FEATURE

 

The Protection of Well Known Marks


In this time of mass production and consumption, trade marks have gone beyond being signs and eye-catching designs to become product identities which are strictly protected by jurisdiction, as this article highlights.
Trade marks have become a valuable asset in their own right. Proprietors who expend considerable time, effort and money in developing and promoting their marks are rewarded with the increased awareness of their marks and ultimately, the fame of their marks. However, well known trade marks, because of their fame, are susceptible to attacks on their distinctiveness by other traders who wish to ride on the reputation of these well known marks to sell their own goods or services.

In recognition of this, many jurisdictions around the world award the proprietors of well known marks with protection additional to that given to "ordinary marks". In Singapore, besides the protection offered to trade marks in general, well known trade marks are additionally protected in the following manner:
1. The proprietor of a well known mark may commence opposition proceedings or invalidation proceedings where the offending mark has already proceeded to registration under ss 8(3) and 8(4) of the Trade Marks Act ("TMA"). For invalidation proceedings, s 23(3) of the TMA is to be read with s 8(3) and 8(4);

2. The proprietor of a registered well known mark may commence infringement proceedings under s 27(3) of the TMA; and

3. The proprietor of a well known mark may seek an injunction to stop the use of an offending mark or business identifier under ss 55(3) and 55(4) of the TMA.

Recent Court of Appeal Decisions on Well Known Mark Provisions

The provisions on well known marks are relatively new and the recent decisions by the Court of Appeal on ss 8(3) and 55(3)(a) of the TMA are a welcome guidance on the protection offered by the well known mark provisions as well as the limitations of those provisions.

The first case is Novelty Pte Ltd v Amanresorts Ltd & Anor [2009] 3 SLR 216 ("Amanusa"). In Amanusa, the Respondents were the owners of a number of "ultra-luxury boutique resorts"1 in various locations around the world, each with the prefix "Aman" in their names. The Respondents' resort in Bali was known as Amanusa. The Appellants were property developers in Singapore and named one of their condominium projects Amanusa ("the Project"). The Project was advertised as a "Balinese inspired" retreat.

The Respondents commenced an action in passing off and under s 55(3)(a) of the TMA against the Appellants.

The second case is Mobil Petroleum Company, Inc v Hyundai Mobis [2009] SGCA 38 ("Mobil"). The Appellant, Mobil Petroleum Company, Inc, which is the well known oil and oil lubricants company commenced an action at the Trade Mark Registry against Hyundai Mobis for the use of the "MOBIS" mark in respect of the design and manufacture of automotive parts. The appeal to the Court of Appeal related to the cause of action under s 8(3) of the TMA. The marks in dispute were:


The Mobile Petroleum Company, Inc mark


The Hyundai Mobis mark

The Appellant also attempted to rely on ss 4(2), 28(2) and 55 of the TMA, but the arguments on these sections were dealt with only briefly by the Court of Appeal.

What is a Well Known Mark?

A well known trade mark is defined under s 2 of the TMA as being:
(a) any registered trade mark that is well known in Singapore; or

(b) any unregistered trade mark that is well known in Singapore and that belongs to a person who -

(i) is a national of a Convention country; or

(i) is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country,

whether or not that person carries on business, or has any goodwill, in Singapore.

A convention country refers to a party to the Paris Convention for the Protection of Industrial Property or a member of the World Trade Organisation.

The most important aspect of the definition of a well known mark is that the owner of the unregistered well known mark need not carry on trade or possess goodwill in Singapore. Generally, the only recourse the proprietor of an unregistered mark will have is to the tort of passing off. However, because an essential element of passing off is the presence of goodwill within the territory, proprietors of well known marks who do not trade or have a business presence in Singapore are not protected from the use of marks identical or similar to the subject well known mark under the tort of passing off. This gap in protection is now addressed by the enactment of the well known mark provisions.

Relevant factors in assessing whether a trade mark is well known

Section 2(7) of the TMA lists the following factors which may be taken into account in assessing whether a trade mark is well known:
1. The degree to which the trade mark is known to or recognised by any relevant sector of the public in Singapore;

2. The duration, extent and geographical area of:

a. any use of the trade mark; or

b. any promotion of the trade mark, including any advertising of, any publicity given to, or any presentation at any fair or exhibition of, the goods or services to which the trade mark is applied;

3. Any registration or application for the registration of the trade mark in any country or territory in which the trade mark is used or recognised, and the duration of such registration or application;

4. Any successful enforcement of any right in the trade mark in any country or territory, and the extent to which the trade mark was recognised as well known by the competent authorities of that country or territory; and

5. Any value associated with the trade mark.

The Court of Appeal in Amanusa held that while s 2(7) may appear to provide a non exhaustive list of guidelines in assessing whether a mark is well known, a court cannot disregard the factor listed at s 2(7)(a): "the degree to which the trade mark is known to or recognised by any relevant sector of the public in Singapore" in making its assessment. In fact, according to the Court of Appeal, s 2(7)(a) is the most crucial factor in assessing whether a trade mark is well known.2

The relevant sector of the public

Section 2(9) of the TMA identifies the "relevant sector of the public in Singapore" as including any of the following:
1. All actual consumers and potential consumers in Singapore of the goods or services to which the trade mark is applied;

2. All persons in Singapore involved in the distribution of the goods or services to which the trade mark is applied; or

3. All businesses and companies in Singapore dealing in the goods or services to which the trade mark is applied.

In Amanusa, the Court of Appeal interpreted the phrase "goods or services to which the trade mark is applied" to be the goods and services of the proprietor of the well known mark and to which the trade mark is applied. The Court of Appeal rejected the Appellant's argument that s 2(9)(a) should be read as covering all actual consumers of and potential consumers in Singapore of the type of goods or services to which the well known mark is applied.3

The Court of Appeal held that the Amanusa mark was well known in Singapore by virtue of s 2(8) of the TMA as it was well known to the actual and/or potential customers in Singapore of the Amanusa resort despite the relevant public being a small group. In coming to this conclusion, the Court of Appeal took into account the substantial promotion of the "Aman" names targeted at their actual and potential customers and "that the 'Aman' names enjoy an established reputation among this group".4

Protection Offered by Sections 8(3) and 55(3)(a) of the TMA

Section 8(3)

Section 8(3) provides that:
Where an application for registration of a trade mark is made before 1st July 2004, if the trade mark -

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,

the later trade mark shall not be registered if -

(i) the earlier trade mark is well known in Singapore;

(ii) use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered would indicate a connection between those goods or services and the proprietor of the earlier trade mark;

(iii) there exists a likelihood of confusion on the part of the public because of such use; and

(iv) the interests of the proprietor of the earlier trade mark are likely to be damaged by such use.

Section 55(3)(a) of the TMA

Section 55(3)(a) provides that:
Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore, in the course of trade and without the proprietor's consent, of any trade mark which, or an essential part of which, is identical with or similar to the proprietor's trade mark, in relation to any goods or services, where the use of the trade
mark -

(a) would indicate a connection between those goods or services and the proprietor, and is likely to damage the interests of the proprietor; or
(b) if the proprietors trade mark is well known to the public at large in Singapore -

(i) would cause dilution in an unfair manner of the distinctive character of the proprietor's trade mark; or

(ii) would take unfair advantage of the distinctive character of the proprietor's trade mark.

The requirement of confusion and connection

Under s 8(3) of the TMA, the requirement that there "exists a likelihood of confusion on the part of the public" is explicitly provided therein and is separate from the requirement of "a connection between the goods or services" of the defendant and the plaintiff ie, the proprietor of the well known mark.

While there is no such explicit requirement under s 55(3)(a), the Court of Appeal in Amanusa held that the requirement of "a connection between the goods or services" of the defendant and the plaintiff ie, the proprietor of the well known mark, incorporates a requirement that there must be a likelihood of confusion. In other words, the confusion requirement is implicit in the requirement of "a connection" under s 55(3)(a).5

Further, the Court of Appeal in Amanusa at paragraph 234 held that:

... the tests to be adopted for the purposes of the "connection" requirement and the "likely to damage the [plaintiff's] interests" requirement in section 53(a) of the current TMA would yield the same results as those obtained from applying the corresponding tests vis-à-vis the Respondents' claim for passing off (which tests are, respectively, whether the Appellant has made a misrepresentation to the relevant sector of the public ie, the persons delineated at [66] above, which causes that section of the public to mistakenly think that the Project has the same source as or is connected with the Respondents' resorts, and whether such misrepresentation has resulted in or is likely to result in damage to the goodwill attached to the "Aman" names).

The Court of Appeal has, however, in Mobil taken pains to highlight that while there are similarities between the law of passing off and well known mark protection, caution must be exercised in applying the tests under passing off as the ingredients of misrepresentation and damage are with reference to goodwill while goodwill is not a pre-requisite for well known mark protection.

In interpreting the "connection" requirement under s 8(3) of the TMA, the Court of Appeal in Mobil held that "a mere association between 'MOBIL' and 'MOBIS'" without more or where a consumer would on seeing the "MOBIS" mark recall the "MOBIL" mark would not suffice in fulfilling the "connection" requirement.6

The Court of Appeal in Mobil then proceeded to provide the following examples of a "connection" which would be sufficient for the purposes of the protection of well known marks:
1. A connection as to origin in that the use of the offending mark will wrongly indicate that the defendant's goods and services are those of the Plaintiff's;7

2. A connection as to quality insofar as the consumers would be misled into thinking that the quality of the goods and services provided under the offending mark are the same as those provided under the well known mark. This type of connection was raised in the passing off case of Bollinger v Costa Brava Wine Co Ltd [1961] 1 WLR 277 ("Bollinger"). In Bollinger, Danckwerts J grated an injunction to the Plaintiffs who were champagne producers from France against the Defendants who were manufacturing and selling "Spanish Champagne". The honourable Danckwerts J had found that champagne in the United Kingdom meant wine produced from the Champagne region in France and that the public who were not aware of the nature and production of wine, but who may wish to purchase champagne, are likely to be misled by the description "Spanish Champagne";8

3. A connection as to business in that the public would be misled into thinking that the defendant's business is an extension, branch or other agency of the Plaintiff's or a merger or amalgamation of the well known business with another business.9

4. A connection as to business in that the public would be misled into thinking that a business trading under an offending mark is a related company of the business trading under the Plaintiff's well known mark.10

5. A connection as to business in that the public would be misled into thinking that "there is a licensing or trading agreement under which the well known mark proprietor exercises some control over the goods and service"11 of the offending mark.

In Mobil, the appellant ie the proprietor of the well known "MOBIL" mark, argued that the public would be misled into believing that there was a commercial connection between Mobil and the goods and services provided under the MOBIS mark based on the following factors:
1. The complementary nature of automobile parts produced by "MOBIS" and automotive lubricant produced by "MOBIL";

2. Similar avenues for sale; and

3. Display of goods and services in close proximity within such avenues for sale.

The Court of Appeal held that the above factors did not suggest a connection as to origin or quality or business as contemplated by the Court of Appeal.

With respect to the likelihood of confusion requirement, it was held that the "global confusion test" as set out in The Polo/Lauren Co, LP v Shop-In Department Store [2006] SGCA 14 ("Polo") was equally applicable to s 8(3) of the TMA.12 In Polo, the Court of Appeal held at paragraph 28 that "the question of likelihood of confusion has to be looked at globally taking into account all the circumstances including the closeness of goods, the impression given by the marks, the possibility of imperfect recollection and the risk that the public might believe that the goods came from the same source or economically-linked sources … Steps taken by the Defendant to differentiate his goods from those of the registered proprietor are also pertinent."

In Mobil, the Court of Appeal after considering the above stated factors held that there would not be a likelihood of confusion on the part of the public. In particular, the Court of Appeal felt that the following factors, inter alia, negated any likelihood of confusion:13
1. While there was some similarity between the two marks, there were significant differences between them in terms of font, capitalisation and colour;

2. The trade channels of both "MOBIL" and "MOBIS" are different although there may be instances of overlap.

3. The purchase of automobile accessories sold under the "MOBIS" mark would be made with consideration and thought and therefore the reasonable purchaser of such goods would be less susceptible to confusion.

4. Mobil has been in business for many years in Singapore but has not ventured into vehicle accessories. Therefore, an average consumer would be slow to connect and confuse MOBIS accessories with MOBIL.

5. If Mobil was to start providing a "one-stop solution" for motorists providing vehicle repair services, which would be a novel concept, it would reduce any confusion that may be engendered by the use of the "MOBIS" mark as "MOBIS" products would be distinguished as MOBIS does not provide a "one-stop solution".

The interests of the proprietor of the earlier trade mark are likely to be damaged by such use

The Court of Appeal in Mobil, held that the damage to the interests of the proprietor of a well known mark must flow from the confusion proved.14 This may include a "down-market" connection in that the interests of the proprietor is damaged as a result of the public being misled to believe that the defendant's inferior goods or services are those of the Plaintiff or that the businesses are somehow connected. Other damages that may damage the interest of the proprietor of the well known mark are:
1. Restrictions on the expansion of use of the well known mark. In Mobil, the Court of Appeal were of the view that the courts will recognise that there is a legitimate interest in protecting the prospective areas of business which a well known mark is likely to expand into. This head of damage, however, is premised on the close proximity between the current field of business of the well known mark and the prospective filed to be expanded into. A genuine intention to expand into the prospective area of business must be shown.

2. The risk of litigation. An example of this is where the offending mark is used on products of inferior quality. Such products of inferior quality could and would expose the plaintiff to legal action by unsuspecting

buyers.
Unfair Dilution and Unfair Advantage

In Louis Vuitton Malletier v City Chain Stores (S) Pte Ltd & Another matter [2009] 2 SLR 684 ("City Chain)", the Plaintiff, Louis Vuitton commenced infringement proceedings against City Chain Stores under, inter alia, ss 55(3)(b)(i) and 55(4)(b)(i) for the use of a flower pattern identical or similar to the Plaintiff's well known Quatrefoil marks on watches. Sections 55(3)(b)(i) and 55(4)(b)(i) relate to the prohibitions against unfair dilution. Before a trade mark proprietor may have recourse to ss 55(3)(b), 55(4)(b) and 8(4)(b)(ii), the proprietor must show that the subject mark is well known to the public at large and not merely to a relevant sector of the public. The learned Justice Tay Yong Kwang held that the quatrefoil marks were distinctive in its own right and qualified as trade marks which are well known to the public at large under the TMA.

The learned Justice Tay agreed with the Plaintiff's submission that the TMA recognised both the concepts of tarnishing and blurring in respect of the anti dilution provisions and held that the Plaintiff was entitled to injunctive relief under ss 55(3)(b)(i) and 55(4)(b)(i) as "cheapening the image of a luxury brand is as much tarnishing as associating that brand with unwholesome connotations."15

It should be noted that the Court of Appeal in Amanusa has confirmed that confusion is not required to be proved in respect of the unfair dilution and unfair advantage provisions.

Conclusion

The clarification by the Court of Appeal on the parameters of protection of well known marks under ss 8(3) and 55(3)(a) of the TMA are welcome. In my view, the two major points arising out of the Amanusa and Mobil cases and which counsel should take note of are that:
1. The threshold standard of a well known mark is low and is met as long as the subject mark enjoys an established reputation amongst the actual or potential consumers of the goods or services to which the mark is applied;

2. Likelihood of confusion needs to be shown under s 55(3)(a) although it is not an explicit requirement of the section; and

3. There is commonality between passing off and the protection of well known marks as far as the elements of misrepresentation/confusion and connection/confusion are concerned.16

Justin Blaze George*
Ravindran Associates
E-mail: justin@ipravi.com

Note

1 Paragraph 3 of the Amanusa case citing an extract from the Affidavit of the Respondent's main witness.

2 Pargraph 140 of Amanusa.

3 Paragraphs 145 to 154 of Amanusa.

4 Paragraph 154 of Amanusa.

5 Paragraph 233 of Amanusa.

6 Paragraph 41 of Mobil.

7 Paragraph 48 of Mobil.

8 Paragraph 49 of Mobil.

9 Paragraphs 51 and 54 of Mobil.

10 Paragraph 52 of Mobil.

11 Paragraph 53 of Mobil.

12 Paragraph 89 of Mobil.

13 Paragraphs 84 to 88 of Mobil.

14 Paragraph 96 of Mobil.

15 Paragraph 85 of City Chain.

16 Paragraph 47 of Mobil.

* All comments and opinions in the article are the author's own and should not be attributed to Ravindran Associates.