Case Details
- Citation: Valentino S.p.A. v Matsuda & Co [2020] SGIPOS 8
- Court: Intellectual Property Office of Singapore
- Date: 2020-07-30
- Judges: David Llewelyn
- Plaintiff/Applicant: Valentino S.p.A.
- Defendant/Respondent: Matsuda & Co
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2007] SGIPOS 8, [2009] SGHC 150, [2010] SGCA 14, [2012] SGIPOS 2, [2016] SGCA 25, [2017] SGCA 30, [2018] SGIPOS 16, [2019] SGIPOS 1, [2020] SGIPOS 8
- Judgment Length: 24 pages, 8,937 words
Summary
This case involves a trade mark opposition between two companies that have both chosen to use similar surnames as part of their trade marks. The Opponent, Valentino S.p.A., is an Italian fashion company that owns numerous registered trade marks containing the name "Valentino". The Applicant, Matsuda & Co, applied to register the trade mark "MATSUDA & CO" in Singapore. Valentino opposed the registration, arguing that it would be confusingly similar to their earlier marks. The Intellectual Property Office of Singapore had to determine whether the Applicant's mark should be allowed to proceed to registration despite the Opponent's earlier rights.
What Were the Facts of This Case?
The Opponent, Valentino S.p.A., is an Italian fashion company that was founded by Valentino Garavani in 1959. It owns and operates the well-known "Valentino" fashion brand, which sells its products worldwide including through its own boutiques in Singapore. Valentino S.p.A. owns 33 earlier registered trade marks that contain the name "Valentino", which it relied on in this opposition.
The Applicant, Matsuda & Co, is a Japanese company that applied to register the trade mark "MATSUDA & CO" in Singapore in October 2017 for various goods in Classes 18 and 25, including leather goods and clothing. Valentino S.p.A. filed an opposition against the registration of this mark in January 2018.
After an extensive exchange of evidence and submissions between the parties, the opposition was heard by the Intellectual Property Office of Singapore in June 2020. The key focus of Valentino's case was on two of its earlier registered trade marks: No. 32 in Class 18 and No. 33 in Class 25.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Applicant's "MATSUDA & CO" mark was confusingly similar to Valentino's earlier registered trade marks under Section 8(2)(b) of the Trade Marks Act, such that its registration should be refused.
2. Whether the use of the "MATSUDA & CO" mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of Valentino's earlier well-known marks, under Section 8(4) of the Act.
3. Whether the use of the "MATSUDA & CO" mark would be contrary to law, namely Section 8(7)(a) of the Act which prohibits the registration of a mark that is liable to be deceiving the public.
How Did the Court Analyse the Issues?
On the issue of confusing similarity under Section 8(2)(b), the Hearing Officer noted that when a business chooses a surname or combination of names as its trade mark, it runs the risk that others may be able to use similar names in good faith without infringing the trade mark owner's rights. The more common the name, the more likely this is to occur.
The Hearing Officer found that the names "Valentino" and "Matsuda" were both relatively common surnames, and that the addition of the term "& Co" to the Applicant's mark was a common business practice that did not significantly distinguish it. While the marks were not identical, the Hearing Officer concluded that the visual, aural and conceptual similarities between them were sufficient to give rise to a likelihood of confusion among consumers.
On the issue of unfair advantage and detriment under Section 8(4), the Hearing Officer accepted that Valentino's marks were well-known in Singapore. However, he found that the Applicant had not sought to deliberately ride on the coat-tails of Valentino's reputation, and that the use of a surname-based mark was not inherently detrimental to Valentino's marks.
Finally, on the issue of deception under Section 8(7)(a), the Hearing Officer found that while there was a likelihood of confusion, this did not necessarily mean that the public would be deceived into thinking the Applicant's goods originated from Valentino. He concluded that the use of "& Co" would indicate to consumers that Matsuda & Co was a separate business entity.
What Was the Outcome?
The Hearing Officer ultimately upheld Valentino's opposition under Section 8(2)(b), finding that the Applicant's "MATSUDA & CO" mark was confusingly similar to Valentino's earlier registered trade marks. As a result, the application to register the "MATSUDA & CO" mark was refused.
The Hearing Officer dismissed Valentino's grounds of opposition under Sections 8(4) and 8(7)(a), finding that the Applicant had not sought to unfairly benefit from Valentino's reputation, and that the use of "& Co" would sufficiently distinguish the marks to avoid public deception.
Why Does This Case Matter?
This case highlights the challenges that can arise when businesses choose to use surnames or name-based marks as their trade marks. While such marks can be valuable, they also come with the risk that others may be able to use similar names in good faith without infringing the trade mark owner's rights.
The decision provides useful guidance on how the Registrar will approach the assessment of confusing similarity under Section 8(2)(b) in such cases. It suggests that even where the marks are not identical, a relatively low threshold of similarity may be sufficient to establish a likelihood of confusion if the names are common ones.
The case also demonstrates the limitations of the well-known marks provisions in Section 8(4). Even where a mark is highly renowned, the Registrar may not find that the use of a similar surname-based mark necessarily takes unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier mark.
Overall, this decision serves as a useful reminder to trade mark owners, particularly those with surname-based marks, to carefully monitor the marketplace and be prepared to oppose potentially confusing third-party applications, even where the marks are not identical.
Legislation Referenced
Cases Cited
- [2007] SGIPOS 8
- [2009] SGHC 150
- [2010] SGCA 14
- [2012] SGIPOS 2
- [2016] SGCA 25
- [2017] SGCA 30
- [2018] SGIPOS 16
- [2019] SGIPOS 1
- [2020] SGIPOS 8
Source Documents
This article analyses [2020] SGIPOS 8 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.