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 of Decision: 21 August 2015
- Judge: George Wei JC (as he then was)
- Case Number: TA No 11 of 2014
- Parties: Rovio Entertainment Ltd (Opponent/Appellant) v Kimanis Food Industries Sdn Bhd (Applicant/Respondent)
- Procedural History: Appeal from the principal assistant registrar of trade marks (“PAR”) decision dismissing Rovio’s opposition to Kimanis’ trade mark application
- Represented By (Appellant/Opponent): Moiz Haider Sithawalla and Tham Chang Xian (Tan Rajah & Cheah)
- Represented By (Respondent/Applicant): Teo Kwan Soon Paul (Ravindran Associates)
- Legal Areas: Trade marks and trade names — grounds for refusal of registration; Trade marks and trade names — registration criteria; Trade marks and trade names — passing off
- Trade Mark Application Challenged: Trade Mark Application No. T1204840G
- Applicant’s Mark: “Angry Bite Mark” (T1204840G)
- Goods/Services (Applicant): Flour based savoury snacks; food products containing (principally) flour; cereal based snack food; snack food products made from maize flour; snack food products made from potato flour; snack food products made from rice flour; snack food products made from soya flour; rice based snack foods; flour confectionary; sesame snacks
- Filing Date (Applicant): 5 April 2012
- Opponent’s Registered Marks: (i) “Red Bird Mark” (T1111886Z) and (ii) “Angry Birds Word Mark” (T1113897F)
- Opponent’s Priority Claim: 31 March (for both opponent marks as indicated in the metadata)
- Opponent’s Filing Date: 15 April (for both opponent marks as indicated in the metadata)
- 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
- Classes (Angry Birds Word Mark): 3, 9, 14, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 32, 33, 34, 35, 36, 3, 41 and 43 (as set out in the extract)
- Additional Alleged Mark: “Fancy Word Mark” (stylised version of the Angry Birds Word Mark; not registered in Singapore; copyright asserted)
- Statutes Referenced: Interpretation Act (A of the Interpretation Act); Trade Marks Act 1994; Trade Mark Act; Trade Marks Act (Cap. 332, 2005 Rev Ed)
- Key Prior Decision Cited: [2014] SGIPOS 10 (PAR’s decision)
- Cases Cited (as provided): [2014] SGIPOS 14; [2014] SGIPOS 10; [2015] SGHC 216
- Judgment Length: 46 pages; 26,746 words
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”, by a Malaysian snack manufacturer. Rovio, the owner of well-known “Angry Birds” trade marks (including a “Red Bird Mark” and an “Angry Birds Word Mark”), argued that Kimanis’ mark should not be registered because it was confusingly similar to Rovio’s earlier marks, because it would take unfair advantage of or be detrimental to Rovio’s well-known marks, because it would amount to passing off, and because it infringed Rovio’s asserted copyright in a stylised “Fancy Word Mark”.
The High Court (George Wei JC) dismissed Rovio’s appeal. While the court accepted that Rovio’s earlier marks were “well known in Singapore” for the purposes of the relevant extended protection provisions, it held that the marks were not sufficiently similar (including when the comparison was properly framed), and that the statutory requirements for confusion, connection, and damage were not made out on the evidence. The court also found that Rovio failed to establish the elements necessary for passing off, particularly in relation to goodwill and misrepresentation, and it further failed to prove the prerequisites for copyright infringement, including originality and copying.
What Were the Facts of This Case?
Rovio 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 claimed very large global user numbers and downloads, and it asserted that the “Angry Birds” brand had been marketed in Singapore through promotions and advertising, including in connection with Singapore’s Formula 1 Night Race and the Singapore Cable Car, as well as advertising at Changi Airport and at Takashimaya Department Store.
In Singapore, Rovio owned multiple registered trade marks covering a wide range of goods and services. For present purposes, two were central: the “Red Bird Mark” (T1111886Z) and the “Angry Birds Word Mark” (T1113897F). Rovio also used a stylised version of the word mark, referred to as the “Fancy Word Mark”. Although this stylised mark was not registered in Singapore, Rovio asserted that it enjoyed copyright in it, and it pointed to registrations of the stylised mark for copyright in the United States and China.
Kimanis, by contrast, is a snack food manufacturer. It applied to register “Angry Bite Mark” (T1204840G) for a range of flour-based savoury snacks and related food products. Rovio opposed the application before the principal assistant registrar of trade marks. The opposition relied on multiple grounds under the Trade Marks Act, including the “confusing similarity” ground (s 8(2)(b)), the extended protection for well-known marks (s 8(4)), passing off (s 8(7)(a)), and copyright infringement (s 8(7)(b)).
Before the PAR, Rovio’s evidence comprised two statutory declarations by individuals associated with Rovio’s side, while Kimanis filed a statutory declaration in response. Notably, no expert or survey evidence was adduced. The PAR dismissed the opposition and awarded costs to Kimanis. On appeal, Rovio narrowed its challenge by dropping one of the extended protection sub-grounds (relating to marks “well known to the public at large in Singapore”), but it continued to pursue the remaining grounds.
What Were the Key Legal Issues?
The High Court structured the appeal around the statutory grounds relied upon by Rovio. The first broad issue was whether Rovio could succeed under s 8(2)(b) of the Trade Marks Act, which prohibits registration where a mark is similar to an earlier trade mark for similar or identical goods and there is a likelihood of confusion. Within this, the court had to decide (i) how to conduct the similarity comparison—specifically whether the court could treat Rovio’s two separate registered marks as a composite mark for comparison purposes; (ii) whether “Angry Bite Mark” was similar to Rovio’s earlier marks; and (iii) whether, if similarity was established, there would be a likelihood of confusion.
The second broad issue concerned Rovio’s extended protection argument under s 8(4)(b)(i) read with s 8(4)(a). The court had to determine (i) whether the “whole or an essential part” of “Angry Bite Mark” was identical or similar to either of Rovio’s earlier marks; (ii) whether Rovio’s marks were “well known in Singapore”; (iii) whether use of the applicant’s mark would indicate a connection between the parties in the course of trade; and (iv) whether such connection was likely to damage Rovio’s interests.
The third broad issue was passing off under s 8(7)(a). This required the court to consider whether Rovio’s marks generated goodwill, whether Kimanis’ use amounted to a misrepresentation, and whether such misrepresentation was likely to cause damage. The fourth broad issue was copyright infringement under s 8(7)(b), which required proof that Rovio had subsisting copyright in the relevant works and that Kimanis copied a substantial part of those works when creating “Angry Bite Mark”.
How Did the Court Analyse the Issues?
For the s 8(2)(b) ground, the court reaffirmed the step-by-step approach endorsed by the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc. The approach requires the court to assess, systematically, three requirements: similarity of the marks, similarity of goods or services, and likelihood of confusion arising from the two similarities. The court treated the similarity of goods requirement as not in dispute on the appeal, focusing instead on the mark comparison and confusion analysis.
A key preliminary question was whether Rovio’s two registered marks—the “Red Bird Mark” and the “Angry Birds Word Mark”—could be treated 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 the composite. The judge rejected this framing. He observed that the marks were not registered as a series under s 17 of the Trade Marks Act, and it was therefore not appropriate to treat them as a composite registered mark. The court’s comparison had to be conducted properly by comparing the applicant’s mark against the earlier registered marks individually, rather than by constructing a composite that was not reflected in the registration structure.
Having determined the correct method of comparison, the court then assessed similarity in totality. The judge’s reasoning emphasised that trade mark similarity is not a mechanical exercise of comparing isolated elements; it requires an overall impression. Although both sides’ marks contained “bird” and “angry” conceptual elements, the court found that the marks were more dissimilar than similar when viewed as whole marks. This conclusion was central: without sufficient similarity, the statutory threshold for confusion could not be met. The court also considered that the applicant’s mark, although evocative of Rovio’s branding, differed in its distinctive features and overall presentation.
On likelihood of confusion, the court considered the absence of survey or expert evidence and the nature of the goods. It concluded that Rovio had not established a likelihood of confusion on the evidence. In particular, the court was not persuaded that ordinary consumers would be confused into believing that the snack products originated from, were endorsed by, or were otherwise commercially connected with Rovio. The court’s approach reflects a practical evidential requirement: where a claimant relies on confusion, it must demonstrate more than conceptual similarity; it must show that the relevant public is likely to be misled in the marketplace.
Turning to the extended protection ground under s 8(4)(b)(i) read with s 8(4)(a), the court accepted that Rovio’s marks were “well known in Singapore”. However, the extended protection analysis still required the court to find that the applicant’s mark (or an essential part of it) was identical or similar to the earlier marks. The judge held that this requirement was not satisfied. Even though Rovio’s marks were well known, the court did not accept that “Angry Bite Mark” was sufficiently similar to Rovio’s earlier marks in the relevant sense. As a result, the court did not find that the statutory conditions for indicating a connection and causing likely damage were met.
On passing off under s 8(7)(a), the court applied the classic elements of goodwill, misrepresentation, and damage. The PAR had found that Rovio had not adduced sufficient evidence to demonstrate goodwill in the relevant marks in Singapore, and the High Court agreed. While Rovio showed some marketing activity and licensing-based merchandising, the court found that the evidence did not establish the level of goodwill necessary for passing off. The court also found no misrepresentation: the applicant’s use of “Angry Bite Mark” was not shown to be likely to lead consumers to believe that the applicant’s goods were connected with Rovio’s business.
Finally, on copyright infringement under s 8(7)(b), the court required proof of subsisting copyright and proof of copying of a substantial part. Rovio asserted copyright in the “Fancy Word Mark”. However, the court found that Rovio did not prove originality of the relevant works in the Singapore context and did not prove copying. The absence of evidence demonstrating that Kimanis copied Rovio’s stylised word mark (or a substantial part of it) was fatal. This part of the decision underscores that copyright claims in trade mark opposition proceedings cannot rest on assertions of ownership alone; they require evidential proof of both subsistence and infringement.
What Was the Outcome?
The High Court dismissed Rovio’s appeal and upheld the PAR’s decision to dismiss Rovio’s opposition to Kimanis’ trade mark application. Practically, this meant that “Angry Bite Mark” could proceed to registration (subject to the usual administrative steps following the determination of the opposition).
The decision also reflects that, even where a claimant’s earlier marks are well known, success under the Trade Marks Act depends on meeting the specific statutory thresholds for similarity, confusion, connection, and damage, and on adducing sufficient evidence for passing off and copyright infringement.
Why Does This Case Matter?
Rovio v Kimanis is a useful authority on how Singapore courts conduct trade mark similarity comparisons under s 8(2)(b). In particular, it clarifies that courts should not treat separately registered marks as a composite mark for comparison unless the marks are registered as a series (or otherwise properly framed within the statutory registration structure). This is significant for brand owners who hold multiple registrations and wish to argue that the “overall brand” should be treated as a single composite for similarity analysis.
The case also illustrates the evidential discipline required for confusion and passing off. Even where there is marketing activity and licensing of merchandise, claimants must show goodwill and misrepresentation with sufficient evidential support. The absence of survey or expert evidence, while not always determinative, can be important where the claimant’s case depends on demonstrating how consumers perceive the marks in the marketplace.
For practitioners, the decision is also a reminder that extended protection for well-known marks under s 8(4) is not automatic. A mark being “well known in Singapore” does not eliminate the need to establish similarity of the applicant’s mark (or an essential part) to the earlier mark, and to show the likelihood of a connection and damage to interests. Finally, the copyright aspect demonstrates that trade mark opposition proceedings can involve complex IP arguments, but courts will require proof of originality and copying rather than relying on foreign registrations or assertions of ownership.
Legislation Referenced
- Interpretation Act (A of the Interpretation Act)
- Trade Marks Act (Cap. 332, 2005 Rev Ed) — ss 8(2)(b), 8(4)(a), 8(4)(b)(i), 8(7)(a), 8(7)(b), and s 17 (series of trade marks) (as discussed in the extract)
- Trade Marks Act 1994 (as referenced in the metadata)
- Trade Mark Act (as referenced in the metadata)
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
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.