Sebamed Strikes Again
19 December 2012
Founded in 1983 by medical doctor Heinz Maurer, the trademark Sebamed has gained international recognition and to date, products bearing the trademark are successfully marketed in more than 60 countries worldwide. It is no wonder, then, that the owner of the mark, Sebapharma GmbH & Co KG takes trademark protection very seriously. This is evidenced by the initiation of court proceedings in Australia and the European Union to protect its trademark. The latter action was brought against “Sebacin” which led to the Office of Harmonization for the Internal Market (OHIM) declaring that the registration of the said mark would result in confusion with the mark “Sebamed”.
The issue before the Hearings and Mediation Division of the Intellectual Property Office of Singapore (IPOS) this time was whether Cidore Holding Limited’s products under the trademark “Sewame” were taking unfair advantage of the reputation and popularity of the mark “Sebamed”. Sebapharma has been selling its products in Singapore since 1983. As a result of its long-term presence, it has acquired substantial reputation and goodwill in Singapore.
IPOS, however, dismissed Sebapharma’s opposition of the registration of the mark “Sewame” even though some of the products sold under the mark “Sewame” under Class 3 overlap with Sebapharma’s Class 3 & 5 products (general toiletries as well as products which are of a generally mild nature and thus cater to those with sensitive skin).
In a 34-paged decision, IPOS held that the mark “Sewame” does not only sound different from “Sebamed,” its mark as a whole is also different visually and therefore, there is no possibility of confusion to the public. IPOS analysed both marks thoroughly and found that, in addition to the word “Sewame”, the Sewame mark is represented with the following elements;
1. The dark blue flag;
2. The device of a white snowy mountain stretch; and
3. The Chinese characters
On the other hand, the mark “Sebamed” is a simple word mark, which is depicted in two colours to emphasise the second syllable, “Med”.
IPOS deemed the other elements in the mark “Sewame” as important as the word mark itself. The Chinese characters were found to be significant as they explain the origin of the trademark. “Sewame” is the transliteration of Chinese characters, which mean “snow perfection”.
The other two elements, the flag and the mountain also served to distinguish the “Sewame” mark from the “Sebamed” mark. Once visual dissimilarity was established, IPOS considered aural similarity and found none as the marks are pronounced as “se-ba-med” and “se-wa-may”. In fact, there will be additional pronunciation in the “Sewame” mark due to the 雪完美 Chinese characters, which would be pronounced as “xue-wan-mei” by the public who understand Chinese. For these reasons, IPOS held that the two marks are dissimilar.
In its decision, IPOS also considered the type of products sold under the brands, noting that customers would have a certain degree of thought and care when purchasing personal products which are used directly on their skin. Although “Sewame” and “Sebamed” products are both self-serve items and may be found stacked side-by-side on a shelf at a pharmacy, IPOS finally concluded that the marks are distinguishable by customers and dismissed the opposition.
Although the owner of “Sewame” was fortunate in this case, business owners are advised to select trademarks which are distinctive and to conduct an initial trademark search to ensure that there are no registered trademarks that are similar to theirs, as conflicts at the Trademark Office and at Court result in additional stress, hassle and unnecessary cost.
