Case Details
- Citation: [2021] SGIPOS 2
- Court: Intellectual Property Office of Singapore
- Date: 2021-02-15
- Judges: Ms Sandy Widjaja, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: MiChat Pte Ltd
- Defendant/Opponent: Xiaomi Inc.
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2005] SGHC 175, [2009] SGCA 13, [2010] SGHC 16, [2015] SGHC 216, [2015] SGIPOS 10, [2015] SGIPOS 14, [2016] SGIPOS 15, [2017] SGCA 30, [2017] SGIPOS 10, [2017] SGIPOS 12
- Judgment Length: 36 pages, 12,794 words
Summary
This case involves a trade mark opposition filed by Xiaomi Inc. against the registration of the "MiChat" trade mark by MiChat Pte Ltd in Singapore. Xiaomi, a major Chinese technology company, opposed the registration on several grounds, including likelihood of confusion with its existing "Mi" branded trade marks. The Intellectual Property Office of Singapore (IPOS) had to determine whether MiChat's trade mark application should be allowed to proceed to registration despite Xiaomi's objections.
What Were the Facts of This Case?
MiChat Pte Ltd, a Singapore-based company, applied to register the trade mark "MiChat" in multiple classes covering computer software, messaging services, and social networking services. The application was filed on 6 June 2018. Xiaomi Inc., a major Chinese technology company, subsequently filed a notice of opposition against the registration of the "MiChat" trade mark.
Xiaomi is part of the Xiaomi Corporation, a globally recognized internet conglomerate with smartphones and smart hardware connected by an Internet of Things (IoT) platform at its core. Xiaomi has numerous existing trade mark registrations in Singapore that incorporate the "Mi" prefix or suffix.
MiChat Pte Ltd was founded in Singapore in 2018 and its business plan was to launch a new messaging application or "App" for download onto mobile phones. The MiChat App has been available for download in Singapore and the region since April 2018 through the App Store and Google Play.
What Were the Key Legal Issues?
The key legal issues in this case were whether the registration of the "MiChat" trade mark should be refused on the following grounds under the Trade Marks Act:
- Likelihood of confusion with Xiaomi's earlier registered "Mi" trade marks under Section 8(2)(b);
- Unfair advantage or detriment to the distinctive character or repute of Xiaomi's earlier "Mi" trade marks under Section 8(4);
- Passing off under Section 8(7)(a); and
- Bad faith under Section 7(6).
How Did the Court Analyse the Issues?
On the issue of likelihood of confusion under Section 8(2)(b), the Registrar considered the similarity of the marks, the similarity of the goods/services, and the likelihood of confusion. She found that the "MiChat" mark was visually and aurally similar to Xiaomi's earlier "Mi" marks, and the goods/services were also similar or closely related. However, the Registrar ultimately concluded that there was no likelihood of confusion, as the differences between the marks (the additional "Chat" element) and the distinct branding and marketing of the respective products would be sufficient to distinguish them in the minds of consumers.
On the issue of unfair advantage or detriment under Section 8(4), the Registrar found that Xiaomi's "Mi" marks had a sufficient reputation in Singapore to satisfy the threshold. However, she determined that the use of "MiChat" would not take unfair advantage of, or be detrimental to, the distinctive character or repute of Xiaomi's marks. The Registrar noted that MiChat's use of its mark was not intended to ride on the coat-tails of Xiaomi's reputation, and the differences between the marks would prevent any unfair advantage or detriment.
On the issue of passing off under Section 8(7)(a), the Registrar found that Xiaomi had failed to establish the necessary goodwill in Singapore to succeed on this ground. While Xiaomi had a global reputation, the evidence did not demonstrate sufficient recognition of the "Mi" marks specifically in Singapore at the relevant time.
Finally, on the issue of bad faith under Section 7(6), the Registrar was not satisfied that MiChat had applied to register the "MiChat" mark in bad faith. She noted that MiChat had a legitimate business plan to launch a messaging app, and there was no evidence that MiChat had deliberately sought to target or ride on Xiaomi's reputation.
What Was the Outcome?
The Registrar dismissed Xiaomi's opposition and allowed MiChat's trade mark application to proceed to registration. While the "MiChat" mark was found to be similar to Xiaomi's earlier "Mi" marks, the Registrar determined that the differences between the marks and the respective branding and marketing of the products would be sufficient to prevent a likelihood of confusion in the minds of consumers.
Why Does This Case Matter?
This case provides useful guidance on the assessment of likelihood of confusion and unfair advantage/detriment under the Trade Marks Act, particularly in the context of similar marks incorporating a common element. The Registrar's analysis demonstrates that even where there is a degree of similarity between marks, other factors such as the overall impression created by the marks, the nature of the goods/services, and the marketing/branding of the products can be crucial in determining whether registration should be refused.
The case also highlights the importance of establishing sufficient goodwill and reputation in Singapore to succeed on a passing off claim, even where a brand has a strong global presence. Finally, the Registrar's findings on bad faith provide insight into the high threshold required to demonstrate that a trade mark application was filed with improper intentions.
This judgment will be a valuable reference for trade mark practitioners advising clients on the registration and protection of their brands, particularly where there are concerns about potential conflicts with earlier marks.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed)
Cases Cited
- [2005] SGHC 175
- [2009] SGCA 13
- [2010] SGHC 16
- [2015] SGHC 216
- [2015] SGIPOS 10
- [2015] SGIPOS 14
- [2016] SGIPOS 15
- [2017] SGCA 30
- [2017] SGIPOS 10
- [2017] SGIPOS 12
Source Documents
This article analyses [2021] SGIPOS 2 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.