Festina Lotus SA v Romanson Co Ltd

• Judge: Tay Yong Kwang J
• Judgment Date: 16 July 2010
• Neutral Citation: [2010] SGHC 200
• Citation: [2010] SGHC 200
• Docket Number: Originating Summons No 240/2010/H
• Published date: 20 August 2010
• Hearing Date: 25 May 2010
• Plaintiff Counsel: G. Radakrishnan (Infinitus Law Corporation)
• Date: 16 July 2010
• Defendant Counsel: Jonathan Yuen and Joana Teo (Harry Elias Partnership LLP)
• Court: High Court (Singapore)
• Subject Matter: Grounds for Refusal of Registration,Trade Marks and Trade Names

Tay Yong Kwang J: Background Facts

The Appellant, Festina Lotus S.A, is the proprietor of trade marks which are variations of “FESTINA and device” (“Appellant’s various marks”) in Singapore in Classes 3, 9, 14, 16, 18 and 25 ICGS. The Respondent, Romanson Co. Ltd, filed a trade mark application for “J.ESTINA and device” (“Respondent’s mark”) by way of trade mark application number T05/25465Z with respect to Class 14 in relation to “wrist watches, electric watches, desk clocks, alarm clocks, necklaces, rings, bracelets, earrings, medals and brooches” (“Respondent’s application”). The Appellant filed a notice of opposition on 22 September 2006 to oppose the Respondent’s application.

The Principal Assistant Registrar of Trade Marks (“PAR”) dismissed the Appellant’s opposition. The Appellant appealed against her decision in Festina Lotus SA v Romanson Co Ltd [2010] SGIPOS 2 (“GD”) in respect of her findings under ss 7(6) and s 8(2)(b) Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”).

Facts pertaining to the Appellant

The Appellant’s trade mark in respect of Class 14 was registered in Singapore under trade mark number T9004265I (“Appellant’s mark 1”). The Appellant’s mark 1 is a composite mark made up of a crest with the following elements: (a) A crown device positioned on top of the crest; (b) Two prancing horses positioned on the sides of the crest; (c) A curved banner positioned at the bottom of the crest with the word “FESTINA” emblazoned across the curved banner.

The Appellant’s marks in respect of Classes 9, 18 and 25 (“Appellant’s other marks”) consist of the same device as described above with the addition of the word “FESTINA” in larger, bold font as a plain word mark positioned at the bottom of the device. The Appellant’s various marks and their corresponding Classes are as follow:

Trade Mark Number	Class	Registration Date	Mark
T9004265I	14 “Watches, clocks and other chronometric instruments”	12 June 1990
T0612082G	09 “Spectacles”	4 July 2005
T0612083E	18 “Leather and imitation leather; goods made of these materials not included in other classes; animal skins and hides; trunks and suitcases; umbrellas; parasols and walking sticks; whips, harness and saddlery”	4 July 2005
T0612084C	25 “Clothing and footwear”	4 July 2005

The Appellant, by way of Statutory Declarations made by its Managing Director, Mr Javier Ribas, stated that it was founded in 1902 in Switzerland. The brand “FESTINA” was said to be one of the leaders in the mid-range watch sector in markets in Europe and currently distributes and sells watches and time pieces in more than 50 countries worldwide. It also sponsors professional cycling events and is the official time keeper of the Tour de France, amongst others. The Appellant also tendered evidence of its annual turnover and copies of selected invoices attesting to sales where it has a presence in East Asia, ie, in Hong Kong and Japan. There are no specific sales figures available for Singapore as the Appellant’s various marks have not been used here.

Facts pertaining to the Respondent

The Respondent’s mark, on the other hand, consists of the word “J.ESTINA” with a crown device positioned on the top of it as seen below:

In a Statutory Declaration made by the General Manager of “J.ESTINA” division of the Respondent, Mr. Myoung-chul Shin, it was deposed that the Respondent is a South Korean manufacturer of watches established in April 1998. The watches manufactured include luxury jewellery watches, prestige-grade watches, business watches, fashionable watches and casual watches.

The Respondent ventured into the jewellery market in 2002. On 16 December 2005, it filed for registration of the Respondent’s mark by way of application number T05/25465Z for Class 14 goods with respect to “wrist watches, electric watches, desk clocks, alarm clocks, necklaces, ring bracelets, earrings, medals and brooches” in Singapore. As the Respondent’s mark has not been used here, the Respondent tendered evidence of approximate sales value of jewellery, watches and horological articles under the Respondent’s mark in countries such as China and Vietnam.

The decision of the PAR PAR’s findings with respect to s 8(2)(b) TMA

Section 8(2)(b) TMA reads as follow:

Relative grounds for refusal of registration

8. — (1)

(2) A trade mark shall not be registered if because —

…

(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.

[emphasis added]

The PAR found that: (a) The Appellant’s mark 1 was the relevant “earlier trade mark” for the purposes of s 8(2)(b) TMA. The Appellant’s other marks were therefore not considered, at [53] of GD; (b) The Appellant’s mark 1 and the Respondent’s mark were visually dissimilar, at [59] of GD; (c) The Appellant’s mark 1 and the Respondent’s mark were aurally similar, at [61] of GD; (d) The Appellant’s mark 1 and the Respondent’s mark were conceptually dissimilar, at [64] of GD; (e) The goods in the Respondent’s application in respect of “wrist watches, electric watches, desk clocks, alarm clocks” were identical to the Appellant’s registered goods in Class 14, ie, “watches, clocks and other chronometric instruments”, at [71] of GD; (f) The goods in the Respondent’s application in respect of “necklaces, rings, bracelets, earrings, medals and brooches” were similar to those of the Appellant’s registered goods in Class 14, ie, “watches, clocks and other chronometric instruments”, at [73] of GD; (g) There was no likelihood of confusion between the Appellant’s mark 1 and the Respondent’s mark, at [84] of GD. Accordingly, the appellant failed on this ground of opposition.

PAR’s findings with respect to s 7(6) TMA

Section 7(6) TMA stipulates:

Absolute grounds for refusal of registration

7. — (1) ...

(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.

The PAR found that the evidence tendered before her did not show that the Respondent’s actions fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the relevant area of trade, at [113] of GD. Thus, the Appellant’s opposition under bad faith failed. The Appellant’s submissions on appeal

The Appellant submitted that there are visual, aural and conceptual similarities between the Appellant’s mark 1 and the Respondent’s mark.

The Appellant’s approach during the course of submissions was a strategic one. It first sought to demonstrate that the goods in Classes 9, 14, 18 and 25, ie, those which the Appellant’s various trade marks were registered under, could be broadly and rationally categorised as “fashion accessories”. Flowing from this logic, the Appellant argued that the Respondent’s goods in Class 14 were at least similar to the Appellant’s goods in respect of Classes 9, 14, 18 and 25 as they were all “fashion accessories”. The implication of such, as submitted by the Appellant, was that the relevant “earlier mark” for the purposes of s 8(2)(b) TMA included not only the Appellant’s mark 1 (as held by the PAR) but also the Appellant’s other marks. This was crucial to strengthening the Appellant’s case as the Appellant’s other marks (as opposed to the Appellant’s mark 1) bore greater visual similarity to the Respondent’s mark, a point conceded by the Respondent.

Applying the global appreciation test, the Appellant took the position that a likelihood of confusion existed on the part of the public between the Respondent’s mark and the Appellant’s mark 1 (and the Appellant’s other marks if the Court accepts the Appellant’s submission above) within the meaning of s 8(2)(b) TMA.

For the claim of bad faith under s 7(6) TMA, the Appellant submitted that the PAR erred in finding that there was no bad faith on the Respondent’s part. The Appellant submitted that Respondent was very likely to have been aware of the Appellant’s mark and its reputation. This, compounded by the Respondent’s failure to respond by way of counterstatement to the allegation of bad faith and the unsatisfactory explanation given by the Respondent regarding the derivation of the brand name “J.ESTINA” suggested that the Respondent must have copied the Appellant’s mark. Thus, the application to register the Respondent’s mark in such circumstances must have been made in bad faith.

The Respondent’s submissions on appeal

The Respondent took the view that the Appellant’s appeal against the PAR’s findings in respect of s 8(2)(b) TMA was misconceived. Faced with the Appellant’s attempt to categorise the goods in Classes 9, 14, 18 and 25 as being similar in nature which would entitle the court to consider the Appellant’s other marks, the Respondent submitted that there was no overlap between the specification of goods for the Appellant’s marks in Classes 9, 18 and 25 with that of the Respondent’s Class 14 goods. Hence, the Respondent maintained that the relevant “earlier mark” that the court was entitled to consider was confined to the Appellant’s mark 1 for the purposes of s 8(2)(b) TMA.

The Respondent also submitted that there were no visual, aural or conceptual similarities between the Appellant’s and Respondent’s marks and that there was no likelihood of confusion between the two marks.

Given its stance that the two marks were completely different, the Respondent submitted that there was no issue of bad faith that needed to be addressed. As the Appellant had provided no distinct proof of unacceptable commercial behaviour, its claim against the Respondent in respect of bad faith under s 7(6) TMA must necessarily fail.

Decision of the court Standard of Review of Present Proceedings

Order 87...