Case Details
- Citation: [2020] SGIPOS 6
- Court: Intellectual Property Office of Singapore
- Date: 2020-06-15
- Judges: Tony Yeo
- Plaintiff/Applicant: FMTM Distribution Ltd
- Defendant/Opponent: Rolex S.A.
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2011] SGHC 176, [2014] SGIPOS 8, [2015] SGHC 216, [2015] SGIPOS 2, [2018] SGIPOS 1, [2018] SGIPOS 9, [2019] SGIPOS 3, [2019] SGIPOS 9, [2020] SGIPOS 6
- Judgment Length: 31 pages, 11,318 words
Summary
This case involves a trade mark opposition brought by luxury watchmaker Rolex S.A. against an application by FMTM Distribution Ltd to register the mark "MARINER" in Singapore. Rolex opposed the registration on several grounds, including that the "MARINER" mark is similar to Rolex's earlier "SUBMARINER" 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 that would justify rejecting FMTM's trade mark application.
What Were the Facts of This Case?
FMTM Distribution Ltd ("the Applicant") is a company that sells high-end luxury watches. On 5 February 2016, the Applicant applied to register the trade mark "MARINER" in Singapore in Class 14, covering a wide range of goods including watches, clocks, jewellery, and related accessories.
Rolex S.A. ("the Opponent") is a renowned Swiss watchmaker that has been in business since 1905. Rolex opposed the registration of the "MARINER" mark, relying on its earlier registered trade mark "SUBMARINER" in Singapore, also in Class 14 for horological instruments and parts.
The Opponent filed its notice of opposition on 5 April 2018, arguing that the "MARINER" mark was similar to its "SUBMARINER" mark and would cause confusion among consumers. The Applicant filed a counter-statement on 27 July 2018, and the parties subsequently filed evidence and written submissions in support of their respective positions.
What Were the Key Legal Issues?
The key legal issue in this case was whether the "MARINER" mark applied for by the Applicant was similar to the Opponent's earlier registered "SUBMARINER" mark, such that its registration would be prohibited under Section 8(2)(b) of the Singapore Trade Marks Act. This provision prohibits the registration of a trade mark that is similar to an earlier trade mark and is to be registered for identical or similar goods, where there exists a likelihood of confusion on the part of the public.
The Opponent also relied on several other grounds of opposition under Sections 8(4)(b)(i), 8(4)(b)(ii), and 8(7)(a) of the Act, but the primary focus of the case was on the Section 8(2)(b) ground of opposition.
How Did the Court Analyse the Issues?
The hearing officer, Tony Yeo, applied the well-established "step-by-step" approach set out by the Singapore Court of Appeal in the Staywell case. This involves:
- Assessing whether the respective marks are similar;
- Assessing whether there is identity or similarity between the goods or services for which registration is sought and the goods or services for which the earlier trade mark is protected; and
- Considering whether, ultimately, there exists a likelihood of confusion as a result of the marks-similarity and goods-similarity.
On the first step of marks-similarity, the hearing officer examined the visual, aural, and conceptual similarity between the "MARINER" and "SUBMARINER" marks. He considered the distinctive and dominant features of each mark, as well as their overall distinctiveness.
The hearing officer rejected the parties' respective arguments about the dominant components of the marks. He found that "SUBMARINER" is a single word in the English language, and it was not appropriate to artificially carve it up into separate distinctive components. He was also unpersuaded by the Applicant's argument that the prefix "SUB" was the dominant feature of the Opponent's mark.
Ultimately, the hearing officer concluded that while there were some visual and aural differences between the marks, they were conceptually similar as they both evoked the idea of the marine or nautical environment. He found that the Opponent's "SUBMARINER" mark had a reasonable degree of technical distinctiveness, and that the Applicant's "MARINER" mark was similar enough to it to satisfy the first step of the test.
On the second step of goods-similarity, the hearing officer found that the goods covered by the respective marks were identical or highly similar, as they both related to watches, clocks, and related horological and jewellery products.
Turning to the final step of likelihood of confusion, the hearing officer considered the marks' similarity, the goods' similarity, and the impact on the relevant average consumer. He concluded that despite some differences, the overall impression created by the marks was sufficiently similar that there was a likelihood of confusion among consumers. Factors such as the Opponent's strong reputation and the imperfect recollection of consumers supported this finding.
What Was the Outcome?
Based on the above analysis, the hearing officer upheld the Opponent's opposition under Section 8(2)(b) of the Trade Marks Act. He ordered that the Applicant's trade mark application for "MARINER" be refused registration.
Why Does This Case Matter?
This case provides a useful illustration of the application of the step-by-step test for assessing trade mark similarity and likelihood of confusion under Singapore law. It highlights the importance of considering the overall impression and conceptual similarity of marks, even where there may be some visual or aural differences.
The case also demonstrates the high bar that must be met for an applicant to overcome an opposition based on an earlier registered mark. Even where the applicant's mark may have some distinguishing features, if the overall impression is sufficiently similar to the earlier mark and the goods are identical or similar, a likelihood of confusion can still be found.
For trade mark owners, this decision reinforces the value of securing strong, distinctive trade mark registrations that can be effectively enforced against similar marks. It also underscores the need for applicants to carefully consider potential conflicts with earlier marks before seeking registration, to avoid costly opposition proceedings.
Legislation Referenced
Cases Cited
- [2011] SGHC 176
- [2014] SGIPOS 8
- [2015] SGHC 216
- [2015] SGIPOS 2
- [2018] SGIPOS 1
- [2018] SGIPOS 9
- [2019] SGIPOS 3
- [2019] SGIPOS 9
- [2020] SGIPOS 6
Source Documents
This article analyses [2020] SGIPOS 6 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.