IS THERE CONFUSION IN THE LAW OF TRADE MARKS IN SINGAPORE?

• Date: 01 December 2013
• Published date: 01 December 2013
• Author: David LLEWELYN Professor (Practice) and Deputy Dean, School of Law, Singapore Management University; Professor of Intellectual Property Law, King's College London.
• Citation: (2013) 25 SAcLJ 339

Case Note

Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2013] 1 SLR 489

The wording of s 8(2)(b) of the Trade Marks Act — which sets out the relative ground for refusal of a trade mark application for a mark that is the same or similar to an earlier mark registered in relation to the same or similar goods or services as long as there is a likelihood of confusion — is identical to that in s 27(2)(b) relating to infringement of a trade mark. The wording is taken from ss 5(2) and 10(2) of the UK Trade Marks Act 1994 (which in turn derives from the European Council Trade Marks Directive). The European Court of Justice, in its O2 Holdings Ltd v Hutchison 3G Ltd ([2008] ETMR 55) judgment, drew attention to the important difference in how the identical words should be applied in the application and infringement contexts: in the former, the analysis must assume notional and fair use of the mark by the applicant in relation to all the goods or services in its specification; and in the latter, it should take into account the context of the use by both plaintiff and alleged infringer. This issue arose in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc, and the judge followed earlier Singapore authorities, which decided that the wording should be applied in the same way in both contexts. In this, and a number of other respects, Singapore law now differs markedly from that in the European Union from which its law emanated.

I. Introduction

1 Trade mark law has changed fundamentally in many parts of the world over the past two decades or so, as countries have made it easier to obtain protection of a trade mark through registration and have accorded broader protection to trade marks once they are registered. Views differ as to whether this is a good or a bad thing: much depends on one's perspective. To the prospective or actual proprietor of a registered trade mark, the low hurdles to be overcome to get registration and the scope of protection, respectively, are positive developments. On the other hand, to those seeking to find a mark that someone else does not already claim in relation to some goods or services, or those on the receiving end of overreaching by trade mark proprietors, the developments reek of another area of “too many and too broad” rights in the intellectual property field.

2 In the UK, the “fundamental changes”1 were introduced by the 1988 First Council Directive to approximate the laws of the Member States relating to trade marks2 (“Trade Marks Directive”) and the 1994 Council Regulation on the Community trade mark.3 The developments have resulted in what Sir Robin Jacob — who as Mr Justice and then Lord Justice Jacob was probably the best-known trade mark law judge of recent years, at least in the common law world outside the US — has described as a “tsunami of trade mark case law” resulting from an area of law in which “anything can happen”.4 On the scope of trade mark rights under the new regime in Europe, Sir Robin lamented, “[T]he big brands have persuaded the courts that their trade mark rights should be more extensive and hence more anticompetitive than elsewhere in the world.”5

3 Many countries outside Europe have adopted many of the changes and much of the wording in the European Union (“EU”) regime in a general worldwide move towards greater ease of registration

of trade marks and a broadening scope of protection for those that achieve registration. Case law from Australia6 to Zambia7 confirms this.

4 One country stands out for those wishing a more circumspect reaction to this headlong rush for “ever more and ever wider”: Singapore. In this country, the judges have remained resolute in their determination to examine seriously the expansive claims of trade mark proprietors. What Sir Robin would call “big brands”, like Polo Ralph Lauren, Subway, St Regis, have been sent packing in registration as well as infringement proceedings. Likewise, what should have been a penalty kick for the owner of registered trade mark NUTELLA for its well-known chocolate spread, against the sign NUTELLO used on a coffee drink with “lashings of nutella”,8 was won only after extra time and a judgment of more than 60 pages in the Court of Appeal.9

II. Trade mark law in Singapore

5 Until 15 January 1999, Singapore trade mark law had been based on the UK Trade Marks Act 1938:10 the Trade Marks Ordinance 193811 enacted by Sir Shenton Thomas as Governor of the Straits Settlements was modelled on the UK Act, that itself was considerably more amenable to trade mark owners than its predecessor, the UK Trade Marks Act 1905.12 However, under the Trade Marks Act 1938,

a registered trade mark was still a property right that was granted somewhat sparingly: for example, the registrar had an overriding discretion to refuse registration even of marks that complied with the requirements for registration in Parts A and B of the register, respectively, as set out in ss 9 and 10.13

6 Along with much else, that discretion and the division of the register into two parts went with the passage of the UK Trade Marks Act 1994,14 and the 1999 Singapore Trade Marks Act15 likewise has no such provision or division. Instead, the burden (in a non-legal sense) has shifted; it is now up to the registry to satisfy itself that there is a statutory reason not to register, rather than the burden being on the applicant to persuade the registry as to why the mark should be registered.16 This is only the first of the many “fundamental changes” in the legislation and the way the whole trade mark registration system operates, to which the authors of the 13th edition of Kerly's Law of Trade Marks and Trade Names (“Kerly”) referred: indeed, Arden LJ has gone so far as to say that “one has to start by forgetting the preconceptions of pre-1994 Act trade mark law”.17

7 Section 1(1) of the UK Trade Marks Act 1994 “starts with what appears to be a fundamental definition of ‘trade mark’”,18 which is based on Art 2 of the Trade Marks Directive, although Art 2 does not itself define a “trade mark” but instead lays down certain requirements with

which the mark being applied for must conform to avoid the absolute ground for refusal contained in s 3(1)(a) of the UK Trade Marks Act 1994 (which is in identical wording to s 7(1)(a) of the Singapore Trade Marks Act).19 This has the unfortunate consequence that the interpretation of the term “capable of distinguishing” in s 1(1) of the UK Trade Marks Act 1994 “remains unclear”.20 After a detailed discussion of different theories,21Kerly concludes that the expression “capable of distinguishing” in s 1(1):22

… takes account of the fact that marks may not have been used before an application is filed, but contemplates what must occur when the mark is used. When a mark is put to use, it must distinguish the goods and services of one undertaking from those of other undertakings. Hence ‘capable of’ means ‘able to’, in the sense of ‘if used, it distinguishes …’. This is what trade marks do (or are supposed to do).

8 In Singapore, Andrew Phang Boon Leong J (as he then was) unravelled the “skein”23 in Nations Fitting (M) Sdn Bhd v Oystertec plc,24 in which he interpreted the equivalent Singapore provision as requiring assessment in relation to the goods in question, albeit recognising that it is a low threshold for an applicant to cross at that stage and it must then not fall foul of the absolute ground of refusal in s 7(1)(b) of the Trade

Marks Act,25“devoid of distinctive character”. It is suggested that this interpretation supports the conclusion arrived at in Kerly, although it is contrary to a number of European Court of Justice (“ECJ”) judgments supporting what Kerly describes as the “German theory”.26

9 Another fundamental change in the unified EU regime is the role of the specification of goods or services in respect of which the trade mark is applied for or granted.27 Under the Trade Marks Act 1938 the rights conferred were strictly limited to particular goods, namely, those in the specification. Now, the specification of goods is only the starting point when it comes to infringement, which occurs not only when there is use of the identical or similar mark on identical or similar goods or services, regardless of whether they are in the specification or even in the same class, provided there is a likelihood of confusion,28 but also where the use is in relation to the same, similar or dissimilar goods or services when compared to those in the specification if the trade

mark is well known in Singapore and if such use is detrimental to or takes unfair advantage of the distinctive character of the earlier mark.

10 This is the first of a number of reasons as to why courts should be vigilant when considering borderline applications for registration: once registered, the mark may be used to threaten and, if they do not give up, sue those using the same or similar mark in relation even to goods dissimilar to those for which it is registered, and even if there is a defence. In relation to the latter, it was noted by Jacob J (as he then was) in Nichols plc v Registrar of Trade Marks:29

The problem with saying ‘registration will not harm the public: if a third party wants to use the mark descriptively he has a defence’ is this: that in the practical world powerful traders will naturally assert their rights even in marginal cases. By granting registration of a semi-descriptive or indeed a nearly-but-not-quite completely[30] descriptive mark, one is placing a powerful weapon in powerful hands. In marginal cases defendants, [small—and medium-sized enterprises] particularly, are likely to back off when they receive a letter before action. It is cheaper and more certain to do that than to stand and fight, even if in principle they have a defence.

11 Another reason was highlighted by the recent Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts...