Case Details
- Citation: [2018] SGIPOS 11
- Court: Intellectual Property Office of Singapore
- Date: 2018-07-17
- Judges: Ms Sandy Widjaja, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Starwood Hotels & Resorts Worldwide, Inc and Sheraton International IP, LLC
- Defendant/Respondent: Staywell Hospitality Pty Limited
- Legal Areas: Trade marks and trade names – Declaration of Invalidity
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2010] SGIPOS 1, [2010] SGIPOS 15, [2011] SGIPOS 7, [2011] SGIPOS 3, [2014] SGIPOS 14, [2016] SGIPOS 1, [2017] SGIPOS 13, [2017] SGIPOS 15, [2018] SGIPOS 11, [2018] SGIPOS 6
- Judgment Length: 49 pages, 18,260 words
Summary
This case involves a dispute between Starwood Hotels & Resorts Worldwide, Inc and Sheraton International IP, LLC (the "Applicants") and Staywell Hospitality Pty Limited (the "Proprietor") over the Proprietor's registered trade mark "柏•伟诗酒店" (the "Subject Mark"). The Applicants sought to invalidate the Subject Mark on several grounds, including bad faith registration and likelihood of confusion with the Applicants' earlier trade marks. The Intellectual Property Office of Singapore (IPOS) had to determine whether the addition of the Chinese characters to the Proprietor's mark would lead to a different conclusion from the previous dispute between the parties.
What Were the Facts of This Case?
The Applicants, Starwood Hotels & Resorts Worldwide, Inc and Sheraton International IP, LLC, are one of the leading hotel and leisure companies in the world, managing over 1,200 properties worldwide under brands such as W Hotels, Westin, and Sheraton. The first St Regis hotel was opened in New York in 1904, and the Applicants deposed that the St Regis brand is known for its unrivalled luxury, with over 38 St Regis properties in 23 countries and 19 more scheduled to open.
The Proprietor, Staywell Hospitality Pty Limited, is one of the largest independently owned hotel management groups in the Asia Pacific region. The PARK REGIS brand has been continuously used by the Proprietor and its predecessors since 1968 for hotel and accommodation services. The Proprietor currently has a network of over 30 PARK REGIS properties in countries such as Australia, Singapore, Indonesia, India, the UAE, and the UK, with more properties under development.
This case is not the first dispute between the parties. In a previous opposition proceeding before IPOS, the Applicants had successfully opposed the Proprietor's application for the mark "PARK REGIS" in Classes 35 and 43. However, the High Court and the Court of Appeal subsequently reversed IPOS' decision, finding in favor of the Proprietor.
What Were the Key Legal Issues?
In the current case, the Applicants sought to invalidate the Proprietor's registered trade mark "柏•伟诗酒店" (the Subject Mark) on the following grounds:
- Bad faith registration under Section 7(6) of the Trade Marks Act
- Likelihood of confusion with the Applicants' earlier trade marks under Section 8(2)(b)
- Unfair advantage or detriment to the distinctive character or repute of the Applicants' earlier trade marks under Section 8(4)(b)(i) and 8(4)(b)(ii)(A)
- Passing off under Section 8(7)(a)
How Did the Court Analyse the Issues?
The key issue the IPOS had to determine was whether the addition of the Chinese characters "柏•伟诗酒店" to the Proprietor's mark would lead to a different conclusion from the previous dispute between the parties.
On the ground of bad faith registration under Section 7(6), the IPOS applied the legal test established in the Valentino case, which requires an assessment of whether the registration was made in a manner that would be considered commercially unacceptable by reasonable and experienced persons. The IPOS found that the Applicants had not provided sufficient evidence to show that the Proprietor's registration of the Subject Mark was made in bad faith.
Regarding the likelihood of confusion under Section 8(2)(b), the IPOS considered the similarity of the marks, the similarity of the services, and the relevant consumer's level of attention. The IPOS concluded that the addition of the Chinese characters did not significantly alter the visual, aural, or conceptual similarity between the Subject Mark and the Applicants' earlier marks, and that there was a likelihood of confusion among the relevant consumers.
On the ground of unfair advantage or detriment under Section 8(4)(b)(i) and 8(4)(b)(ii)(A), the IPOS found that the Applicants had established a sufficient degree of reputation in their ST REGIS mark, and that the use of the Subject Mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the Applicants' earlier mark.
Finally, on the ground of passing off under Section 8(7)(a), the IPOS determined that the Applicants had established the necessary elements of goodwill, misrepresentation, and damage, and that the use of the Subject Mark would amount to passing off.
What Was the Outcome?
The IPOS ultimately allowed the Applicants' application for invalidation of the Proprietor's registered trade mark "柏•伟诗酒店" (the Subject Mark) on the grounds of likelihood of confusion under Section 8(2)(b), unfair advantage or detriment under Section 8(4)(b)(i) and 8(4)(b)(ii)(A), and passing off under Section 8(7)(a) of the Trade Marks Act.
Why Does This Case Matter?
This case is significant for several reasons. Firstly, it demonstrates the continued dispute between the Applicants and the Proprietor over their respective trade marks, which has now spanned multiple proceedings before different tribunals. The IPOS' decision in this case effectively upholds its previous position in the Staywell IPOS case, despite the intervening High Court and Court of Appeal rulings that had favored the Proprietor.
Secondly, the case provides guidance on the application of the legal principles governing bad faith registration, likelihood of confusion, unfair advantage or detriment, and passing off in the context of trade mark invalidation proceedings. The IPOS' analysis of these issues, particularly in light of the previous disputes between the parties, offers valuable insights for practitioners navigating similar trade mark disputes.
Finally, the case highlights the importance of carefully considering the addition of distinctive elements, such as Chinese characters, to a trade mark when assessing the likelihood of confusion and other grounds for invalidation. The IPOS' finding that the addition of the Chinese characters did not significantly alter the overall similarity between the marks serves as a reminder that cosmetic changes may not be sufficient to avoid a finding of infringement or unfair advantage.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed)
Cases Cited
- [2010] SGIPOS 1
- [2010] SGIPOS 15
- [2011] SGIPOS 7
- [2011] SGIPOS 3
- [2014] SGIPOS 14
- [2016] SGIPOS 1
- [2017] SGIPOS 13
- [2017] SGIPOS 15
- [2018] SGIPOS 11
- [2018] SGIPOS 6
- Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide Inc & anor [2014] 1 SLR 911
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another [2013] 1 SLR 489
Source Documents
This article analyses [2018] SGIPOS 11 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.