Background
Company A is a media company in Singapore with commercial interests in television, radio broadcasting and print publishing. The company operates an English news channel and is the registered proprietor of the ‘HHH’ Mark in Class 35 (Advertising; Business Management; Business Administration and Office Functions) of the Nice Trade Mark Classification System. Company B is a media and entertainment company which provides direct-to-home satellite television services in Malaysia and Brunei, amongst others. Company B applied to register a mark, the ‘BBB’ mark, which was allegedly similar in design to that of Company A, who then relied on sections 8(2) (b) and 8(3) of the Trade Marks Act to oppose Company B’s application. However, the Trade Marks Registrar concluded that there was a low likelihood of confusion between the marks. Company A then appealed to the High Court against the Registrar’s decision.
Advice
In coming to a conclusion, the Singapore High Court took into consideration sections 8(2) (b) and 8(3) of the Trade Marks Act. Under section 8(2) (b) of the Trade Marks Act, the following issues were determined:
- Whether the ‘BBB’ mark was similar to the ‘HHH’ mark:
o The High Court considered if the two marks were visually, aurally and conceptually similar. It was held that they were visually similar as they both shared the same general layout, colour and had additional features on the right side of the mark. As such, the High Court concluded that the marks were conceptually similar.
- Whether the ‘BBB’ mark was to be registered for goods or services identical with or similar to those for which the ‘HHH’ mark was protected
o It was held that Class 35 services are generally those that ‘directly assist in the operation or management of the commercial enterprise of another entity’, and that both parties’ services in Class 35 were similar to one another.
- Whether there was a likelihood of confusion on the part of the public:
o The High Court held that although both marks were visually and conceptually similar, the target audience of the services were commercial enterprises seeking publicity services and/or business organisational services. They were not ordinary or retail customers, and would thus be more careful when choosing their service providers.
Under section 8(3) of the Trade Marks Act, the following issues were considered:
- Whether the ‘HHH’ mark was well known in Singapore:
o The High Court held that the ‘HHH’ mark had been used extensively since its inception in Singapore, and taking into consideration Company A’s high viewership, the ‘HHH’ mark satisfied the requirements of being ‘well known’ under the Act.
- Whether use of the ‘BBB’ mark in relation to the goods or services for which it is sought to be registered would indicate a connection between those goods and services and Company A:
o The High Court held that although there was an overlap of the services of both organisations, it did not mean that there would be a connection between Company A and Company B’s services. Even though the two marks were similar, the degree of similarity in the context of the intended consumers was such that a connection would not be formed.
- Whether there existed a likelihood of confusion on the part of the public because of such use:
o There was no real likelihood of confusion as held under section 8(2) (b), as such the same finding would apply in relation to section 8(3).
- Whether Company A’s interests were likely to be damaged by such use:
o Following the finding that there was no likelihood of confusion, the High Court did not need to consider whether Company A’s interests were likely to be damaged in this case.
As such, Company A did not meet the requirements of sections 8(2) (b) and 8(3) of the act and the appeal was dismissed.
Lessons learnt
- Ensuring that the respective marks are similar might be insufficient as external factors negating the likelihood of confusion are just as important. For instance, in this case, emphasis was placed on the target audience and the appeal was dismissed despite it being held that both marks were similar.
- In coming to a conclusion as to whether two marks are similar, much will depend on the type of marks in question and the nature of the goods and services involved.
- Due to the subjective perceptions of similarities and differences between two marks, it may be advisable to consult an experienced IP professional or lawyer before establishing any relevant cause of action.