Formula One Licensing BV v Idea Marketing SA

• Jurisdiction: Singapore
• Judgment Date: 13 October 2015
• Date: 13 October 2015
• Docket Number: Tribunal Appeal No 22 of 2013
• Court: High Court (Singapore)

Formula One Licensing BV

Plaintiff

and

Idea Marketing SA

Defendant

[2015] SGHC 263

Tay Yong Kwang J

Tribunal Appeal No 22 of 2013

High Court

Trade Marks and Trade Names—Grounds for refusal of registration—Whether applicant's trade mark was similar to opponent's earlier registered trade marks—Section 8 (2) (b) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Grounds for refusal of registration—Whether applicant's trade mark was similar to opponent's unregistered earlier trade mark—Section 8 (4) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Grounds for refusal of registration—Whether application to register applicant's trade mark was made in bad faith—Section 7 (6) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Grounds for refusal of registration—Whether goodwill existed in opponent's trade marks in tort of passing off—Section 8 (7) (a) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Grounds for refusal of registration—Whether likelihood of confusion existed between applicant's trade mark and opponent's earlier registered trade marks—Section 8 (2) (b) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Grounds for refusal of registration—Whether meaning of earlier trade mark in s 8 (2) extended to earlier trade mark that was not registered—Section 8 (2) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Grounds for refusal of registration—Whether opponent's unregistered trade mark was well known in Singapore—Section 8 (4) (a) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Grounds for refusal of registration—Whether opponent's unregistered trade mark was well known to public at large in Singapore—Section 8 (4) (b) (ii) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Grounds for refusal of registration—Whether use of applicant's trade mark for goods or services would indicate connection between its goods or services and opponent—Section 8 (4) (b) (i) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Well known trade mark—Whether unregistered well known trade mark qualified as earlier trade mark where there were absolute grounds for refusal of its registration—Sections 2 and 7 Trade Marks Act (Cap 332, 2005 Rev Ed)

Formula One Licensing BV (‘the appellant’) managed the trade marks for the FIA Formula One World Championship. Idea Marketing SA (‘the respondent’) was the global promoter for the F1 Powerboat World Championship. In March 2007, the respondent applied to register ‘F1 H 20’ (‘the application mark’) in Singapore. The priority date was 11 January 2007 (‘the relevant date’). The appellant commenced opposition proceedings and relied on various grounds in the Trade Marks Act (Cap 332, 2005 Rev Ed) (‘the TMA’). The assistant registrar of Trade Marks (‘the AR’) heard the parties in September 2013.

The AR found that the application mark should proceed to registration. She held that: (a) evidence after the relevant date was irrelevant as the issue was whether the application mark should proceed to registration as at the date it was deemed to have been applied for; (b) the appellant's earlier trade marks under s 2 (1) (a) of the TMA were its three marks that were registered before the relevant date; (c) the appellant's unregistered plain F1 mark (‘F1’) was not well known in Singapore as at the relevant date and so did not qualify as an earlier trade mark under s 2 (1) (b); (d) F1 was descriptive of a particular class or standard of sport in both motor racing and powerboat racing and she should be cautious in granting a descriptive mark protection as a well known mark; (e) the opposition under s 8 (2) (b) failed as the appellant's earlier trade marks (its three registered marks) were not similar to the application mark; (f) the opposition under s 8 (4) (b) failed as the appellant's trade marks were not well known in Singapore under s 8 (4) (a); (g) the opposition under s 8 (7) failed as the the requisite goodwill in the tort of passing off was not established; and (h) the opposition under s 7 (6) failed as the appellant had failed to prove bad faith.

The appellant appealed to the High Court which allowed the appellant to adduce further evidence. The court then remitted the matter for re-hearing before the same AR. The AR maintained her decision and held: (a) distinctiveness played an important role in determining if the plain F1 mark could be considered a trade mark; (b) the further evidence showed that F1 was not distinctive of the appellant alone as the relevant sector of the public would associate the mark with at least two possible undertakings - the appellant's motor race and the respondent's powerboating event; (c) F1 was incapable of performing the basic function of distinguishing the appellant's goods or services from those of its competitors; and (d) as the plain F1 mark was not distinctive of the appellant's goods or services alone and there was evidence that it simply referred to a certain standard, it had not been used as a trade mark and failed to satisfy the definition in s 2 of the TMA. So it was unnecessary to consider if F1 was a ‘well known’ trade mark in s 2. Therefore, the mark did not qualify as an ‘earlier trade mark’ such that it could be considered under s 8 (2) (b) or s 8 (4) (b).

The appeal resumed in the High Court. The appellant submitted that the salient points of the appeal were: (a) the AR had failed to consider if the unregistered plain F1 mark was a well known trade mark as at the relevant date and thus an earlier trade mark; (b) the AR at the rehearing had failed to properly consider the further evidence which indicated that F1 was well known to the relevant sector of the public if not the public at large; (c) she had failed to consider the rest of the inquiry under s 8 (4) (b) of the TMA as a result of her finding that the plain F1 mark was not well known in Singapore as at the relevant date; and(d) she had erred in finding that there was no goodwill in the plain F1 mark and as a result of her finding she failed to consider the rest of the inquiry in the tort of passing off.

Held, dismissing the appeal and allowing the application mark to proceed to registration:

(1) The appellant's earlier trade marks for the purpose of opposition proceedings were its trade marks that predated 11 January 2007, the relevant date. Evidence that post-dated the relevant date was therefore irrelevant to the opposition proceedings: at [13] .

(2) The appellant's three registered trade marks were earlier trade marks as they predated the relevant date. The unregistered plain F1 mark was not an earlier trade mark as it was not a well known trade mark as at the relevant date. Under s 2 (1) of the TMA, an unregistered trade mark had to be well known in Singapore to be a well known trade mark. However, an unregistered trade mark excluded an unregistered trade mark that was unregistrable under s 7 which rejected the registration of inherently non-distinctive marks unless they had acquired distinctiveness through use. Section 7 rendered the plain F1 mark unregistrable as it was descriptive and had not acquired distinctiveness as at the relevant date. Therefore, F1 was not an unregistered trade mark that was well known in Singapore, ie, a ‘well known trade mark’. Therefore, it was not an ‘earlier trade mark’ for the purpose of opposition proceedings: at [14] , [18] , [24] , [25] , [29] and [40] .

(3) Section 2 (7) of the TMA provided guidance on whether a trade mark was ‘well known in Singapore’. Having considered the factors in s 2 (7), there was insufficient evidence that the plain F1 mark was ‘well known in Singapore’ as at the relevant date. Therefore, it was not an ‘unregistered trade mark that is well known in Singapore’, that is, a ‘well known trade mark’ under s 2 (1). Section 2 (8) provided that a trade mark would be deemed to be well known in Singapore where it was determined that it was well known to any relevant sector of the public in Singapore. However, the plain F1 mark had not been well known to or recognised by the relevant sector of the public in Singapore as at the relevant date: at [42] , [43] , [62] and [75] .

(4) Even if the plain F1 mark qualified as an earlier trade mark, it was unregistered as at the relevant date and therefore could not be used to oppose the application mark under s 8 (2) of the TMA. Section 8 (2) stated that an identical/similar trade mark to the earlier trade mark could not be registered if the registration was for goods or services that were similar to those for which the earlier trade mark was ‘protected’. This implied that the earlier trade mark must have been registered so that it was protected for classes of goods or services. Therefore, the opposition under s 8 (2) was limited to the appellant's three registered marks: at [77] .

(5) To succeed under s 8 (2) (b) of the TMA the appellant must show that: (a) the application mark was similar to any of the three registered marks; (b) the application mark was to be registered for goods and services that were identical or similar to those that any of the three registered marks were protected for; and (c) there existed a likelihood of confusion arising from the above. On the first requirement, the application mark was visually, aurally and conceptually dissimilar from each of the three registered marks. As a whole, the application mark was dissimilar from each of the three registered marks. Further, as there was no evidence that the three marks had acquired distinctiveness by the relevant date, less literal or visual alteration was required to ensure that the application mark was dissimilar. The second requirement was not disputed. On the third requirement, the appellant could not show a likelihood of confusion. Even if the application mark was similar to any of the registered marks, such similarity was...