Case Details
- Citation: [2015] SGHC 216
- Title: Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd
- Court: High Court of the Republic of Singapore
- Date: 21 August 2015
- Judges: George Wei JC (as he then was)
- Case Number: TA No 11 of 2014
- Decision Type: Appeal from the decision of the principal assistant registrar of trade marks
- Plaintiff/Applicant (Opponent): Rovio Entertainment Ltd
- Defendant/Respondent (Applicant below): Kimanis Food Industries Sdn Bhd
- Procedural Posture: Appeal against the principal assistant registrar’s dismissal of opposition to Trade Mark Application No. T1204840G
- Trade Mark at Issue: T1204840G “Angry Bite Mark”
- Opponent’s Registered Trade Marks: T1111886Z “Red Bird Mark”; T1113897F “Angry Birds Word Mark”
- Opponent’s “Fancy Word Mark”: Stylised version of the Angry Birds Word Mark (not registered in Singapore; copyright asserted)
- Classes (Red Bird Mark): 3, 9, 14, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43
- Priority Claim (Opponent): 31 March
- Date of Filing (Opponent): 15 April
- Applicant’s Goods: Flour based savoury snacks; food products containing (principally) flour; cereal based snack food; snack food products made from maize flour; potato flour; rice flour; soya flour; flour confectionary; sesame snacks
- Applicant’s Date of Application: 5 April 2012
- Legal Areas: Trade marks; passing off; copyright infringement; trade mark opposition and registration criteria
- Statutes Referenced: Trade Marks Act (Cap. 332, 2005 Rev Ed) (“TMA”); Interpretation Act
- Cases Cited: [2014] SGIPOS 14; [2014] SGIPOS 10; [2015] SGHC 216; Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911
- Judgment Length: 46 pages; 27,114 words
- Counsel: Moiz Haider Sithawalla and Tham Chang Xian (Tan Rajah & Cheah) for the appellant; Teo Kwan Soon Paul (Ravindran Associates) for the respondent
Summary
Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd concerned an opposition to the registration of a snack-food trade mark, “Angry Bite Mark” (T1204840G), by a company in Malaysia. Rovio, the well-known creator of the “Angry Birds” franchise, opposed the application on multiple grounds under the Trade Marks Act, including likelihood of confusion under s 8(2)(b), protection of well-known marks under s 8(4), passing off under s 8(7)(a), and copyright infringement under s 8(7)(b). The High Court (George Wei JC) dismissed the appeal, upholding the principal assistant registrar’s decision to allow registration.
The court’s reasoning turned on the trade mark comparison and the evidential requirements for each statutory ground. Although the Opponent’s marks were accepted as “well known in Singapore” for certain purposes, the court found that the marks were not sufficiently similar in the relevant way, and that the use of “Angry Bite Mark” would not indicate a connection with Rovio’s goods or interests. On passing off, the court found insufficient evidence of goodwill and misrepresentation. On copyright, the court held that the Opponent failed to prove subsistence and copying of a substantial part.
What Were the Facts of This Case?
Rovio Entertainment Ltd is a software development and entertainment company incorporated in Finland. Its flagship product is the mobile phone game franchise “Angry Birds”, first released in 2009. Rovio asserted that the franchise has achieved very large global user numbers and downloads. In Singapore, Rovio’s “Angry Birds” concept was marketed through various channels, including promotions associated with Singapore’s Formula 1 Night Race (2011 and 2012), the Singapore Cable Car (from June 2012), advertising at Changi Airport (November 2012), and promotion at Takashimaya Department Store (2011). Rovio also relied on the use of its marks on merchandise, such as toys, cakes, snacks and fast food, sold by licensees rather than by Rovio directly.
Rovio is the registered proprietor of two trade marks in Singapore. The first is T1111886Z, the “Red Bird Mark”, registered for a wide range of goods and services across multiple classes. The second is T1113897F, the “Angry Birds Word Mark”, likewise registered across multiple classes. Rovio also used a stylised version of the word mark, referred to in the judgment as the “Fancy Word Mark”. While the Fancy Word Mark was not registered in Singapore, Rovio asserted that it enjoyed copyright protection, including in jurisdictions such as the United States and China.
On the other side, Kimanis Food Industries Sdn Bhd is a snack food manufacturer. It applied to register the mark “Angry Bite Mark” (T1204840G) on 5 April 2012 for flour-based savoury snacks and related snack foods. The application was opposed by Rovio before the principal assistant registrar of trade marks. The opposition was based on several statutory grounds, including that the mark was confusingly similar to Rovio’s earlier marks, that it would take unfair advantage of or dilute Rovio’s well-known marks, that it amounted to passing off, and that it infringed Rovio’s copyright.
The principal assistant registrar dismissed the opposition and awarded costs to Kimanis. Rovio then appealed. Notably, in the appeal, Rovio dropped one of the grounds relating to earlier marks that are “well known to the public at large in Singapore” under s 8(4)(b)(ii). The High Court therefore focused on the remaining grounds: s 8(2)(b) (likelihood of confusion), s 8(4)(b)(i) read with s 8(4)(a) (connection and damage to interests of the proprietor of a well-known mark), s 8(7)(a) (passing off), and s 8(7)(b) (copyright infringement).
What Were the Key Legal Issues?
The High Court structured the appeal around the statutory grounds invoked by Rovio. The first broad issue was whether the opposition could succeed under s 8(2)(b) of the Trade Marks Act. This required the court to address: (i) how to conduct the similarity comparison between the marks, including whether Rovio’s separately registered marks could be treated as a composite mark; (ii) whether “Angry Bite Mark” was similar to Rovio’s earlier marks; and (iii) whether, given any similarity, there was a likelihood of confusion among the public.
The second broad issue concerned s 8(4)(b)(i) read with s 8(4)(a). The court had to determine whether the “whole or an essential part” of “Angry Bite Mark” was identical or similar to Rovio’s earlier marks; whether Rovio’s marks were “well known in Singapore”; whether use of the applicant’s mark would indicate a connection in the course of trade; and whether such connection would be likely to damage Rovio’s interests.
The third broad issue related to passing off under s 8(7)(a). This required analysis of whether Rovio’s marks generated goodwill in Singapore, whether “Angry Bite Mark” would amount to a misrepresentation, and whether that misrepresentation would likely cause damage. Finally, the fourth broad issue concerned copyright infringement under s 8(7)(b), requiring proof of subsisting copyright and proof that Kimanis copied a substantial part of Rovio’s copyright works in creating the “Angry Bite Mark”.
How Did the Court Analyse the Issues?
On s 8(2)(b), the court applied the “step-by-step” approach affirmed by the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc. The analysis required separate consideration of: (1) similarity of the marks; (2) similarity of goods or services; and (3) likelihood of confusion arising from the two similarities, assessed in the round. The judgment notes that the applicant did not dispute the similarity of goods requirement, so the live focus was on the similarity of marks and confusion.
A key preliminary question was whether Rovio could treat its two registered marks—“Red Bird Mark” and “Angry Birds Word Mark”—as a composite mark for the purpose of the similarity comparison. Rovio’s position was that the court could combine the marks and compare “Angry Bite Mark” against that composite. The court rejected this approach. It observed that the marks were not registered as a series of trade marks under s 17 of the Trade Marks Act, and it was therefore not appropriate to treat them as a single composite mark for comparison purposes. The court’s reasoning reflects a broader principle in trade mark law: similarity is assessed by comparing the relevant marks as registered and as perceived by the public, rather than by reconstructing a “composite” that is not reflected in the registration framework.
After addressing the composite-mark question, the court proceeded to compare “Angry Bite Mark” with each of Rovio’s earlier marks in the relevant manner. The court’s ultimate conclusion was that the marks were more dissimilar than similar in totality. This conclusion is important because, under s 8(2)(b), similarity is not assessed in isolation by dissecting words or elements; rather, the court considers the overall impression created by the marks as they would be encountered in the marketplace. The court found that the distinctive features of Rovio’s marks, including the “Angry Birds” branding and the “Red Bird” device, did not translate into a sufficient similarity with “Angry Bite Mark” for the purposes of confusion.
On likelihood of confusion, the court emphasised that confusion is not presumed merely because there is some conceptual overlap (both marks contain the word “Angry” and relate to birds/bites in a playful manner). The court considered the context of the goods—snack foods—alongside the overall impression of the marks. Because the court found the marks to be more dissimilar than similar, it followed that there was no likelihood of confusion. The High Court therefore upheld the PAR’s dismissal of the s 8(2)(b) ground.
For s 8(4)(b)(i) read with s 8(4)(a), the court accepted that Rovio’s marks were “well known in Singapore” for the relevant statutory purpose. However, the court still required that the “whole or an essential part” of the applicant’s mark be identical or similar to the earlier marks, and that the use of the applicant’s mark would indicate a connection in the course of trade with the likelihood of damaging the proprietor’s interests. The court found that the marks were not identical or similar in the relevant way, and that the use of “Angry Bite Mark” would not indicate a connection between the parties’ goods and Rovio’s business. This meant that even though the “well known” threshold was satisfied, the statutory protection did not extend to the applicant’s mark on the facts.
On passing off under s 8(7)(a), the court applied the classic elements of goodwill, misrepresentation, and damage. The PAR had found insufficient evidence to demonstrate goodwill in the Opponent Marks, and no misrepresentation. The High Court agreed. While Rovio had evidence of marketing and merchandise licensing, the court considered the evidential record inadequate to establish the necessary goodwill in the relevant Singapore market in the way required for passing off. Further, the court did not accept that the applicant’s use of “Angry Bite Mark” would mislead consumers into believing there was a commercial connection with Rovio. Without goodwill and misrepresentation, the passing off claim could not succeed.
Finally, on copyright infringement under s 8(7)(b), the court focused on two requirements: subsistence of copyright and copying of a substantial part. The PAR had held that there was no copyright infringement because Rovio did not prove that its marks were original creations and did not prove copying. The High Court upheld this approach. The judgment underscores that copyright claims in trade mark opposition proceedings cannot be sustained on assertions alone; the opponent must provide sufficient evidence of originality and copying. In the absence of proof of copying (and with insufficient evidence on originality), the copyright ground failed.
What Was the Outcome?
The High Court dismissed Rovio’s appeal. The practical effect was that Kimanis Food Industries Sdn Bhd’s trade mark application for “Angry Bite Mark” proceeded, because the opposition grounds under s 8(2)(b), s 8(4)(b)(i) read with s 8(4)(a), s 8(7)(a), and s 8(7)(b) were not made out.
Accordingly, the registration of the applicant’s mark was not prevented by Rovio’s earlier rights in the “Red Bird Mark” and “Angry Birds Word Mark”, nor by passing off or copyright infringement theories on the evidence presented.
Why Does This Case Matter?
This decision is a useful authority for practitioners dealing with trade mark oppositions where the opponent relies on famous branding but the applicant’s mark is in a different commercial context (here, snack foods). The case illustrates that fame and extensive marketing do not automatically translate into legal success. Courts still require the statutory elements—particularly similarity of marks and the likelihood of confusion—to be established on the evidence.
From a doctrinal perspective, the judgment is also significant for its treatment of composite comparisons. The court’s refusal to treat separately registered marks as a composite mark (absent a series registration) provides guidance on how similarity should be assessed. This is particularly relevant for brand owners who hold multiple registrations and wish to argue that consumers perceive them as a single “family” or combined branding. The decision suggests that brand owners should consider structuring their registrations (for example, through series registrations where appropriate) if they intend to rely on composite perception in opposition proceedings.
For passing off and copyright, the case highlights evidential discipline. Passing off requires proof of goodwill and misrepresentation; copyright requires proof of subsistence and copying of a substantial part. The court’s approach signals that opponents should marshal robust evidence, potentially including expert or other corroborative material where originality or copying is contested. Practitioners should take note that the absence of survey evidence or other strong evidence may be fatal where the statutory tests depend on consumer perception and on factual questions such as copying.
Legislation Referenced
- Trade Marks Act (Cap. 332, 2005 Rev Ed) (“TMA”), including ss 8(2)(b), 8(4)(a), 8(4)(b)(i), 8(7)(a), 8(7)(b), and s 17
- Interpretation Act (as referenced in the judgment)
Cases Cited
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911
- [2014] SGIPOS 10
- [2014] SGIPOS 14
- [2015] SGHC 216
Source Documents
This article analyses [2015] SGHC 216 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.