Intellectual Property Law
| Published date | 01 December 2014 |
| Author | TAN Tee Jim SC LLB (Singapore), LLM (London); Advocate and Solicitor (Singapore). |
| Date | 01 December 2014 |
19.1 There are three intellectual property cases reported in 2014. Two of them are High Court cases, namely, Motherhood Pte Ltd v Lau Elaine[2014] 1 SLR 1008 and Invenpro (M) Sdn Bhd v JCS Automation Pte Ltd[2014] 2 SLR 1045. They apply well-established principles of trade mark and copyright laws respectively and do not cast new light on these laws. The third case emanated from the Court of Appeal and has become a very significant case in the local law on trade marks. The case is Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc[2014] 1 SLR 911 (Staywell). This year's review will focus on this case and its guidance on three areas of the law on determining a likelihood of confusion.
Different approaches in opposition and infringement proceedings
19.2 The relative grounds set out in s 8(2) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (the Act) correspond to the grounds set out in s 27(2) upon which a trade mark infringement action may be instituted. The language of these two provisions is also similar in material respects. For easy reference, these provisions are set out below:
| Section 27(2) | Section 27(2) |
| A trade mark shall not be registered if because (a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public. | A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public. |
19.3 There is no indication in the Act itself that these provisions are to be interpreted differently for the purposes of determining a likelihood of confusion in the opposition as well as the infringement contexts. This led the Court of Appeal in Valentino Globe BV v Pacific Rim Industries Inc[2010] 2 SLR 1203 to state categorically (at [16]) that:
Whilst we recognised that the case of Polo was concerned with the question of confusion relating to infringement under section 27(2) of the [Trade Marks Act (Cap 332, 1999 Rev Ed)], we were unable to see why the approach to be taken for determining confusion for the purposes of opposition to a proposed registration under section 8(2) should be any different from that applicable to determine confusion under section 27(2). Moreover, and more importantly, the material words of the two provisions are identical.
19.4 The identity of the material words of the two provisions is beguiling. There is in fact an important difference between them in the way in which the element of a likelihood of confusion is to be determined. For the purposes of s 27(2), the determination of a likelihood of confusion must be based on the use of a sign that is, amongst others, similar to a registered trade mark in relation to identical or similar goods or services for which the mark is registered. In contrast, the word use is significantly absent in s 8(2); specifically, a likelihood of confusion is to be determined based on the prospective registration (to be registered) of an identical or similar trade mark in relation to identical or similar goods or services. In O2 Holdings Ltd v Hutchison 3G Ltd[2008] RPC 33 at [66][67], the Court of Justice of the European Union (CJEU) explained, in relation to the equivalent provisions in Directive 2008/95/EC of the Europe an Parliament and of the Council (22 October 2008) (to approximate the laws of the Member States relating to trade marks) (the EC Directive), that the consequence of this difference in language is that there is in fact a difference of approach in determining a likelihood of confusion:
Article 4(1)(b) of [the EC Directive] concerns the application for registration of a mark. Once a mark has been registered its proprietor has the right to use it as he sees fit so that, for the purpose of assessing whether the application for registration falls within the ground for refusal laid down by that provision, it is necessary to ascertain whether there is a likelihood of confusion with the opponent's earlier mark in all the circumstances in which the mark applied for might be used if it were to be registered.
By contrast, in the case provided for in Article 5(1)(b) of [the EC Directive], the third party user of a sign identical with, or similar to, a registered mark does not assert any trade mark rights over that sign but is using it on an ad hoc basis. In those circumstances, in order to assess whether the proprietor of the registered mark is entitled to oppose that specific use, the assessment must be limited to the circumstances characterizing that use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion.
[emphasis added]
19.5 Recently, in relation to the UK Trade Marks Act 1994 (c 26), the difference in approach in determining a likelihood of confusion in the opposition as well as the infringement contexts was succinctly summarised by Arnold J in the infringement case of Och-Ziff Management Europe Ltd v Och Capital LLP[2011] FSR 11 at [76] as follows:
It is now clear that there is an important difference between the comparison of marks in the registration context and the comparison of mark and sign in the infringement context, namely, that the former requires consideration of the notional fair use of the mark applied for while the latter requires consideration of the use that has actually been made of the sign in context. [emphasis added]
In other words, whilst the element of a likelihood of confusion in the infringement context is to be determined by reference to the actual use of the offending sign, the element in the opposition context is to be determined by reference to the notional fair use of the application trade mark across the scope of the specification of goods and services in respect of which registration is sought.
19.6 Last year, this difference in approach was drawn to the attention of our Court of Appeal in Staywell (above, para 19.1). The case concerned an opposition by the proprietor of the registered trade markSt Regis against the registration of the mark Park Regis (as shown below) in respect of, amongst others, similar hotel services in Class 43.
After an extensive review of the relevant jurisprudence of the CJEU and the UK courts, including those mentioned above, the court agreed that there was a difference and said (at [56]) that:
On reflection we are satisfied that there is a difference between the approach to the confusion inquiry in opposition and infringement proceedings, although there are considerable overlaps as well. [emphasis in original]
The court explained (at [60]) that:
in opposition proceedings the inquiry must take into account the full range of the competing monopoly rights that are already enjoyed on the one hand, namely, the actual and notional fair uses to which the incumbent proprietor has or might fairly put his registered trade mark, and compare this against the full range of such rights sought by the applicant by reference to any actual use by the applicant (assuming there has been prior use) as well as notional fair uses to which the applicant may put his mark should registration be granted.
Thus, according to the court, the comparison is to be made between the various possible types of uses by the parties' marks. Specifically, for opposition proceedings, the comparison is to be made between:
(a) the actual use (assuming there has been such use) and the notional fair uses of the application trade mark in relation to the goods or services for which the mark is sought to be registered; and
(b) the actual and notional fair uses of the registered trade mark in relation to the goods or services for which the mark is registered with.
19.7 As regards infringement proceedings, the court stated (at [61]) that:
there is no question of the alleged infringer seeking to establish any monopoly rights. The only question is whether the actual use of a similar or identical sign by the infringer encroaches on the registered proprietor's monopoly rights under section 26 of [the Act] to use the mark in relation to goods or services for which he is already using it as well as the penumbra of fair uses for which he might want to use it. There is therefore no need to examine any notional fair use by the alleged infringer because he is not seeking to acquire or assert any rights in respect of such penumbral uses.
That is, the comparison in infringement proceedings is simply between:
(a) the actual use of the alleged infringer's mark in relation to the goods or services for which the mark is used; and
(b) the actual and notional fair uses of the registered trade mark in relation to the goods or services for which the mark is registered.
19.8 It is noticeable that the scope of comparison in opposition proceedings is wider than that in infringement proceedings. Another important practical effect of the difference is that in the opposition proceedings, the applicant for trade mark registration will have to meet a higher threshold, in that he has to establish that not only would his actual use (if any) of the application trade mark not conflict with the...
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