Case Details
- Citation: [2023] SGIPOS 11
- Court: Intellectual Property Office of Singapore
- Date: 2023-05-10
- Judges: Principal Assistant Registrar Tan Mei Lin
- Plaintiff/Applicant: Novel Brands USA LLC
- Defendant/Opponent: ZERODENSITY YAZILIM ANONIM SIRKETI
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2001] SGHC 328, [2017] SGCA 30, [2023] SGIPOS 11
- Judgment Length: 19 pages, 4,616 words
Summary
This case involves a trade mark opposition filed by ZERODENSITY YAZILIM ANONIM SIRKETI (the "Opponent") against the registration of the trade mark " " (the "Subject Mark") by Novel Brands USA LLC (the "Applicant"). The Opponent relied on the ground of passing off under Section 8(7)(a) of the Trade Marks Act 1998 to prevent the registration of the Subject Mark.
The key issue was whether the Opponent had established the necessary elements of passing off, namely goodwill, misrepresentation, and damage. The Intellectual Property Office of Singapore (IPOS) found that the Opponent had demonstrated sufficient goodwill in its "Reality Engine" software, but ultimately ruled in favor of the Applicant, finding that the Opponent failed to establish the elements of misrepresentation and damage.
What Were the Facts of This Case?
The Applicant, Novel Brands USA LLC, is a company incorporated in Delaware and has filed the Subject Application for the trade mark " " in Singapore in respect of "Downloadable and recorded computer software" in Class 9. The Applicant has worldwide applications and registrations for the Subject Mark, with the vast majority bearing the same specification as the Subject Application.
The Opponent, ZERODENSITY YAZILIM ANONIM SIRKETI, is a company incorporated in Turkey and is in the business of developing broadcasting products and solutions, including a broadcasting compositing system offered under the sign "Reality Engine". The Opponent has been continuously partnering with its non-exclusive distributor in Singapore, Cgangs International Pte. Ltd., to offer its goods and services in Singapore since 2018.
One notable event where the Opponent collaborated with Cgangs was the 2019 Countdown Show, which aired on Mediacorp's Channel 5 in Singapore. For this event, the Opponent's "Reality Engine" hardware and software were used to create a photo-realistic, three-dimensional mermaid seen "swimming" around the arena during one of the live performances.
What Were the Key Legal Issues?
The key legal issue in this case was whether the Opponent had established the necessary elements of passing off under Section 8(7)(a) of the Trade Marks Act 1998 to prevent the registration of the Applicant's Subject Mark.
Specifically, the Opponent had to prove the following three elements of passing off:
- Goodwill: That the Opponent has goodwill attached to its "Reality Engine" goods/services in the minds of the relevant purchasing public in Singapore.
- Misrepresentation: That the Applicant's use of the Subject Mark is likely to lead the public to believe that the Applicant's goods/services are those of the Opponent's.
- Damage: That the Opponent is likely to suffer damage as a result of the Applicant's misrepresentation.
How Did the Court Analyse the Issues?
The IPOS first considered the issue of goodwill. The relevant date for assessing goodwill was 7 March 2019, which was the priority date claimed by the Applicant for the Subject Application. The IPOS found that the Opponent's evidence, including invoices and correspondence with its Singaporean distributor Cgangs, demonstrated that the Opponent had used the "Reality Engine" sign in relation to software in Singapore prior to the relevant date.
The IPOS rejected the Applicant's argument that the Opponent's goodwill was limited to a "system" rather than software, finding that the evidence clearly showed the Opponent's use of "Reality Engine" in respect of software. The IPOS also noted that the Opponent's customer, Cgangs, referred to the Opponent's software as "Reality Engine".
However, the IPOS found that the Opponent failed to establish the element of misrepresentation. The IPOS held that the Applicant's use of the Subject Mark for its software products, which were still in the development stage and had not yet been marketed publicly, was unlikely to lead the relevant public to believe that the Applicant's goods were those of the Opponent's. The IPOS also found that the Opponent and the Applicant were not in competitive fields, relying on the English case of Teleworks Ltd v Telework Group Plc.
Finally, the IPOS concluded that the Opponent also failed to establish the element of damage, as there was no evidence that the Applicant's use of the Subject Mark had caused or was likely to cause any damage to the Opponent's goodwill.
What Was the Outcome?
The IPOS ruled in favor of the Applicant, Novel Brands USA LLC, and dismissed the Opponent's opposition. The IPOS found that while the Opponent had established goodwill in its "Reality Engine" software, it failed to prove the elements of misrepresentation and damage required for a successful passing off claim under Section 8(7)(a) of the Trade Marks Act 1998.
Why Does This Case Matter?
This case provides valuable guidance on the application of the passing off doctrine in the context of trade mark oppositions. It highlights the importance of carefully establishing all three elements of passing off – goodwill, misrepresentation, and damage – even if the first element of goodwill is satisfied.
The case also underscores the principle that a party's commercial decision on what goods and services to register its trade mark for does not necessarily reflect the full scope of its business activities and goodwill. The IPOS emphasized that a business should not be assumed to not trade in certain goods and services merely because it has not sought to register its mark for those goods and services.
Furthermore, the IPOS's analysis on the issue of misrepresentation, particularly the consideration of whether the parties are in competitive fields, offers insights for practitioners on the assessment of this element in passing off cases. The reference to the Teleworks case highlights that the degree of the opponent's goodwill is a relevant factor in determining the likelihood of misrepresentation, even if the opponent has established some level of goodwill.
Legislation Referenced
Cases Cited
- [2001] SGHC 328
- [2017] SGCA 30
- [2023] SGIPOS 11
- Teleworks Ltd v Telework Group Plc [2002] RPC 27
Source Documents
This article analyses [2023] SGIPOS 11 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.