Case Details
- Citation: [2022] SGIPOS 6
- Court: Intellectual Property Office of Singapore
- Date: 2022-03-15
- Judges: IP Adjudicator Sheik Umar bin Mohamed Bagushair
- Plaintiff/Applicant: Hijos de Rivera, S.A.
- Defendant/Opponent: Sociedad Anonima Damm
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2008] SGIPOS 2, [2014] SGIPOS 11, [2018] SGIPOS 2, [2019] SGIPOS 7, [2020] SGIPOS 8, [2022] SGIPOS 6
- Judgment Length: 52 pages, 13,723 words
Summary
This case involves a trade mark opposition between two Spanish beer manufacturers, Hijos de Rivera, S.A. (the "Applicant") and Sociedad Anonima Damm (the "Opponent"). The Applicant applied to register the composite mark "ESTRELLA GALICIA" in Singapore in 2019, which the Opponent opposed on the grounds that it is similar to the Opponent's earlier registered "ESTRELLA DAMM" mark and would cause a likelihood of confusion. The Opponent also argued that the Applicant's mark should be refused under the provisions for well-known marks and passing off.
The IP Adjudicator ultimately found that while the marks are visually and conceptually similar to a moderate degree, the differences in their aural similarity and the overall impression they convey mean there is no likelihood of confusion. The opposition was therefore dismissed across all grounds.
What Were the Facts of This Case?
The Applicant, Hijos de Rivera, S.A., is an established Spanish beer manufacturer that has been selling its "ESTRELLA GALICIA" brand in Singapore since 2012. The Opponent, Sociedad Anonima Damm, is another Spanish beer company that has been selling its "ESTRELLA DAMM" brand in Singapore since 2010 and owns a registered trade mark for the word mark "ESTRELLA DAMM".
The parties have co-existed with their respective "ESTRELLA" branded beers in various markets around the world, including Europe and the UK, pursuant to a co-existence agreement. However, as the parties expanded into new jurisdictions, they have opposed each other's trade mark registrations, taking inconsistent positions on the similarity of the marks depending on whether they are the applicant or opponent.
In this case, the Applicant applied to register the composite mark "ESTRELLA GALICIA" in Singapore in 2019, which the Opponent opposed. The Opponent relied on its registered "ESTRELLA DAMM" mark as well as several unregistered "ESTRELLA DAMM" marks under various grounds of opposition.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Applicant's "ESTRELLA GALICIA" mark is similar to the Opponent's registered "ESTRELLA DAMM" mark, such that there exists a likelihood of confusion under Section 8(2)(b) of the Trade Marks Act.
2. Whether the Applicant's mark should be refused registration under Section 8(4)(b)(i) of the Act on the basis that it is similar to the Opponent's well-known "ESTRELLA DAMM" marks.
3. Whether the Applicant's mark should be refused registration under Section 8(7)(a) of the Act on the basis that its use would amount to passing off the Opponent's goodwill and reputation in the "ESTRELLA DAMM" marks.
How Did the Court Analyse the Issues?
On the issue of mark similarity under Section 8(2)(b), the IP Adjudicator conducted a detailed analysis of the visual, aural and conceptual similarity between the Applicant's "ESTRELLA GALICIA" mark and the Opponent's registered "ESTRELLA DAMM" mark.
The Adjudicator found that the marks share a high degree of visual and conceptual similarity, as they both prominently feature the Spanish word "ESTRELLA" (meaning "star"). However, the Adjudicator held that the aural similarity is only moderate, as the additional syllables in "GALICIA" distinguish it from the shorter "DAMM".
Overall, the Adjudicator concluded that while there is a moderate degree of similarity between the marks, the differences in their aural impact and overall impression mean that the public is unlikely to be confused as to the origin of the goods.
On the issue of well-known marks under Section 8(4)(b)(i), the Adjudicator found that the Opponent's evidence was insufficient to establish that its "ESTRELLA DAMM" marks were well-known in Singapore at the relevant date. The Adjudicator was not persuaded that the Opponent's reputation extended beyond the beer market to other product categories.
Finally, on the issue of passing off under Section 8(7)(a), the Adjudicator held that the Opponent had failed to establish the necessary elements of goodwill, misrepresentation and damage. The Adjudicator was not satisfied that the Opponent had sufficient goodwill in Singapore, or that the use of the Applicant's mark would lead to a misrepresentation by consumers.
What Was the Outcome?
The IP Adjudicator dismissed the Opponent's opposition on all grounds. The Applicant's "ESTRELLA GALICIA" mark was allowed to proceed to registration, as the Adjudicator found that there was no likelihood of confusion with the Opponent's earlier "ESTRELLA DAMM" mark, and the other grounds of opposition were also not made out.
Why Does This Case Matter?
This case provides useful guidance on the assessment of trade mark similarity under Singapore law, particularly the balancing exercise required between the various factors of visual, aural and conceptual similarity.
The case also highlights the challenges that can arise when parties with co-existing marks in some jurisdictions seek to expand into new markets and oppose each other's registrations. The Adjudicator's reluctance to place much weight on the parties' inconsistent positions taken in foreign proceedings is a pragmatic approach.
More broadly, the case demonstrates the high evidentiary threshold required to establish that a mark is well-known in Singapore, as well as the difficulty in proving the necessary elements of a passing off claim. This will be a useful precedent for trade mark owners seeking to oppose registrations on these grounds.
Legislation Referenced
Cases Cited
- [2008] SGIPOS 2
- [2014] SGIPOS 11
- [2018] SGIPOS 2
- [2019] SGIPOS 7
- [2020] SGIPOS 8
- [2022] SGIPOS 6
Source Documents
This article analyses [2022] 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.