly in the context of slogans or advertising phrases. It reinforces that the test is one of degree, and that marks should be considered as a whole rather than in isolation.
The decision highlights that even if a mark conveys a laudatory or promotional message, it may still possess the requisite distinctiveness to function as a badge of origin if the message is not immediately obvious or descriptive of the goods or services. This suggests a relatively low bar for inherent distinctiveness, which may benefit applicants seeking to register advertising-style marks.
The case also serves as a reminder that the perception of the average consumer is crucial in the distinctiveness analysis. Even if a mark appears to have a clear, straightforward meaning to the Examiner, if it requires some interpretation or mental effort from the consumer, it may still be found to be inherently distinctive.
Legislation Referenced
Cases Cited
- [2022] SGIPOS 8
- [2023] SGIPOS 1
- Han's (F&B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825
- Love & Co Pte Ltd v The Carat Club Pte Ltd [2009] 1 SLR(R) 561
- Société des Produits Nestlé SA v Petra Foods Ltd [2017] 1 SLR 35
- Courts (Singapore) Pte Ltd v Big Box Corp Pte Ltd [2018] 5 SLR 312
Source Documents
This article analyses [2023] SGIPOS 1 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.