Case Details
- Citation: [2021] SGIPOS 13
- Court: Intellectual Property Office of Singapore
- Date: 2021-11-03
- Judges: Adrian Tan Gim Hai
- Plaintiff/Applicant: Louis Vuitton Malletier
- Defendant/Respondent: Human Horizons Holding (Shanghai) Co., Ltd.
- Legal Areas: Trade marks and trade names – Opposition
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2014] SGIPOS 13, [2017] SGIPOS 12, [2018] SGIPOS 16, [2019] SGIPOS 1, [2020] SGIPOS 8, [2020] SGIPOS 11, [2020] SGIPOS 5, [2020] SGIPOS 6, [2021] SGIPOS 6, [2021] SGIPOS 10
- Judgment Length: 21 pages, 9,515 words
Summary
This case involves a trade mark opposition filed by luxury brand Louis Vuitton Malletier against the registration of the trade mark "HORIZON" by Chinese company Human Horizons Holding (Shanghai) Co., Ltd. Louis Vuitton argued that the "HORIZON" mark is similar to its own registered "HORIZON" mark and would cause confusion among consumers. The Intellectual Property Office of Singapore had to determine whether the two marks were similar and whether there was a likelihood of confusion.
What Were the Facts of This Case?
Human Horizons Holding (Shanghai) Co., Ltd. ("the Applicant") applied to register the trade mark "HORIZON" in Singapore on 15 October 2018 under Trade Mark No. 40201821074P-02 in Classes 18 and 25, covering goods such as leather goods, bags, clothing, and accessories. The application was accepted and published for opposition on 22 February 2019.
Louis Vuitton Malletier ("the Opponent") filed a notice of opposition on 24 June 2019, relying on Sections 8(2)(b), 8(4) and 8(7)(a) of the Trade Marks Act. The Opponent argued that the "HORIZON" mark is similar to its own earlier registered "HORIZON" mark (TM No. 40201616906T), and that use of the Applicant's mark would cause confusion among consumers.
The Applicant is a Chinese company involved in the new energy vehicle and smart transportation industries. It submitted evidence to show that it is "well-known and well-regarded around the world" through various business partnerships. The Applicant sought to register the "HORIZON" mark as part of its effort "to protect its company name".
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Applicant's "HORIZON" mark is similar to the Opponent's earlier registered "HORIZON" mark under Section 8(2)(b) of the Trade Marks Act, such that there exists a likelihood of confusion among consumers.
2. Whether the Opponent's "HORIZON" mark is well known in Singapore under Section 8(4) of the Act, such that use of the Applicant's mark would be detrimental to the Opponent's rights.
3. Whether the Applicant's use of the "HORIZON" mark would constitute passing off under Section 8(7)(a) of the Act.
How Did the Court Analyse the Issues?
On the issue of similarity of marks under Section 8(2)(b), the Hearing Officer considered the visual, aural and conceptual similarities between the two marks. He acknowledged that the word "horizon" is an ordinary English word that may have some association with travel and luggage products. However, he was prepared to find that the word has a low degree of inherent distinctiveness in relation to such goods.
The Hearing Officer then considered the Opponent's argument that its "HORIZON" mark has acquired a high degree of distinctiveness through extensive marketing and promotion. He noted the divergent approaches taken by previous decisions on whether acquired distinctiveness should be considered at the marks-similarity stage or the likelihood of confusion stage. After reviewing the authorities, the Hearing Officer declined to consider the issue of acquired distinctiveness at the marks-similarity stage, preferring the "mechanical approach" set out in GCIH Trademarks Limited v Hardwood Private Limited [2021] SGIPOS 6.
Ultimately, the Hearing Officer found that the marks were visually and aurally similar, and that the conceptual similarity was moderate. He concluded that the marks were similar under Section 8(2)(b), and that there was a likelihood of confusion among consumers.
On the issue of well-known mark under Section 8(4), the Hearing Officer found that the Opponent's "HORIZON" mark was not shown to be well known in Singapore. The Opponent's evidence did not demonstrate that the mark was widely known to the relevant sector of the public in Singapore.
Finally, on the issue of passing off under Section 8(7)(a), the Hearing Officer found that the Opponent had failed to establish the necessary goodwill in Singapore for its "HORIZON" brand. The Opponent's evidence was insufficient to show that the brand had acquired a significant reputation and recognition among consumers in Singapore prior to the Applicant's filing date.
What Was the Outcome?
The Hearing Officer upheld the opposition under Section 8(2)(b), finding that the Applicant's "HORIZON" mark was similar to the Opponent's earlier registered mark and that there was a likelihood of confusion among consumers. However, the opposition under Sections 8(4) and 8(7)(a) was dismissed, as the Opponent failed to establish that its "HORIZON" mark was well known in Singapore or that it had acquired sufficient goodwill for a passing off claim.
As a result, the Applicant's trade mark application for "HORIZON" was refused registration in Singapore.
Why Does This Case Matter?
This case provides useful guidance on the assessment of similarity between trade marks under Section 8(2)(b) of the Singapore Trade Marks Act. It highlights the ongoing debate around whether evidence of acquired distinctiveness should be considered at the marks-similarity stage or the likelihood of confusion stage.
The decision also underscores the high evidentiary threshold required to establish that a trade mark is well known in Singapore under Section 8(4), as well as the need to demonstrate sufficient goodwill for a successful passing off claim under Section 8(7)(a).
For brand owners, this case emphasizes the importance of actively promoting and building up the reputation of their trade marks, not just in their home markets, but also in key jurisdictions like Singapore, in order to obtain robust legal protection. It also highlights the challenges faced by newer market entrants in seeking to register trade marks that may be similar to well-established luxury brands.
Legislation Referenced
Cases Cited
- [2014] SGIPOS 13, Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal
- [2017] SGIPOS 12
- [2018] SGIPOS 16, Monster Energy Company v NBA Properties, Inc.
- [2019] SGIPOS 1, Swatch AG v Apple Inc.
- [2020] SGIPOS 8, Valentino S.p.A. v Matsuda & Co
- [2020] SGIPOS 11, Damiani International BV v Dhamani Jewels DMCC
- [2020] SGIPOS 5
- [2020] SGIPOS 6
- [2021] SGIPOS 6, GCIH Trademarks Limited v Hardwood Private Limited
- [2021] SGIPOS 10, Combe International Ltd. v Dr. August Wolff GmbH & Co. Kg Arzneimittel
- [2021] 3 SLR 319, Monster Energy Company v Glamco, Ltd
Source Documents
This article analyses [2021] SGIPOS 13 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.