Singapore: A-Star Education Discovery Camps Pte. Ltd. v. Discovery Communications, LLC

31 May 2020

Singapore: A-Star Education Discovery Camps Pte. Ltd. v. Discovery Communications, LLC

In a decision billed by the hearing registrar as a David and Goliath clash, Discovery Communications, (the opponent), a corporate media giant of Discovery Channel fame, brought opposition proceedings against the application of A-Star-Education Discovery Camps Pte. Ltd. (the applicant) to register the mark Discovery Camps mark shown right (the application mark) (Singapore Trade Mark No. 40201714407Q).

The Principal Assistant Registrar (PAR) of the Intellectual Property Office of Singapore held that the opposition failed on each of the grounds raise

The application mark

The goods and services covered by the application mark include those in i) Class 9 (including educational materials in various electronic media); ii) Class 16 (including educational materials in printed form); and iii) Class 43 (including childcare services and holiday camps services).

 

The opposition marks

The opponent cited relied upon several of its earlier registered trade marks to oppose the application mark as follows (the opposition marks):

 

Opponent’s grounds

Similar marks and goods

Distinctiveness. The PAR held that there was a low level of overall distinctiveness in the word “DISCOVERY”, given that i) the meaning of the word has some nexus to the goods concerned; and ii) there are many other registered trademarks in use containing the said word.

Similarity of marks. Embarking on a detailed examination of the visual, aural and conceptual similarity of the competing marks, the PAR found the competing marks to be on the whole more similar than dissimilar, save that items 1, 8, and 9 of the opposition marks were visually more dissimilar.

The PAR’s observations on visual similarity bear noting. The PAR held that the word “DISCOVERY” in items 2 to 7 of the opposition marks was dominant as it was coupled with a suffix that is only descriptive of the services rendered. This was sufficient to make the said opposition marks visually similar to the Discovery Camps logo, notwithstanding the stylization in the latter. On the other hand, i) items 1 and 9 contained a device (the elided globe on the letter D); and ii) item 8 contained the word THE, both of which made the said marks dissimilar to the application mark.

Similarity of goods and services. The PAR found that there is some similarity between the goods of the competing marks in Classes 9 and 16. Moreover, there was meaningful and complementary overlap between the applicant’s Class 43 services and the opponent’s Class 39 services.

Likelihood of confusion. Notwithstanding her observations above, the PAR held that opposition would fail as there was no likelihood of confusion for: i) there was little distinctiveness in the word “DISCOVERY”; ii) the opponent’s strong reputation reduces the likelihood of confusion; and (iii) consumers will exercise fastidiousness in selecting the types of goods and services covered by the application mark.

The PAR was not convinced by the evidence tendered and rejected the opponent’s argument that its marks form a larger family of “DISCOVERY” marks and consumers would associate the application mark as an addition to its family of marks.

 

Well-known marks

The PAR was of the view that while the opponent’s marks are well-known in Singapore, the opponent could not rely on this provision as there was no likelihood of confusion to start with. The opponent also failed to prove the extensive use and promotion of its marks that was prerequisite to showing that its marks were “well known to the public at large in Singapore” (which would have obviated the need to show confusion).

 

Conclusion

This decision provides a case study into a scenario commonly faced by trademark practitioners: a small local firm takes on an international giant with a worldwide brand. However, even Goliath cannot prevail all the time have difficulty prevailing if its mark is not inherently distinctive to begin with; moreover, its reputation can be a hindrance as it lessens the likelihood of confusion.


About the author

 Chongshuo Yan

Chongshuo Yan

Yan Chongshuo graduated form Singapore Management University with a L.L.B. (cum laude). Prior to joining Mirandah Law, he completed his training in a sizeable local firm where he was exposed to a wide specturm of disciplines, including civi litigation and intellectual property practice.

 Gladys Mirandah

Gladys Mirandah

Gladys Mirandah is a Director of mirandah asia, an intellectual property boutique practice based in Singapore and Malaysia, with offices in Indonesia, Thailand, Vietnam and Philippines. She has over forty years experience in Intellectual Property practice.

 

Gladys specializes in intellectual property law and handles the full range of intellectual property matters including prosecution of patent, trademark and design registrations as well as litigation and enforcement actions on IP matters.

 

Gladys was a Committee Member of the Intellectual Property Committee of the Law Society of Singapore and has served as a Committee Member of the Singapore Chapter of the Asian Patent Attorneys Association (APAA).  She has also served as a Council Member of the ASEAN Intellectual Property Association.  Gladys is an active member in INTA having been involved in various committees such as the Membership Committee, the Meetings Committee, Planning Committee and Speaker and Training Sub-Committee. She has been a Chairperson and Speaker at INTA-organised events. Currently, Gladys is an active contributor to several publications including the ITMA Review and INTA Bulletin covering the Far East. She is also an Editor of INTA's Cancellation Actions Project covering Asia.

 

Gladys has participated in several international forums, including being a guest speaker for the Shanghai International Symposium, the Japan Group of APAA, the Customs Intellectual Property Information Center (CIPIC), the Institute of Trademark and Patent Attorneys of Australia (IPTA) and the Bayerische Patentanwaltsverein in Munich.

 

mirandah asia is a one-stop shop for intellectual property matters in ASEAN.

 

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