Intellectual Property Law
| Date | 01 December 2006 |
| Author | TAN Tee Jim SC LLB (University of Singapore), LLM (University of London); Advocate and Solicitor (Singapore). |
| Published date | 01 December 2006 |
| Citation | (2006) 7 SAL Ann Rev 325 |
17.1 The steady stream of intellectual property cases continues to flow from our courts. In the year under review, there were eight trade mark cases and two patents cases. A number of these cases provide fodder for salutary ruminations regarding the nature of the legal principles involved and their future directions.
17.2 The ‘Mac/Mc’ saga discussed in the 2004 SAL Annual Review raged on in 2006. In Future Enterprises Pte Ltd v McDonald”s Corp[2006] 4 SLR 629, McDonald”s Corporation (‘McDonald”s’) tried to stop a local company (‘Future’) from registering the mark ‘MacCoffee’ in respect of ‘instant coffee mix’ on the basis of its prior registration of the mark ‘McCAFE’. It claimed that registration of the mark ‘MacCoffee’ would be contrary to ss 8(2) and 8(3) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (‘TMA’) as well as the law of passing off under s 8(4)(a) of the TMA. This time, it succeeded.
17.3 Tay Yong Kwang J held that the two marks ‘MacCoffee’ and ‘McCAFE’ were visually, aurally and conceptually similar, adopting the well-known test articulated in the Pianotist case (1906) 23 RPC 774 for comparing conflicting marks, and that Future”s instant coffee mix was similar to, if not identical with, McDonald”s goods which included coffee. Given the ‘high degree of similarity’ in terms of the marks and the goods in question, he went on to rule that there was a likelihood of confusion on the part of the public and upheld the Trade Mark Registrar”s decision not to allow Future to register the mark ‘MacCoffee’. In doing so, he cited (at [22]) with approval the opinion of the European Court of Justice (‘ECJ’) in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer[1999] RPC 117 at [17] that:
[A] lesser degree of similarity between the goods or services in question may be offset by a greater degree of similarity between the marks and vice versa.
17.4 In The Polo/Lauren Co, LP v Shop in Department Store Pte Ltd[2005] 4 SLR 816 at [16], which was reviewed last year, the late Lai Kew Chai J had earlier cautioned against the unbridled adoption of this particular opinion into our jurisprudence. That was a case in which the plaintiff sued the defendant for infringing its registered trade marks bearing the word ‘POLO’ by importing and selling clothing, handbags and shoes under the sign ‘POLO PACIFIC’, as shown below:
17.5 Lai J dismissed the action and rejected the ‘global assessment’ approach of the ECJ in comparing marks as well as goods and services and in ascertaining likelihood of confusion. The approach elides the questions concerning similarity and confusion, and requires the court to take into account all relevant factors in considering the questions, including, in particular, the degree of similarity between the trade mark and the sign, and between the goods and the services in question. The effect of this approach is that the distinctiveness and reputation of the earlier or registered mark would decide the issue. The greater the distinctiveness of the earlier mark, the greater the likelihood of confusion. Lai J said that such an approach was neither fair nor sensible and (at [16]) that:
if we are not careful to separate the elements required, a strong mark would get protection for a greater range of goods than a weak mark even though the goods under consideration were vastly different or dissimilar.
The learned judge opined that if infringement (and likelihood of confusion) were to be made out, it should be on the basis of the identity or similarity of the sign to the registered mark and the goods applied thereto.
17.6 Lai J”s approach was upheld by the Court of Appeal in The Polo/Lauren Co, LP v Shop in Department Store Pte Ltd[2006] 2 SLR 690. In particular, it confirmed that the three-step approach (enunciated in the UK case of British Sugar plc v James Robertson & Sons Ltd[1996] RPC 281) (‘British Sugar’) for comparing marks as well as goods and services with a view to determining likelihood of confusion was the preferred approach. It said that that approach was in line with the structure of s 27(2) (as well as
s 8(2)) of the TMA. Under those provisions, three conditions must be fulfilled. First, the alleged offending mark must be similar to the registered mark. Secondly, both marks must be used in relation to similar or identical goods or services and thirdly, on account of the similarities of the marks as well as the goods or services in question, there exists a likelihood of confusion on the part of the public. The court said that the fact that the alleged offending mark was similar to a registered mark did not automatically mean that there would be a likelihood of confusion on the part of the public. That is a question of fact to be determined by the court, ‘taking into account all the relevant circumstances’. The court added that it did not also mean that because the alleged offending mark and the registered mark were similar and they were used on similar goods or services, there would ipso facto be confusion in the minds of the public. There is no presumption of confusion just because the marks as well as the goods or services in question are similar. To determine confusion, the court is entitled to look outside the marks as well as the goods or services in question — that is, at other factors. In the event, the court agreed with the learned judge that there was no likelihood of confusion on the grounds that the average consumer would exercise some care and good sense in making purchases, that the plaintiff”s ‘POLO’ goods were sold in prime shopping centres whilst the defendant”s ‘POLO PACIFIC’ goods were sold in stores located in modest suburban shopping centres and there was a great disparity in the prices between the parties” goods.
17.7 It is respectfully submitted that the court”s reiteration of the British Sugar approach is not materially different in practice from the ECJ”s ‘global assessment’ approach. The former approach enjoins that the question of likelihood of confusion is to be considered only after the marks as well as the goods or services in question have been determined to be similar whilst under the ECJ approach, the likelihood of confusion is to be considered at the same time as when the similarities of the marks as well as the goods or services in question are to be considered. Despite the time difference, both approaches require the taking into account of all relevant circumstances in determining the likelihood of confusion. To the ECJ, these include, in particular, ‘the recognition of the trade mark in the market, any association which can be made with the used or registered mark, and the degree of similarity between the trade mark and the sign and between the goods and services identified’ [emphasis added] (see, eg, Sabel BV v Puma AG, Rudolf Dassler Sport[1998] RPC 199 at 223—224). These factors (including, in particular, the degree of similarity of the marks as well as goods or services) would, it is suggested, address Lai J”s concern that ‘if we are not careful to separate the elements required, a strong mark would get protection for a
greater range of goods than a weak mark even though the goods under consideration were vastly different or dissimilar’ (see para 17.5 above).
17.8 In parenthesis, the Court of Appeal acknowledged that the two approaches are in practice not likely to lead to different results as it said (at [9]) that ‘it seems to us that in a given situation, whichever test the court is to apply, the final conclusion is likely to be the same’. In this regard, the court expressed agreement with the following comments of Assoc Prof Ng-Loy Wee Loon in a case note entitled ‘The Polo Match in Singapore: England v Europe?’[2006] EIPR 250 at 255:
Naturally, because the question of similarity between goods depends on the facts of each case, it is highly likely that this doctrinal difference in the two approaches will not have a material impact in practice. Two tribunals comparing the same two sets of goods may very well come to the same conclusion on the question of similarity between the goods, even though one tribunal is applying the English approach whilst the other tribunal is applying the European approach and has to be less strict on this issue.
17.9 Hence, it is respectfully suggested that Tay Yong Kwang J was quite right to invoke the aid of the ECJ opinion (see para 17.3 above) that ‘a lesser degree of similarity between the goods or services in question may be offset by a greater degree of similarity between the marks and vice versa’ when he decided that the marks ‘MacCoffee’ and ‘McCAFE’ were visually, aurally and conceptually similar to such an extent that there was a likelihood of confusion in relation to the subject goods.
17.10 Visual, aural and conceptual similarity was also found in the case of Johnson & Johnson v Uni-Charm Kabushiki Kaisha[2007] 1 SLR 1082, where the appellant opposed the respondent”s application to register the mark ‘Careree’ in Class 5 in respect of ‘napkins and pads for wear by person prone to incontinence’ on the basis of its prior registration of the mark ‘Carefree’ for ‘catamenial products, sanitary tampons, napkins and napkin belts for hygiene’ in Class 5. This finding is itself unremarkable, except that it is intriguing to note that in rejecting the argument that the marks are conceptually different, the court said that all circumstances are to be taken into account.
17.11 In a similar vein, in Caterpillar Inc v Ong Eng Peng[2006] 2 SLR 669, the court held that the defendant”s ‘CATPLUS’ mark is visually, aurally and conceptually similar to the plaintiff”s registered ‘CAT’ series of marks. The suffix ‘PLUS’ was merely laudatory and not sufficient to render the mark ‘CATPLUS’ distinguishable from the plaintiff”s. Again, there was an
invocation that all the relevant circumstances must be considered in...
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