Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp)

• Jurisdiction: Singapore
• Judge: Tan Lee Meng J
• Judgment Date: 27 December 2006
• Neutral Citation: [2006] SGHC 241
• Date: 27 December 2006
• Subject Matter: Whether "Careree" so nearly resembling appellant's prior registered "Carefree" mark that confusion and/or deception likely to arise,Appellant registered owner of "Carefree" mark for "catamenial products, sanitary tampons, napkins and napkin belts for hygiene",Whether registration of respondent's mark should be refused,Whether use of respondent's "Careree" mark on "napkins and pads for wear by person prone to incontinence" calculated to deceive and cause confusion leading to respondent's goods being passed off as and mistaken for appellant's goods,Registration criteria,Section 8(2) Trade Marks Act (Cap 332, 1999 Rev Ed),Passing off,Section 8(4) Trade Marks Act (Cap 332, 1999 Rev Ed),Trade Marks and Trade Names,Conflicts with earlier marks,Appellant opposing registration of respondent's "Careree" mark
• Docket Number: Originating Summons No 657 of 2006
• Published date: 28 December 2006
• Defendant Counsel: Patrick Yap (K L Tan & Associates)
• Court: High Court (Singapore)
• Plaintiff Counsel: Dedar Singh Gill (Drew & Napier LLC)

27 December 2006 Judgment reserved.

Tan Lee Meng J

1 The appellant, Johnson & Johnson (“Johnson”), an American company, opposed an application by the respondent, Uni-Charm Kabushiki Kaisha (Uni-Charm Corporation) (“Unicharm”), a Japanese company, to register the trademark “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 trademark “Carefree” for “catamenial products, sanitary tampons, napkins and napkin belts for hygiene” in Class 5 and that the use of “Careree” will amount to passing off. The Assistant Registrar of Trade Marks (“Assistant Registrar”) dismissed Johnson’s case and allowed Unicharm to proceed with the registration of its mark. Johnson appealed against her decision.

Background

2 Johnson’s trade mark “Carefree” has been registered in Singapore and in several other countries. This mark has been extensively used elsewhere since 1965 and goods sold under the “Carefree” mark have been sold in Singapore for more than 15 years. In 2002, local sales of “Carefree” female hygiene products amounted to $2.3m while advertising costs to promote “Carefree” products in Singapore amounted to $528,000.00.

3 On 18 January 2000, Unicharm applied for the registration of its mark “Careree” in Class 5 under application number TOO/00698D. The application was advertised on 30 April 2002. On 30 August 2002, Johnson lodged a Notice of Opposition.

4 Johnson’s grounds of opposition included the following:

(i) Through long and extensive use, the Opponents’ mark has secured valuable goodwill and reputation in the marks. The “CAREFREE” marks have also become well-known to the trade and public and [are] distinctive of the Opponents’ goods. The Applicants’ application for “Careree” is so nearly resembling the Opponents’ “CAREFREE” marks that confusion and/or deception are likely to arise. Registration of the Applicants’ mark will be contrary to section 8(2) … of the Trade Marks Act

(ii) The use by the Applicants of the “Careree” mark on the goods applied for is calculated to deceive and cause confusion and will lead to such goods being passed off t to be mistaken for the Opponents’ goods. The Applicants’ mark should therefore be refused in the exercise of the Registrar’s discretion under section 8(4) of the Trade Marks Act….

5 At the hearing of the Opposition on 26 October 2005, Johnson’s counsel informed the Assistant Registrar that Johnson was only relying on s 8(2)(b) and s 8(4)(a) of the Trade Marks Act (Cap 332, Rev Ed, 1999) (the “Act”). The Assistant Registrar held that Johnson’s opposition failed on both grounds.

Section 8(2)(b) of the Act

6 Johnson’s first ground of opposition rests on section 8(2)(b) of the Act, which provides as follows:

A trade mark shall not be registered if because - …

(b) it is similar to an earlier trademark 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.

7 What needs to be determined is whether “Careree” is similar to the earlier trademark, “Carefree”, whether goods to be sold under the “Careree” mark are identical with or similar to those sold under the “Carefree” mark and whether there exists a likelihood of confusion on the part of the public.

8 For the purpose of determining whether two marks are similar, reference may be made to Pianotist Co’s Application (1906) 23 RPC 774, where Parker J said:

You must take the two words. You must judge of them both by their look and by the sound. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of these trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion – that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but there will be a confusion in the mind of the public which will lead to confusion in the goods – then you may refuse the registration or rather you must refuse the registration in that case.

9 Whether there is a similarity of marks is essentially a question of fact. In so far as visual similarity is concerned, I agree with the Assistant Registrar that the two marks “Carefree” and “Careree” are visually similar. Both marks begin with the word “Care” and end with “ree”, with only a missing “f” to distinguish the first mark from the second mark. In the context of multi-lingual Singapore, it is pertinent to note that as a general rule, it is assumed that non-English-speaking audiences will pay little attention to verbal or textual, as opposed to visual references: see Modus Vivendi v Keen (World Marketing) [1996] EIPR D-82.

10 As for aural similarity, it is worth noting that in Aristoc Ltd v Rysta Ltd [1945] 62 RPC 72, Luxmore LJ said:

The answer as to the question whether the sound of one word resembles too nearly the sound of another … must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused.

11 A person with an imperfect recollection of Johnson’s mark, which is pronounced as two words “Care” and “free”, may find that Unicharm’s mark, which may be pronounced as two words “Care” and “ree” rather similar. Admittedly, Unicharm’s mark may also be pronounced by some as three words, namely “Care”, “re” and “ree”. All the same, as Unicharm’s mark may be pronounced as two words as well, I find that there is an aural similarity between the two marks. Moreover, it has been noted in many cases that the first syllable of a mark is most important as there is “a tendency of persons using the English language to slur the termination of words”: see London Lubricants (1925) 42 RPC 264, 269.

12 As for whether there are conceptual differences between the two marks, Unicharm claims that “Carefree” is an ordinary English word whereas “Careree” is an invented word. It also asserted that “Carefree” denotes that the user of the goods under this mark would be carefree, that is without any care whereas its mark “Careree” refers to the care and concern which its goods have for the users. There is no rule that an invented word would necessarily be conceptually different from an earlier registered mark that is an ordinary English word. Admittedly, in Premier Brands UK Ltd v Typhoon Europe Ltd [2000] FSR 767, Neuberger J was of the view that the two marks “TY.PHOO” and “TYPHOON” were conceptually different but it cannot be overlooked that he had accepted that the two marks were not visually similar. In contrast, in the present case, the marks “Carefree” and “Careree” are rather similar. If all circumstances are taken into account, the argument that “Carefree” and “Careree” are conceptually different holds no water.

13 It is worth noting that in Jordache Enterprises Inc v Millennium Pte Ltd [1984-1985] SLR 566, the court held that the mark “Jordane” is similar to “Jordache”. In Mystery Drinks GmbH v OHIM [2004] ETMR (18) 217, “Mystery” was refused registration for non-alcoholic drinks as the mark “Mixery” had already been registered for beer. In similar vein, the English High Court held “Viagra” and “Viagrene” to be similar. Other cases where marks have been held to be confusingly similar include “Pruriderm” and “Prioderm” (Pruriderm Trade Mark [1985] RPC 187) and “Eucerin” and “Eudermin” (Icart SA’s Application [2000] ETMR 180). There can be no doubt there is greater similarity between “Carefree” and “Careree” than any of the marks compared in these other...