Case Details
- Citation: [2018] SGIPOS 18
- Court: Intellectual Property Office of Singapore
- Date: 2018-10-24
- Judges: Ong Sheng Li, Gabriel, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: New Yorker S.H.K. Jeans GmbH & Co. KG
- Defendant/Opponent: Daidoh Limited
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: TMA and the Trade Marks Act, Trade Marks Act
- Cases Cited: [2017] SGIPOS 16, [2018] SGIPOS 1, [2018] SGIPOS 18, [2018] SGIPOS 9
- Judgment Length: 16 pages, 7,937 words
Summary
This case involves a trade mark opposition between two fashion companies, Daidoh Limited (the Opponent) and New Yorker S.H.K. Jeans GmbH & Co. KG (the Applicant), over the Applicant's attempt to register the trade mark "NEWYORKER" in Singapore. The Opponent, a Japanese company, is the registered proprietor of an earlier trade mark also containing the word "NEWYORKER". The Applicant, a German company, sought to register its "NEWYORKER" mark for various retail services in Class 35. The Opponent opposed the registration on the grounds of likelihood of confusion and reputation of its earlier mark. After considering the evidence and legal arguments, the Intellectual Property Office of Singapore (IPOS) found in favor of the Applicant on the key issues.
What Were the Facts of This Case?
The Opponent, Daidoh Limited, is a Japanese fashion and clothing company that owns the registered trade mark "NEWYORKER" in Singapore (the "Prior Mark"). The Applicant, New Yorker S.H.K. Jeans GmbH & Co. KG, is a German fashion and clothing company that sought to register the trade mark "NEWYORKER" in Singapore (the "Application Mark") for various retail services in Class 35.
The Opponent filed an opposition against the Applicant's trade mark application, citing Sections 8(2)(a) and 8(2)(b) of the Trade Marks Act. The Applicant had previously commenced separate proceedings seeking to revoke the Opponent's Prior Mark for non-use, in a tactical move to eliminate the Prior Mark from the opposition proceedings. However, the revocation application was only partially successful, with the Prior Mark being partially revoked but still valid and subsisting at the relevant date for assessing the opposition.
The key evidence in the case consisted of statutory declarations from the Opponent's and Applicant's representatives. There was no cross-examination of the witnesses. The Opponent later offered to withdraw its opposition in respect of certain services under the Application Mark, while maintaining the opposition for the remaining services.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Applicant's "NEWYORKER" mark was confusingly similar to the Opponent's earlier "NEWYORKER" mark under Section 8(2)(b) of the Trade Marks Act, such that registration should be refused.
2. Whether the Opponent's "NEWYORKER" mark had a reputation in Singapore under Section 8(2)(a) of the Trade Marks Act, such that the Applicant's mark should be refused registration.
3. Whether the Opponent's partial withdrawal of its opposition to certain services under the Application Mark was permissible.
How Did the Court Analyse the Issues?
On the issue of confusing similarity under Section 8(2)(b), the Hearing Officer examined the visual, aural and conceptual similarities between the marks. He found that while the marks were visually and aurally similar, the conceptual differences between them (the Opponent's mark referring to the city of New York, the Applicant's mark referring to a clothing retailer) meant that the marks were not confusingly similar. The Hearing Officer also considered the differences in the goods and services covered by the respective marks.
On the issue of reputation under Section 8(2)(a), the Hearing Officer examined the evidence provided by the Opponent regarding its use and promotion of the "NEWYORKER" mark in Singapore. He found that while the Opponent had established some reputation for its mark, this reputation was limited to certain goods in Class 25 and did not extend to the broader range of retail services covered by the Applicant's mark.
Regarding the Opponent's partial withdrawal of its opposition, the Hearing Officer found this to be permissible, as the Opponent was entitled to limit the scope of its opposition as it saw fit.
What Was the Outcome?
The Hearing Officer ultimately found in favor of the Applicant. He dismissed the Opponent's opposition in respect of the Contested Services under the Application Mark, while accepting the Opponent's withdrawal of the opposition for the Uncontested Services.
This means that the Applicant's "NEWYORKER" mark was allowed to proceed to registration in Singapore for the Contested Services, which included a wide range of retail services related to clothing, accessories, sporting goods, and other products. The Opponent's earlier "NEWYORKER" mark remained registered, but its scope of protection was limited to the goods in Class 25 that had been found to be genuinely used.
Why Does This Case Matter?
This case provides useful guidance on the assessment of confusing similarity and reputation in trade mark opposition proceedings before the Intellectual Property Office of Singapore (IPOS). It demonstrates that even where there is a high degree of visual and aural similarity between marks, conceptual differences can be sufficient to avoid a finding of confusing similarity.
The case also highlights the importance of establishing genuine use and reputation for a trade mark, as opposed to merely having it registered. The Opponent's "NEWYORKER" mark was found to have limited reputation, despite its registration, which ultimately proved insufficient to prevent the Applicant's similar mark from proceeding to registration.
Finally, the case confirms that trade mark applicants and opponents have flexibility in shaping the scope of opposition proceedings, such as by withdrawing opposition to certain goods or services. This can be a useful tactical maneuver in complex multi-class trade mark disputes.
Legislation Referenced
- TMA and the Trade Marks Act
- Trade Marks Act
Cases Cited
- [2017] SGIPOS 16
- [2018] SGIPOS 1
- [2018] SGIPOS 18
- [2018] SGIPOS 9
Source Documents
This article analyses [2018] SGIPOS 18 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.