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26 January 2017
The recent opposition matter between two mobile software application manufacturers before the Intellectual Property Office of Singapore (IPOS) of Apptitude Pte Ltd v. MGG Software Pte Ltd was a battle for trademark rights in an expanding niche market. In ultimately failing on all grounds of its opposition, Apptitude’s (the opponent) case showed that important criteria of identifying the similarity or identity of the rival marks need to be met in order to successfully oppose on the available grounds of Section 8(2)(b) of the Singapore Trade Marks Act.
The opponent had registered the combined word and device mark SNAC (an acronym of School Notification Acknowledgement Console) on September 30, 2013 in Classes 9, 38, 41 and 42 of the Nice Classification of Goods and Services. Subsequently, on March 3, 2014, MGG Software (the applicant) filed their application, a label trademark comprising, inter alia, of the word “snaapp” and the phrase “School Notification & Attendance App” in Classes 9 and 38. The opponent raised three grounds of opposition against this filing under the act: conflict with an earlier trademark (Section 8(2) (b)), passing off (Section 8(7)(a)) and bad faith (Section 7(6)).
In firstly addressing the ground of conflict, the hearing officer relied upon the main precedent Court of Appeal decision in relation to Section 8(2)(b), that of Staywell Hospitality Group v. Starwood Hotels & Resorts Worldwide. This case has led ‘conflict’ to be seen to be derived through three elements: similarity of marks, similarity of goods and services covered and whether there is a likelihood of confusion.. The case extends to observe an understanding that while similarity of marks would aid in ascertaining the likelihood of confusion, the actual and notional (potential) fair use of the mark in relation to the rival goods/services commands equal consideration. Relying on the principles established in Staywell, the similarity between subject trademarks were assessed by making visual, aural and conceptual comparison.
In firstly surveying the visual similarity between the two marks, the hearing officer undertook identifying the dominant components of the marks and comparing the same based on imperfect recollection ability of average consumers. Further, the marks are used and applied for registration in distinct colour combinations, each of which as a whole carried different impressions from the other. The hearing officer decided that the rival marks were not visually similar, bearing in mind the differing colours of the letters in the marks, and the fact that both words SNAC and snaapp were invented words that could not be arbitrarily dissected according to their shared prefixes and hence, inherently distinctive.
Aurally, however, it was determined that the rival marks did share some similarity, citing the London Lubricants case which stated that, for one-word marks, aural similarity should be guided by the first syllable of the marks, i.e. SNAC v. snaapp, together with a person’s ability of imperfect recollection to be ultimately deceived. Conceptually, it was found that the rival marks were dissimilar. The Court of Appeal case of Sarika Connoisseur Café Pte Ltd v. Ferrero SpA was cited, whereby the marks of Nutello and Nutella were found to be conceptually dissimilar, both of the words being invented terms with no particular meaning inherent, finding ‘SNAC’ and ‘snaapp’ to similarly differ conceptually. On the findings that the rival marks are dissimilar, any further examination of rival goods and services and any possible confusion gets defeated. Additional evidences of actual use of the marks were considered as extraneous factors not to be taken into account for adjudging likelihood of confusion, so the ground of opposition under Section 8(2)(b) failed.
Accordingly, the hearing officer moved on to the second ground: that the applicant was guilty of passing off its mark as such that the goods and services sought for protection may mislead the public into believing that they are those of the opponent. Citing Staywell, the three elements of passing off being goodwill, misrepresentation and damage, the hearing officer firstly found that the opponent did have the requisite goodwill (volume of business conducted in Singapore), considering the small size and nature of target market, to sustain a passing off action.
However, as the marks were already found to be dissimilar, the element of misrepresentation could not be manifested as per the decision in Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd. To be said to mislead the public, the applicant must be seen as seeking to register something similar to the opponent’s mark. Therefore, as no misrepresentation was found, no damage to the opponent’s goodwill could be considered, and the opponent’s ground of passing off under Section 8(7)(a) failed.
Finally, turning to the ground of bad faith, the hearing officer examined arguments in support of this claim postulated by the opponent. The first two arguments stated that the applicant had acted in bad faith by applying to register a similar mark for an identical product in the same classes. Given the decision already having found the marks to be dissimilar, these arguments were found to be commercially unacceptable. Furthermore, the third argument for bad faith – that the applicant had matched the price of its opponent’s product – was also dismissed, as the hearing officer found there to be no bad faith in this act.
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