Case Details
- Citation: [2019] SGIPOS 16
- Court: Intellectual Property Office of Singapore
- Date: 2019-11-01
- Judges: Ms Tan Mei Lin
- Plaintiff/Applicant: Minterest Private Limited
- Defendant/Opponent: Intuit Inc.
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2005] SGHC 175, [2018] SGHC 238, [2018] SGIPOS 5, [2019] SGIPOS 16
- Judgment Length: 12 pages, 4,765 words
Summary
This case involves a trade mark opposition filed by Intuit Inc. against the registration of the trade mark "MINTEREST" by Minterest Private Limited. Intuit Inc., a major financial software company, opposed the registration on the grounds that the "MINTEREST" mark is similar to its earlier registered "MINT" mark and there exists a likelihood of confusion. The Intellectual Property Office of Singapore (IPOS) had to determine whether the two marks are similar and whether there is a likelihood of confusion that would prevent the registration of the "MINTEREST" mark.
What Were the Facts of This Case?
Minterest Private Limited is a Singapore-based digital peer-to-business marketplace funding platform that was founded in 2016 as MRSMINT PRIVATE LIMITED and changed its name to Minterest in 2017. On 27 April 2017, Minterest applied to register the trade mark "MINTEREST" in Singapore for "Financial services" in Class 36.
Intuit Inc. is a major business and financial software company based in the United States. In 2009, Intuit acquired the financial services platform Mint.com, which provides services such as loan and credit card comparison, and account balance tracking. Intuit owns several registered trade marks for the "MINT" brand in Singapore, covering computer software and financial services.
Intuit filed an opposition against the registration of the "MINTEREST" mark, relying on Sections 8(2)(b) and 8(7)(a) of the Singapore Trade Marks Act. The key issue was whether the "MINTEREST" mark is similar to Intuit's earlier "MINT" mark, and whether there exists a likelihood of confusion that would prevent the registration of the "MINTEREST" mark.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the "MINTEREST" mark is similar to Intuit's earlier registered "MINT" mark under Section 8(2)(b) of the Trade Marks Act.
2. Whether there exists a likelihood of confusion on the part of the public between the "MINTEREST" mark and the "MINT" mark under Section 8(2)(b).
3. Whether the registration of the "MINTEREST" mark should be prevented under Section 8(7)(a) of the Act, which prohibits the registration of a mark that is likely to deceive or cause confusion.
How Did the Court Analyse the Issues?
The Hearing Officer, Ms Tan Mei Lin, applied the step-by-step approach laid out by the Singapore Court of Appeal in the Staywell case. First, she assessed the similarity between the "MINTEREST" and "MINT" marks, considering visual, aural, and conceptual similarity.
On visual similarity, the Hearing Officer found that while the marks share the common element "INT", the additional letters "ER" and "EST" in "MINTEREST" create a different overall impression. She also noted that "MINT" has a medium degree of distinctiveness, as the word has some allusive linkage to money and finance, rather than being highly distinctive.
For aural similarity, the Hearing Officer acknowledged that the marks sound similar, with the common "INT" sound. However, she found that the additional syllables in "MINTEREST" create a different overall aural impression.
Conceptually, the Hearing Officer found that while both marks may evoke ideas related to money and finance, the additional elements in "MINTEREST" give it a distinct conceptual meaning of "interest" in the financial sense, rather than just the mint plant or currency mint meaning of "MINT".
Overall, the Hearing Officer concluded that while there are some similarities between the marks, the differences in visual, aural, and conceptual impressions mean that the marks are more dissimilar than similar when considered as a whole.
Having found that the marks are not similar, the Hearing Officer did not need to proceed to the second and third steps of the test under Section 8(2)(b) - assessing similarity of goods/services and likelihood of confusion.
The Hearing Officer also rejected Intuit's argument under Section 8(7)(a), finding that the differences between the marks were sufficient to prevent any likelihood of deception or confusion.
What Was the Outcome?
The Hearing Officer dismissed Intuit's opposition and allowed the registration of the "MINTEREST" mark. She found that the "MINTEREST" mark is not similar to Intuit's earlier "MINT" mark, and there is no likelihood of confusion that would prevent its registration.
Why Does This Case Matter?
This case provides useful guidance on the application of the step-by-step approach to assessing mark similarity under Section 8(2)(b) of the Singapore Trade Marks Act. It demonstrates that even where there are some similarities between marks, the overall impression created by the marks must be considered, and differences in visual, aural, and conceptual impressions can outweigh the similarities.
The case also highlights the importance of the distinctiveness of the earlier mark in the similarity analysis. The Hearing Officer's finding that the "MINT" mark has only a medium degree of distinctiveness, rather than a high degree, was a key factor in her conclusion that the marks are more dissimilar than similar.
For practitioners, this case serves as a reminder that the assessment of mark similarity is a holistic exercise, and that differences in the overall impressions created by the marks can be sufficient to overcome similarities, even where the marks share common elements. It also underscores the need to carefully consider the distinctiveness of the earlier mark in the analysis.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2019] SGIPOS 16 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.