CNM’s intellectual property and copyrights guru, Elizabeth V. Cardoza, recently added another feather to her cap with her contribution to the 2013 edition of International Trademark Dilution . We speak with Elizabeth to find out more about the latest development in trademark dilution and seek her counsel on what the dilution law is about and how it may affect communication practitioners and researchers.
You have contributed a chapter to the book, “International Trademark Dilution”. What was that chapter about?
The new publication International Trademark Dilution traces the origins and history of trademark dilution in the U.S. and Europe and guides industry players through a gamut of legal requirements in several other countries, including Asian countries like Japan, China and Singapore My chapter sets out the Singapore position.
As we know, a brand serves as a badge of quality and source indicator of the product marketed by the brand owner. A superlative brand is one that is distinctive. The prudent businessperson in developing a new brand (X) wants to avert unnecessary business risk. Indeed who would invest research, development or marketing costs into a new brand X if another person or organization in the marketplace could claim superior legal rights to XX, an earlier-existing identical or similar business identifier?
The hallmark test in trademark law to show infringement is the “confusing similarity” test. The question to consider is whether the consuming public is confused between the new brand X and the earlier-existing one XX. Consumers can actually be confused in a range of ways. First, there can be marketplace confusion between the separate products marketed under X and XX; alternatively, the confusion may relate to the origin or source of the products, or it simply amounts to an affiliation or sponsorship issue, where consumers think that X is endorsed by XX.
What is the trademark dilution caveat that brand custodians in Singapore must pay attention to when developing a new brand or refreshing an existing one?
Under the new theory of dilution, a brand that is well known to the public at large in Singapore, one recognized by all or most sectors, is a powerful one. This genre of trademark need not rely on the traditional “confusing similarity” test to succeed in a claim against another brand owner that the latter’s use of his mark is infringing. The well-known mark owner will trump the other user regardless whether their products are competing or dissimilar. There is no need to show any likelihood of confusion (the tradition test of trademark infringement) by the general public. More significant is that the well-known mark need not be registered or even used in Singapore.
Take the example of two brands identified in recent local court cases as well known to the general public: CLINIQUE and NUTELLA. Effectively, such a trademark is “diluted” in Singapore if any unauthorized use of an identical or similar mark by another trader unfairly tarnishes, blurs or free-rides on its goodwill. The CLINIQUE case was against the owner of CLINIQUE SUISSE, while the NUTELLA case involved the use of NUTELLO by another mark owner.
The trademark dilution concept is also relevant to the brand owner who files a new local trademark application with the Trade Mark Registrar (the relevant authority under the Intellectual Property Office of Singapore). Registration of the new mark can be refused on the basis that it conflicts with an earlier trade mark well-known to the public at large in Singapore. There is no requirement of any likelihood of confusion by the public, and it is irrelevant whether the goods or services are identical, similar or dissimilar. As part of its battery of ammunition, the famous mark owner can also formally oppose the new application of the other party.
In short, the concept of trademark dilution adds another layer to the myriad business risks involved in creating a new brand. The brand owner must now be alert to the hazards of any brand “well-known” to the general public. Armed with a basic understanding of the expansive prowess of well-known marks, brand consultants and other industry players can strive to effectively reduce the risk of conflicts in their choices on use of marks and other business identifiers.
What must a brand owner do to dispute a competitor’s misuse of its trademark?
One way the brand owner can claim well-known status is to tender proof of the extent to which the mark is used in Singapore and related promotional activities to the Court via sworn or survey evidence.
In the CLINIQUE case, the Court accepted evidence that some $3 million had been spent annually on advertising, promotion and marketing the mark in Singapore between 2004 and 2008.
In the NUTELLA case, the Court accepted affidavit evidence from the NUTELLA brand owner on the massive scope and extent of sales and wide local print media coverage in Singapore on the product in Singapore.
The surveys conducted by both parties showed that the local general public is familiar with all the NUTELLA marks, and the brand owner’s survey of 410 respondents indicated that some 89% were familiar with NUTELLA with 70% having known it for more than five years. Of interesting significance to us is the Court’s emphasis on what it wanted to see in any survey. Justice Chan Seng Onn had stressed that to have probative value, a survey must strive for accuracy in results, and this in turn, depended on the appropriateness of its design elements such as sample size and phrasing of survey questions.
The proprietor of NUTELLA obtained injunctive relief (a “stop” order by the Court) against the infringing use of NUTELLO by a local food and beverage café outlet. The Court accepted the NUTELLA mark would possibly lose its distinctiveness by the use of the other party’s sign NUTELLO on various goods.
In the same vein, the Court accepted there was dilution of the CLINIQUE brand, a mark registered here for a range of skin and body care products and for beauty consultation and treatment services. It ruled that the resultant negative publicity in the marketplace against the other party, Clinique Suisse, for its lack of product quality assurance, might tarnish the stellar reputation of the products actually marketed under the well-established clinical guidelines of CLINIQUE’s founding dermatologists. To trump the infringer, the owner of the well-known mark must show resultant loss or harm, such as detriment arising from the real risk of diversion of business to the other party, and the likely restriction on expansion of future use of the well-known mark.
You teach copyright and intellectual property in new media, guiding our students on the perils of copyright violations. What would you say are the important guidelines which our prospective communication practitioners and researchers must heed in ensuring that their organisations, products and services thrive in a knowledge intensive and IP-rich economy?
Our new media folks will find great value in using the updated readily-available reference materials and databases relating both to fundamental and cutting-edge issues in Intellectual Property (IP) on a website such as the World Intellectual Property Organization’s.
IP comprises several different rights including Copyright, Trademarks, Patents, Designs, Geographical Indications and Trade Secrets. Accordingly, communication practitioners and researchers need to fathom the basics of the current IP regulatory regime and the objectives and scope of each right, to avert conflicts and infringement claims.
In recent times, there are calls in the local media to dismantle, say, the copyright regime, on the premise that it stifles rather than encourages creativity. Any such activism must be premised on proper surveys conducted in the marketplace. This is where our social scientists stand head and shoulders above other disciplines including the law, as it is their research that garners evidence on identifiable societal concerns that emanate from the rigours of the regulatory regimes, whether just in Singapore or within the ASEAN region.
Tell us a little about yourself. What were you doing before you joined CNM? What brought you here to us?
I garnered my expertise in the IP field when I was a legal counsel in the public and private sectors, in Singapore and in the Silicon Valley of California. Today, I continue to keep abreast of developments in the field as a consultant and trainer.
I joined CNM as adjunct faculty to help with the Media and Communications Regulation module. Subsequently, under the guidance of Dr. Milagros Rivera, CNM’s former Head, we crafted a new module Copyright and New Media, correctly envisioning that it would be useful for our students. I grew to like teaching very much and sought to develop myself as a teacher. In 2010, I secured my Masters in Education from Penn State University. Come 2014, I shall be able to share with students my skills in public speaking. To be able to combine all of one’s passions and experience in one’s profession is the most gratifying accomplishment. I am so fortunate to be able to do that at CNM. It has become one of the greatest joys in my life — to teach what I love, in a place I love.
CNM IP and copyrights guru, Elizabeth Cardoza explicates the intricacies of trademark law in her chapter on the enforcement of the trademark dilution law in Singapore