By Burton Ong
The vast majority of trade mark disputes – whether they involve opposition, infringement or revocation proceedings – involve the same threshold question: are the competing marks similar or dissimilar? Only if the marks-similarity assessment yields a positive result can the registered proprietor of a trade mark proceed with his case to show that the other legal requirements set out in the relevant provision of the Trade Marks Act (e.g. whether the goods or services involved are identical or similar, and whether there is a likelihood of consumer confusion) have been satisfied.
This seemingly innocuous issue of marks-similarity has generated a divergence of opinions as to the relevance of the trade marks’ acquired technical distinctiveness as a factor in this first step of the legal analysis. The question is whether the adjudicator can, when comparing the competing trade marks through the eyes of the average consumer, take into account evidence of actual real-life use of these trade marks in conjunction with goods and services within the Singapore market – when determining whether this fictional legal construct would regard the later mark as within the penumbra of similarity of the earlier mark.
Different positions have been taken at the Trade Marks Registry and High Court levels over the last decade, since the Court of Appeal’s landmark decision in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2013] SGCA 65. Subsequent decisions from the High Court appeared to continue treating such evidence of trade mark use as relevant, until VV Technology v Twitter [2022] SGHC 293 where it was held the marks-similarity assessment should only have regard to the inherent technical distinctiveness of the competing marks, while their acquired technical distinctiveness should be disregarded at this stage of the legal analysis.
The author’s article ‘Disentangling “distinctiveness” in determinations of trade mark similarity in Singapore’, published in 2023 in the European Intellectual Property Review (volume 45, page 400),analyses the problems with adopting this approach towards the assessment of trade mark similarity, emphasising the unfair consequences towards trade mark proprietors whose marks have low levels of inherent technical distinctiveness but high levels of acquired technical distinctiveness. Practically speaking, if the High Court’s position in VV Technology is embraced, it would be quite reasonable for an adjudicator to reach the conclusion that “Singapore Airlines” is not similar to “Singapore Airlines Electric Bicycles”.
This article builds on the author’s legal analysis in the following trade mark law decisions: NBA v Monster Energy [2018] SGIPOS 16 and Tata Sons Pte Ltd v Tata’s Natural Academy [2022] SGIPOS 15.
Keywords: Trade Marks, Similarity, Acquired Distinctiveness
AUTHOR INFORMATION
Dr Burton Ong is an Associate Professor at the Faculty of Law at the National University of Singapore.
Email: lawongb@nus.edu.sg
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