Case Details
- Citation: [2021] SGIPOS 15
- Court: Intellectual Property Office of Singapore
- Date: 2021-11-23
- Judges: Ms Tan Mei Lin
- Plaintiff/Applicant: Weider Global Nutrition, LLC
- Defendant/Respondent: Morinaga & Co., Ltd
- Legal Areas: Trade marks and trade names – Invalidation
- Statutes Referenced: The Applicant relies on three grounds in the Trade Marks Act, Trade Marks Act
- Cases Cited: [2005] SGHC 175, [2016] SGCA 33, [2016] SGHC 131, [2016] SGHC 32, [2017] SGCA 30, [2020] SGIPOS 13, [2021] SGIPOS 15
- Judgment Length: 23 pages, 7,979 words
Summary
This case involves a dispute over the validity of a trade mark registration held by Morinaga & Co., Ltd ("the Proprietor") for the mark " 1" in Class 5 for various nutritional and dietary supplement products. Weider Global Nutrition, LLC ("the Applicant") filed an application to have the Proprietor's trade mark declared invalid on three grounds under the Trade Marks Act.
The Hearing Officer, Ms Tan Mei Lin, ultimately dismissed the Applicant's application, finding that the Applicant had failed to establish any of the three grounds of invalidation. The Proprietor's trade mark registration was therefore upheld as valid.
What Were the Facts of This Case?
The Proprietor, Morinaga & Co., Ltd, is a Japanese company established in 1899 that manufactures and sells a variety of confectionery, food, and health products. It registered the trade mark " 1" in Singapore in 2017 for various nutritional and dietary supplement goods in Class 5.
The Applicant, Weider Global Nutrition, LLC, is a US-based active nutrition company with over 70 years of expertise in nutritional products. The Applicant owns several "Weider" and "Weider"-formative trade marks in Singapore, including for non-alcoholic drinks and energy drinks.
In 2007, the Applicant acquired the "Weider" and "Weider"-formative trade marks from its associate company, Mariz Gestao E Investimentos Limitada ("Mariz"). However, Mariz retained ownership of the "IN" and "IN"-formative trade marks. Mariz had previously licensed the "Weider", "Weider"-formative, "IN", and "IN"-formative marks to a company called Rayo International Trading Company B.V. ("Rayo"), which in turn sub-licensed them to JWO Corporation ("JWO").
JWO had entered into a series of Licence and Technical Assistance Agreements ("LTAAs") with the Proprietor since 1983, which granted the Proprietor rights to use the "Weider" and "Weider"-formative marks, as well as the "IN" and "IN"-formative marks from 1998 onwards. The latest LTAA between JWO and the Proprietor is valid until 2028.
What Were the Key Legal Issues?
The Applicant relied on three grounds to seek a declaration of invalidity of the Proprietor's " 1" trade mark registration:
1. Section 23(3)(a)(i) read with Section 8(2)(b) of the Trade Marks Act - that the Proprietor's mark is similar to the Applicant's earlier trade marks and is to be registered for identical or similar goods, resulting in a likelihood of confusion.
2. Section 23(3)(b) read with Section 8(7)(a) of the Trade Marks Act - that the Proprietor's mark is liable to be prevented from registration or use due to the law of passing off.
3. Section 23(1) read with Section 7(6) of the Trade Marks Act - that the Proprietor's mark was applied for in bad faith.
How Did the Court Analyse the Issues?
On the first ground under Section 8(2)(b), the Hearing Officer conducted a step-by-step analysis of the similarity between the marks, the similarity of the goods, and the likelihood of confusion. She found that while the marks were visually and conceptually similar, the goods were not similar enough to result in a likelihood of confusion. The Applicant's earlier marks were for non-alcoholic drinks and energy drinks, while the Proprietor's mark covered a broader range of nutritional and dietary supplements. The Hearing Officer therefore concluded that this ground of invalidation was not made out.
On the second ground under Section 8(7)(a) for passing off, the Hearing Officer noted that the Applicant had to establish the existence of goodwill, misrepresentation, and damage. However, the evidence showed that the Applicant's use of its "Weider" marks was primarily in relation to non-alcoholic drinks, while the Proprietor's use was for nutritional supplements. The Hearing Officer found that the Applicant had failed to show that the public would be deceived into believing the Proprietor's goods originated from the Applicant.
Finally, on the third ground under Section 7(6) for bad faith, the Hearing Officer examined the Applicant's arguments and the Proprietor's evidence. She found that the Proprietor's use of the "IN" and "IN"-formative marks was authorized through the LTAA with JWO, and that the Applicant had not shown the Proprietor acted in bad faith in obtaining the registration.
What Was the Outcome?
The Hearing Officer dismissed the Applicant's application for a declaration of invalidity. She found that the Applicant had failed to establish any of the three grounds of invalidation under the Trade Marks Act. As a result, the Proprietor's trade mark registration for " 1" remains valid.
Why Does This Case Matter?
This case provides guidance on the application of the key invalidation grounds under the Trade Marks Act, particularly the test for likelihood of confusion under Section 8(2)(b) and the requirements for establishing passing off under Section 8(7)(a).
The decision highlights that even where there is visual and conceptual similarity between marks, the Hearing Officer will still need to carefully consider the similarity of the goods or services covered by the marks. A broad range of goods may not be considered similar enough to result in a likelihood of confusion.
The case also demonstrates the importance of establishing clear ownership and licensing arrangements for trade marks, as this can impact the ability to successfully challenge a registration on grounds of bad faith under Section 7(6). The Hearing Officer placed significant weight on the Proprietor's authorized use of the "IN" and "IN"-formative marks through its LTAA with JWO.
Overall, this judgment provides a useful precedent for trade mark owners and practitioners navigating complex trade mark disputes and invalidation proceedings before the Intellectual Property Office of Singapore.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed)
Cases Cited
- [2005] SGHC 175
- [2016] SGCA 33
- [2016] SGHC 131
- [2016] SGHC 32
- [2017] SGCA 30
- [2020] SGIPOS 13
- [2021] SGIPOS 15
Source Documents
This article analyses [2021] SGIPOS 15 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.