Case Details
- Citation: [2022] SGIPOS 17
- Court: Intellectual Property Office of Singapore
- Date: 2022-11-30
- Judges: Principal Assistant Registrar Tan Mei Lin
- Plaintiff/Applicant: Société des Produits Nestlé S.A.
- Defendant/Opponent: The a2 Milk Company Limited
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2013] SGCA 18, [2022] SGHC 293, [2022] SGIPOS 12, [2022] SGIPOS 17
- Judgment Length: 33 pages, 5,500 words
Summary
This case involves a consolidated opposition by The a2 Milk Company Limited ("the Opponent") against two trade mark applications filed by Société des Produits Nestlé S.A. ("the Applicant"). The Opponent opposed the registration of the "Atwo Illuma" and "Atwo Illumcare" marks under Sections 8(2)(b) and 8(7)(a) of the Singapore Trade Marks Act. The Opponent argued that the Application Marks were similar to its earlier registered "A2" trade marks, and that their use would likely cause confusion among consumers. The Intellectual Property Office of Singapore had to determine whether the competing marks were similar, the goods were identical or similar, and whether there was a likelihood of confusion.
What Were the Facts of This Case?
The Applicant filed two trade mark applications with the Intellectual Property Office of Singapore: the "Atwo Illuma" mark in Class 5 and 29, and the "Atwo Illumcare" mark in Class 5 and 29. Both applications covered goods such as milk, milk products, infant formula, and nutritional supplements.
The Opponent, The a2 Milk Company Limited, is the registered proprietor of numerous "A2" and "a2" trade marks in Singapore, including the "A2 Word Mark". The Opponent opposed the registration of the Applicant's marks, arguing they were similar to its earlier registered marks and would cause confusion among consumers.
This was the second trade mark opposition between the parties, with the Opponent having previously opposed the Applicant's "Nestlé Illuma" mark in an earlier case, The a2 Milk Company Limited v Société des Produits Nestlé S.A. [2022] SGIPOS 12.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the Applicant's "Atwo Illuma" and "Atwo Illumcare" marks were similar to the Opponent's earlier registered "A2" and "a2" marks, particularly the "A2 Word Mark".
- Whether the goods covered by the competing marks were identical or similar.
- Whether there was a likelihood of confusion on the part of the public arising from the similarities between the marks and goods.
How Did the Court Analyse the Issues?
The Intellectual Property Office of Singapore applied the step-by-step approach set out in the landmark decision of Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911. This involved assessing the similarity of the marks, the similarity of the goods, and the likelihood of confusion in a systematic manner.
In evaluating the similarity of the marks, the tribunal considered the visual, aural, and conceptual similarities between the Application Marks and the Opponent's "A2 Word Mark". It also took into account the distinctiveness of the Opponent's mark. The tribunal noted that the marks did not need to be identical, and that a trade-off could be made between the different aspects of similarity.
The tribunal then considered whether the goods covered by the competing marks were identical or similar, based on the nature and purpose of the products.
Finally, the tribunal assessed whether there was a likelihood of confusion arising from the similarities between the marks and goods. This involved considering the imperfect recollection of the average consumer and the overall impression created by the marks.
What Was the Outcome?
The Intellectual Property Office of Singapore found that the Applicant's "Atwo Illuma" and "Atwo Illumcare" marks were not similar to the Opponent's "A2 Word Mark", and therefore the opposition under Section 8(2)(b) of the Trade Marks Act failed.
The tribunal also found that the Applicant's marks were not contrary to Section 8(7)(a) of the Act, as the Opponent had not established that use of the Applicant's marks would be contrary to law.
As a result, the Applicant's trade mark applications were allowed to proceed to registration.
Why Does This Case Matter?
This case provides important guidance on the assessment of trade mark similarity and the likelihood of confusion under Singapore law. It reinforces the step-by-step approach set out in Staywell, and emphasizes that the tribunal must consider the visual, aural, and conceptual similarities between marks, as well as their distinctiveness, in a holistic manner.
The decision also highlights that even where there are some similarities between competing marks, this does not necessarily mean there is a likelihood of confusion. The tribunal must consider the overall impression created by the marks and the imperfect recollection of the average consumer.
This case is particularly significant as it is the second trade mark opposition between these parties, and the tribunal has now found the Applicant's marks to be sufficiently distinct from the Opponent's "A2" marks. This may have implications for the Opponent's ability to prevent the registration of similar marks in the future.
Legislation Referenced
Cases Cited
- [2013] SGCA 18 (Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd)
- [2014] 1 SLR 911 (Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal)
- [2022] SGHC 293
- [2022] SGIPOS 12 (The a2 Milk Company Limited v Société des Produits Nestlé S.A.)
- [2022] SGIPOS 17 (The a2 Milk Company Limited v Société des Produits Nestlé S.A.)
Source Documents
This article analyses [2022] SGIPOS 17 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.