Case Details
- Citation: Tiger Coatings GMBH & Co. KG v Seng Fong Paints Pte Ltd [2019] SGIPOS 10
- Court: Intellectual Property Office of Singapore
- Date: 2019-06-14
- Judges: Lam Chung Nian
- Plaintiff/Applicant: Tiger Coatings GMBH & Co. KG
- Defendant/Respondent: Seng Fong Paints Pte Ltd
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2006] SGIPOS 5, [2009] SGHC 105, [2010] SGIPOS 6, [2011] SGIPOS 19, [2012] SGHC 84, [2013] SGCA 26, [2014] SGIPOS 10, [2015] SGHC 39, [2015] SGIPOS 11, [2015] SGIPOS 9
- Judgment Length: 28 pages, 12,376 words
Summary
This case involves a trade mark opposition between Tiger Coatings GMBH & Co. KG ("the Opponent") and Seng Fong Paints Pte Ltd ("the Applicant"). The Opponent opposed the Applicant's applications to register two trade marks in Singapore, arguing that they were similar to the Opponent's earlier registered trade marks and would cause confusion among consumers. The Intellectual Property Office of Singapore ("IPOS") had to determine whether the Applicant's marks were similar to the Opponent's marks and whether there was a likelihood of confusion that would justify rejecting the Applicant's trade mark applications.
What Were the Facts of This Case?
The Opponent is an Austrian company engaged in the business of developing, manufacturing, and supplying powder coatings, wood coatings, paints, lacquer, ink, varnishes, and other related products. The Opponent has used the "TIGER" and "TIGER Coatings" trade marks and trade names globally, including in Singapore where it previously had a local affiliate company that has since been deregistered. The Opponent's products are now distributed in Singapore by a third-party distributor.
The Applicant is a Singaporean company engaged in the manufacturing and supply of paints and coatings. The Applicant traces the use of the "TIGER" brand for its paint products back to the 1970s by a Malaysian partnership and company that the Applicant is connected to. The Applicant holds a Malaysian trade mark registration for a tiger head device mark that was originally filed by one of the partners of the Malaysian company.
The Applicant applied to register two trade marks in Singapore, both consisting of the word "TIGER" in Class 2 for paints and coatings. The Opponent opposed these applications, relying on its earlier registered "TIGER" and "TIGER DRYLAC" trade marks in Singapore.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Applicant's trade marks were similar to the Opponent's earlier registered trade marks under Section 8(2)(b) of the Singapore Trade Marks Act, such that there would be a likelihood of confusion among consumers.
2. Whether the Applicant's trade marks should be refused registration under Section 8(7)(a) of the Act, on the basis that their use would be contrary to law by constituting passing off of the Opponent's goodwill and reputation.
How Did the Court Analyse the Issues?
The Hearing Officer first examined the issue of similarity of marks under Section 8(2)(b). He noted that the applicable legal principles are well-settled in Singapore, requiring a step-by-step assessment of: (a) similarity of the marks, (b) identity or similarity of the goods, and (c) the likelihood of confusion.
On the issue of mark similarity, the Hearing Officer considered the visual, aural, and conceptual similarities between the marks, as well as the distinctive character of the Opponent's marks. He emphasized that the assessment is ultimately one of overall impression rather than a mechanistic exercise, and that the average consumer's imperfect recollection must be taken into account.
The Hearing Officer found that there was a high degree of visual and aural similarity between the Applicant's "TIGER" marks and the Opponent's "TIGER" and "TIGER DRYLAC" marks. He also found that the marks shared a similar conceptual meaning and idea of a tiger. However, the Hearing Officer noted that the Opponent's marks had a higher degree of technical distinctiveness due to their long-standing use and reputation.
On the issue of identity/similarity of goods, the Hearing Officer found that the Applicant's paints and coatings in Class 2 were identical or highly similar to the Opponent's goods covered by its registrations.
Weighing these factors, the Hearing Officer concluded that there was a likelihood of confusion among consumers, and therefore the Applicant's trade mark applications should be refused under Section 8(2)(b).
Given this finding, the Hearing Officer did not need to separately consider the ground of opposition under Section 8(7)(a) (passing off).
What Was the Outcome?
The Hearing Officer upheld the Opponent's opposition and refused the registration of the Applicant's two trade mark applications. The Applicant's applications were therefore not allowed to proceed to registration.
Why Does This Case Matter?
This case provides useful guidance on the Singapore courts' approach to assessing similarity of trade marks under Section 8(2)(b) of the Trade Marks Act. It reaffirms the step-by-step framework established in prior case law, emphasizing the need for a holistic assessment of the marks' visual, aural, and conceptual similarities, as well as the distinctive character of the earlier mark.
The decision also highlights the importance of considering the average consumer's imperfect recollection when evaluating mark similarity, rather than conducting a detailed, side-by-side comparison. This aligns with the underlying purpose of trade mark law in protecting consumers from confusion.
For trade mark owners, this case underscores the value of building strong, distinctive brands that enjoy a high threshold of protection against similar marks. It also demonstrates the risks of adopting a mark that is too close to an earlier registered trade mark, even if the goods or services are not identical.
Overall, this judgment provides a robust framework for trade mark practitioners to assess the registrability of new marks and the likelihood of successful oppositions, which is crucial in today's competitive commercial landscape.
Legislation Referenced
Cases Cited
- [2006] SGIPOS 5
- [2009] SGHC 105
- [2010] SGIPOS 6
- [2011] SGIPOS 19
- [2012] SGHC 84
- [2013] SGCA 26 (Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd)
- [2014] SGIPOS 10
- [2014] 1 SLR 911 (Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc)
- [2015] SGHC 39
- [2015] SGIPOS 11
- [2015] SGIPOS 9
Source Documents
This article analyses [2019] SGIPOS 10 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.