TM Infringement

8/10/2019 TM Infringement

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Infringement

Definition of "Use"

S2(4) TMA:References in this Act to use (or any particular description of use) of a trade mark, or of a sign

identical with, similar to, or likely to be mistaken for a trade mark, include use (or that description of use)

otherwise than by means of a graphic representation.

S27(4) TMA:(4) For the purposes of this section and sections 28, 29 and 31, a person uses a sign if, in

particular, he

(a) applies it to goods or the packaging thereof;

(b)offers or exposes goods for sale, puts them on the market or stocks them for those purposes under

the sign, or offers or supplies services under the sign;

(c) imports or exports goods under the sign;

(d)uses the sign on an invoice, wine list, catalogue, business letter, business paper, price list or other

commercial document, including any such document in any medium; or

(e)

uses the sign in advertising.

Types of infringing acts

Marks Goods Need confusion?

S27(1) A person infringes a registered trade mark if, without

the consent of the proprietor of the trade mark, he

uses in the course of trade a sign which is identical

with the trade mark in relation to goods or services

which are identical with those for which it isregistered.

Identical Identical No

S27(2) A person infringes a registered trade mark if, without

the consent of the proprietor of the trade mark, he

uses in the course of trade a sign where because

(a) the sign is identical with the trade mark and is

used in relation to goods or services similar to those

for which the trade mark is registered; or

(b) the sign is similar to the trade mark and is used inrelation to goods or services identical with or similar

to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of

the public.

Identical

Similar

Similar

Identical

or similar

Yes

Yes

Framework:

Was infringer acting without consent?

Was the offending sign used in the course of trade?

Are marks identical or similar?

Are goods/services identical or similar?

If necessary, is there a likelihood of confusion?

What remedies?


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Origins Natural Resources test

Used in the trade mark sense and compared on a mark for mark basis (British sugar)

Use in the course of trade:

As a threshold issue, it must first be shown that the offending sign was used in the course of trade as

trademark (i.e. as a badge of origin) as opposed to purely decorative or descriptive purposes. (Hai Tong vVentree (SGCA) at [17])

A defendant who through websites and brochures offered goods for sale under an infringing sign

and who used the infringing sign on catalogues and commercial documents and advertising in the

case Caterpillar incwould have used the mark in the course of trade

The preference for this stricter approach over the broad community approach taken in City Chain

was recently reaffirmed by the SGCA in Hai Tong v Ventree(at [17]).

In Hai Tong, the SGCA found (at [20]) that the allegedly offending sign was used as a trademark as

the Rose Lady sign was prominently displayed on the packaging of the allegedly infringing

products. In City Chain, the SGCA (at [38]) found that the allegedly offending sign was used for purely

decorative purposes due to the lack of uniformity on how the Solvil flowers were represented on

the watches

Wagamamacourt considered that another restaurant called Rajamama had a similar sounding

name and look in deciding there was infringement and held that customers might be deceived

Must use be "trade mark use"?

TMs Use in the course of trade must function as a badge of origin, and not descriptive or badge of

support:

SG: City Chain v Louis Vuitton [2010] CA***** (applies to well-known TM also)

Held, at *37+, that we are conscious that a sign may have several functions, one of which is as a badge

of origin... (or for) descriptive purposes. For the TMA, use must be as a badge of origin, the issue

which is a finding of fact that is fact-sensitive and determined on a case-by-case basis.

At [38]: So, if it is used in any other way than as a TM, eg, predominantly as a decorative symbol, then

it will not be considered an infringing use of a TM as the alleged infringing copy was NOT a TM

Thus on the facts, use of the Solvil Flower is decorative, and not indicative of origin.

Singapore positioninfringing use must be TM use before there can be a TM infringement

Used as a badge of originbut Susanna Leong thinks that SGCA endorsed EU approach to

recognize other possible functions of a TM

Arsenal v Reed

It is important to note that the ECJ is not concerned with whether the use complained about is trade mark

use. The consideration is whether the third party's use affects or is likely to affect the functions of the

trade mark. An instance of where that will occur is given, namely where a competitor wishes to take unfair

advantage of the reputation of the trade mark by selling products illegally bearing the mark. That would

happen whether or not the third party's use was trade mark use or whether there was confusion.

The material consideration was whether the use complained of was liable to jeopardise the guarantee of

origin, not whether the use was trade mark use

L'Oreal v Bellure

Functions of a TM also include guaranteeing the quality of the goods or services in question and

those of communication, investment or advertising


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Expansion of TM owners exclusive right in a TM to go beyond a guarantee of trade origin closer

to law of unfair competition

Even though there was no likelihood of confusion, Bellure's cheap perfume imitations were

considered to ride on the coat-tails of LOreal

Can be verbal usein the course of trade

Compare whether marks are identical or similar

Can be tricky because of the concept of "imperfect recollection" in determining whether an almost

identical sign is identical to the RTMblurs what is identical and similar

Are the marks identical?

The test of whether a sign is identical with a registered mark under s 27(1) of the Act entails a strict

interpretation. Minor differences would take the case outside of the definition of identical. (City Chain vLV at [39]; Nation Fittings at [85])

The protection accorded under this provision cannot be extended beyond the situations for which

it was envisaged, in particular, to those situations more specifically covered by another provision,

e.g., s 27(2)(b) of the Act on similar goods or services or where the sign is similar

Such a strict approach is taken with regard to s 27(1) of the Act because once a case is shown to

fall within that provision, protection ipso facto follows, irrespective of whether there is proof of

likelihood of confusion on the part of the public.

In City Chain, the SGCA found (at [40]) that given the absence of a distinctive circle in the centre of

the Solvil Flower, the Solvil Flower and the Flower Quatrefoil mark were not identical for purposesof s 27(1) of the Act.

In Mitac International, the mio mark was used by both parties. Although there was aural

similarity, there was no visual identity as the m in the Plaintiffs mark was highly stylised and

distinctive.

In LTJ Diffusion: a sign is identical to a trade mark where it reproduces, without any modification or

addition, all the elements constituting the trade mark orwhere, viewed as a whole, it contains

differences so insignificant that they may go unnoticed by an average consumer

Are the marks similar? [also refer back to the similarity factors in the normal opposition proceedings

above for visual/aural/conceptual similarity] the marks are to be considered without regard to any added or extraneous matter factors, done

mark-for-mark

In considering the similarity between the marks, an assessment of their visual, aural and

conceptual similarities is undertaken (Hai Tong v Ventree at [39])this is a question of fact

This is not a mechanistic formula and the law does not require all 3 of be made out before finding

the marks similar. The relative importance of each aspect of similarity will depend on the

circumstances. (Hai Tong at [40(a)])

The similarity between the marks are assessed as a whole without taking into account external matter

and circumstances. (Hai Tong at [40(b)]; Caterpillar Inc at [55])

Note: This is unlike the position when assessing whether there is a likelihood of confusion, where it


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will generally be appropriate to have regard to other relevant circumstances (see below).

Similarity is assessed from the viewpoint of the average consumer who would exercise some care and a

measure of good sense in making his purchases, not that of an unthinking person in a hurry. (Hai Tong at

[40(c)]; Polo at [34])

Note: This viewpoint is the same as that which is assumed when assessing the separate but related

question of whether there is likelihood of confusion.

Further, the average consumer has imperfect recollection. As such, the 2 contesting marks are not to be

compared side by side and examined in detail for the sake of isolating particular differences. (Hai Tong at

[40(d)])

Instead, the court will only consider the general impression likely to be left by the essential or

dominant features of the marks on the average consumer.

Sub-arguments That first syllable is of great importance in determining similarity and thus marks can be

distinguished However as the marks are both being applied to similar businesses, the court will not consider the

visual aspects along but also the sound significance of the names and general impression (de

Cordova v Vick)

Cases where no similarity was found

The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd

Polo vs. POLO PACIFIC The fact that polo is a common English word weighed against finding

similarity. POLO PACIFIC had a special font and design and the only similarity in design was that one wordwas common to both marks. No similarity.

Mitac International Corp v Singapore Telecommunications Ltd and another action

Mio mark used by both parties - From the perspective of an average customer, the parties mio marks

were not similar. Their script and font were clearly not visually similar. Apart from the fact that the m in

the plaintiffs trademarks was highly stylised while the m in the marks complained of was very plain, the

letters in the Plaintiffs mio were all of the same size, whereas the letters in the Defendants mio were

of different sizes, namely featuring an elongated I. Furthermore, the placement of the letters in the

Plaintiffs mio was on the same level plane, whereas in the Defendants mio the letters all sat on

different levels.

Cases where similarity was found

City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier

Flower Quatrefoil mark vs. Solvil Flower The Flower Quatrefoil mark was essentially made up of two

shapes, a circle and a petal shape. The circle was surrounded by four identically- shaped petals arranged

evenly around the circle at 90 degree angles from each other

The Solvil Flower was similar to the outline shape of the Flower Quatrefoil mark: there were four petals

arranged at 90 degree angles from each other and the radiated from a common centre. The onlydifferences were that there was a lack of a distinctive circle in the centre of the Solvil Flower and that the

shape of the petals on the Solvil Flower were minutely different from the from the shape of the petals on

the Flower Quatrefoil mark.

The Court held that looking at the two signs as a whole, there were sufficient similarities to conclude that


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they are similar for purposes of s 27(2)(b) of the Act

Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International)

CAT vs. CATPLUS The Court held that the marks were essentially word marks and that the significant

and prominent visual and aural part of the plaintiffs mark was the word CAT, even though some of the

CAT marks were coupled with a triangle device beneath the A in the plaintiffs mark. Thus the offending

marks were similar to the plaintiffs visually and aurally.The additional inscription of CATPLUS INC, USA at one corner was in small-sized print and is hardly

noticeable. The inscription did not appear in every instance where CATPLUS was used. In any event, even

if anyone noticed the inscription, the prominent word was CAT

Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp)

Carefree vs. Careree - The Court found that Carefree and Careree were visually similar. Both marks

began with the word Care and end with ree, with only a missing f to distinguish the first and the

second. In the context of multilingual Singapore, it was pertinent to note that as a general rule, it was

assumed that non-English-speaking audiences will pay little attention to verbal or textual, as opposed tovisual references

Comparsion of goods or services = identical or similar

Are the goods or services identical?

In determining whether the goods/services are identical, the first reference point is the specification of

goods/services.

If a comparison with the specification shows that the goods/services are not identical, proceed to

consider if they are similar

Once it has been determined that the goods are identical from a comparison of the specifications there is

no need to consider any other factor (Richemont International v Goldlion Enterprise at [18]).

Goods and services will be regarded as identical where they are registered or to be registered in the

same class and specification in opposition proceedings, while in the infringement context it will be

permissible to have regard to the classification in which the allegedly infringing item or service would

have been inserted had the alleged infringer sought registration of his mark. [Staywell]

Are the goods or services similar?

In determining the similarity of goods, the comparison is to be made between the alleged infringing goods

and the products in respect of which the trade mark is registered for (and NOT the actual goods of the

trademark owner). (Sarika v Ferrero at [46])

This is in accordance with the wording of the provision

The consideration of whether the goods are similar should take into account the following factors (perJacob J in British Sugar Plc applied in Richemont International):

1. the uses of the respective goods or services;

2. the users of the respective goods or services;

3. the physical nature of the goods or acts of service;


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4. the trade channels through which the goods or services reach the market;

5. in the case of self-serve consumer items, where in practice they are respectively found or likely to

be found in supermarkets and in particular whether they are, or are likely to be, found on the same

or different shelves;

6. the extent to which the respective goods and services are in competition with each other: that

inquiry may take into account how those in trade classify goods, for instance whether market

research companies, who of course act for industry, put the goods or services in the same or

different sectors.

Jacob J's factors in British Sugar must not be regarded as requirements that must all be satisfied before the

goods can be treated as similar. (Johnson & Johnson at [18])

If all the circumstances are taken into account, the better view is that the goods are indeed similar

and it is necessary to consider whether there is a likelihood of confusion as a result of the similarity.

Is there a likelihood of confusion?

The plaintiff must show that there exists a likelihood of confusion as to the origin of his goods and the

defendants goods. The likelihood of confusion must be a direct consequence of the identity or similarity

between the marks and between the goods or services to which they are applied. (Hai Tong v Ventree at

[73])

Confusion in this context extends to the situation where the consumer mistakenly assumes some

kind of economic link or connection between goods bearing the registered mark and those bearing

the allegedly infringing sign. (at [73])

There are at least 2 aspects to the element of confusion: (1) mistaking one mark for another, so

that the relevant segment of the public may not even perceive that there are two distinct marks;

(2) where the relevant segment of the public perceives that the contesting marks are different, butremain confused as to the origin which each mark signifies. (at [74])

o It is not sufficient that the relevant segment of the public would recognise similarities

between the contesting marks if there is no likelihood of confusion as to origin ensuing (at

[75]).

Unlike the inquiry into similarity, which is a somewhat objective inquiry direct at the features of the

marks in question, the inquiry into the likelihood of confusion focuses on the effect that each

similarity is likely to have on the relevant segment of the public. (at [76])

The greater the similarities, the greater the likelihood of confusion. (Hai Tong at [85(c)])

As earlier observed, the comparison of similarity between two contesting marks is done without

regard to external circumstances. However, this is not the case when assessing the extent to whichthe goods bearing the contesting marks are similar and the likelihood of confusion among the

relevant segment of the public. (at [85](c))

o In assessing the degree of similarity, it may be appropriate to have regard to steps that have

been taken to differentiate the goods or services. (at [85(c)])

Note: where goods or services in question are identical, then extraneous factors relating to that

element will not rise for consideration in assessing the likelihood of confusion. This follows from

the simple fact that once an element is found to be identical, it ceases to be material to inquire

whether it is similar, and the ways in which it may be differentiated. (at [87])

See also factor [94(c)] below

The test is whether a substantial portion of the relevant segment of the public is likely to be confused.While not amounting to a majority, the relevant segment of the public must go beyond a de minimis

level. (Hai Tong at [78]; Sarika at [57]).


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Where a product is commonly available and purchased by the general public, the relevant segment of the

public would be the general public, though the court will try to ascertain who the target consumers really

are (Hai Tong at [95]; National Fittings at [102]).

The average consumer need not, depending on the specific facts, necessarily mean the general public.

(National Fittings at [97])

More specialized products might only be purchased (if at all) by a more specific cross section of the

public (which will itself conceivably vary in size, depending on how specialised the product is,together with allied factors such as the price charged). (National Fittings at [97])

In National Fittings, the SGHC found (at *103+) that the average consumer of pipe fittings such as

those produced by the plaintiff and Nation Fittings would not potentially be just any person but,

rather, plumbers and contractors.

While it is permissible to have regard to extraneous factors, this does not include factors which are

inconsistent with the legislative framework (because they impermissibly curtail the rights granted to the

registered proprietor of a trademark) (Hai Tong at [87]).

For example, it is not permissible to take into account differences in the colour of the packaging

that happens to have been used. This is because a proprietors exclusive right to use his trademarkdoes not usually depend on the type or colour of packaging on which it is applied. If a later sign

were to be regarded as dissimilar because it has been applied on a product that bears a different

colour of packaging, this could curtail the right of the proprietor of the registered mark to use his

mark with packaging of that colour. (at [85(c)(iv)])

Note: ...It may well be, in the final analysis, that the approach set out above, when applied in real

cases, might often prove to be a distinction without a difference when compared to the global

assessment approach... but we consider it important to retain the conceptual clarity and to ensure

that the analysis is carried out in a manner that is faithful to the statutory provisions that are

applicable here (at *96+)

Factors which may aid in the assessment of whether there is a likelihood of confusion include (Hai Tong at

[94]):

the disparity in the prices of the goods or services concerned, where this goes towards drawing out

the real and substantive differences between them or towards highlighting the different degrees of

care likely to be applied by the prospective customer in each instance

o As observed by Jacob LJ in Reed Executive plc v Reed Business Information Ltd at *78+, a fifty

pence purchase in the station kiosk will involve different considerations from a once-in-a-

lifetime expenditure of 50,000

the nature of the customer and of the article in question;

o E.g. for medicinal or highly technical products, it would be legitimate for the court to have

regard to the fact that because of their nature, a higher degree of similarity between the

contesting marks might have to be shown to warrant a finding of likely confusion than when

dealing with products that demand less fastidiousness or care on the part of the relevant

segment of the public. (Hai Tong at [85(c)(i)])

o see also factor (g)

the degree of similarity between the contesting marks and the overall impression given by them;

o It would be legitimate to consider the contesting marks and the degree of similarity that is

found to exist. As a self-evident proposition, the greater the similarity, the more likely that

confusion may ensue. (Hai Tong at [85(c)(iii)])

the imperfect recollection of the average consumer, because this is directly related to the

likelihood of confusion in this group;

the locations at which the goods or services concerned are sold or offered

o Because this might aid in assessing the real similarities or differences between the goods or

services as well as between the respective groups of customers that each category of goods

or services might attract;


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the steps taken by the defendant to differentiate his goods or services from those of the

registered trade mark proprietor, because this goes directly to the degree of similarity or difference

between the goods or services in question; and;

the importance of the goods or services concerned to the consumer.

o As observed by the European General Court in Trubion, medicinal products, whether or not

acquired on prescription, and dietetic products in general may be regarded as products to

which consumers who are reasonably well-informed and reasonably observant and

circumspect will pay a high degree of attention. It goes without saying that this category ofproducts is not closed.

The factors relating to the (i) similarity between the goods or services concerned, (ii) the similarity

between the contesting marks and (iii) the characteristics of the relevant segment of the public must be

assessed in an interdependent way. (Hai Tong at [97])

In Sarika, the court had regard to the high degree of similarity between the contesting marks and

the proximity in the nature of the goods concerned as consumable foodstuff in assessing the

likelihood of confusion.

Some arguments

Evidence of confusion on the part of customers is relevant Argue there was implied licence to uselook at conduct of parties

Representation or inducement to use mark or consent

in infringement proceedings, the whole of the actual context of use will be relevant to the confusion

inquiry.

Similarity of goods or services - in the infringement context it will be permissible to have regard to the

classification in which the allegedly infringing item or service would have been inserted had the allegedinfringer sought registration of his mark.

Defences to infringement

S Provision Remarks

23

(1)

(4)

(5)

Invalidity of registration

The registration of a trade mark may be declared invalid on the ground thatthe trade mark was registered in breach of section 7.

The registration of a trade mark may be declared invalid on the ground of

fraud in the registration or that the registration was obtained by

misrepresentation.

An application for a declaration of invalidity may be made by any person, and

may be made either to the Registrar or to the Court, except that

(a) if proceedings concerning the trade mark in question are pending in

the Court, the application must be made to the Court; and

(b) if in any other case the application is made to the Registrar, he may at

any stage of the proceedings refer the application to the Court.

24(1) Acquisecence


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Where the proprietor of an earlier trade mark or other earlier right has

acquiesced for a continuous period of 5 years in the use in the course of

trade of a registered trade mark in Singapore, being aware of that use, there

shall cease to be any entitlement on the basis of that earlier trade mark or

other right

(a) to apply for a declaration that the registration of the later trade mark

is invalid; or

(b) to oppose the use of the later trade mark in relation to the goods or

services in relation to which it has been so used, unless the

registration of the later trade mark was applied for in bad faith.

28(1)(a) Use of own name in accordance with honest practices in industrial and

commercial matters: s28(1)(a)

28(1)(b) Use of a sign to indicate quality, purpose other characteristic of

goods/services in accordance with honest practices in industrial and

commercial matters

28(1)(c) Use of sign to indicate the intended purpose of goods (in particular asaccessories or spare parts) or services in accordance with honest practices in

industrial and commercial matters

Use of "Volvo" can constitute prima facie infringement even when used with

other words or material addedalthough using "Volvo" mark was necessary

to indicate the relevant service offered, the Df was deprived of that benefit

because its use of the TM was likely to create an impression of a "continuing

commercial connection" with the claimant"must be in accordance with

hoest practices" [Aktiebolaget v Heritage]

S28(2) Prior UseS28(4) Person who uses a registered trade mark does not infringe the trade mark if

such use

(a) constitutes fair usein comparative commercial advertising or promotion;

(b) is for a non-commercialpurpose; or

(c) is for the purpose of news reportingor news commentary

29 (1) Notwithstanding section 27, a registered trade mark is not infringed by

the use of the trade mark in relation to goods which have been put on the

market, whether in Singapore or outside Singapore, under that trade mark

by the proprietor of the registered trade mark or with his express or impliedconsent (conditional or otherwise).

(2) Subsection (1) shall not apply where

(a) the condition of the goods has been changed or impaired after they have

been put on the market; and

(b) the use of the registered trade mark in relation to those goods has caused

dilution in an unfair manner of the distinctive character of the registered

trade mark.

Parallel

import

"Keep your baby dry" a descriptive termusing it is not infringement although "Baby-dry" is a distinctive

term

Oppostion

- grounds of bad faiths24(1) TMA


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if ____ had an existing registered mark, _____ could raise an objection under s

COUNTER CLAIM to revoke TM

Revocation of registration

22.(1) The registration of a trade mark may be revoked on any of the followinggrounds:

(a)

that, within the period of 5 years following the date of completion of the registration procedure, it hasnot been put to genuine use in the course of trade in Singapore, by the proprietor or with his consent,

in relation to the goods or services for which it is registered, and there are no proper reasons for non-

use;

(b)that such use has been suspended for an uninterrupted period of 5 years, and there are no proper

reasons for non-use;

(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the

trade for the product or service for which it is registered;

a. trade mark which has become a common name in the trade as one which *has come+ to be

used as a description of the product itself

(d)

that, in consequence of the use made of it by the proprietor or with his consent in relation to the goodsor services for which it is registered, it is liable to mislead the public, particularly as to the nature,

quality or geographical origin of those goods or services.

the key question in relation to ss 22(1)(a) and 22(1)(b) would be whether there has been use of the

Opposed Mark as a trade mark which can be considered to be genuine. [Wing Joo Loong]

the concept of genuine use was closely linked to the function of a trade mark and the purpose of

registering a trade mark

use receipts to prove

Documents

TM Infringement