Kellogg Company v Pacific Food Products Sdn Bhd

• Jurisdiction: Singapore
• Judgment Date: 23 November 1998
• Date: 23 November 1998
• Docket Number: Civil Appeal No 101 of 1998
• Court: Court of Appeal (Singapore)

Kellogg Co

Plaintiff

and

Pacific Food Products Sdn Bhd

Defendant

[1998] SGCA 72

M Karthigesu JA

,

L P Thean JA

and

Lai Kew Chai J

Civil Appeal No 101 of 1998

Court of Appeal

Trade Marks and Trade Names—Registration criteria—Conflicts with earlier marks—Reputation among audience—Visual differences or similarities of marks and packaging of goods—Whether use of mark likely to deceive or cause confusion—Section 15 Trade Marks Act (Cap 332, 1992 Rev Ed)—Trade Marks and Trade Names—Registration criteria—Distinctiveness—Whether mark distinctive—Phonetic equivalent of unregistrable word—Whether such phonetic equivalent registrable—Sections 10 (1) (c) and s 10 (1) (d) Trade Marks Act (Cap 332, 1992 Rev Ed)

The respondent’s mark “SmaX? was registered in Class 30 and it applied to savoury spiced snack products. The appellant Kellogg Co (“KC?) owned a Part A Registration for “Kellogg’s SMACKS? with “SMACKS? disclaimed. It obtained its Part B Registration for “SMACKS? because of a similar registration in the UK. Its mark applied to breakfast cereals. KC failed to invalidate registration of “SmaX? under s 10 of the Trade Marks Act (Cap 332, 1992 Rev Ed) (“the Act?) before the assistant registrar and the judicial commissioner. The issues on appeal were (a) whether the “SmaX? mark was registrable as a trade mark under s 10 of the Act, and (b) whether such use was likely to deceive or cause confusion to the trade and the public such that registration should not be allowed under s 15 of the Act.

Held, allowing the appeal:

(1) “Smacks? was not registrable under s 10 (1) (d) of the Act because of its lack of distinctive character following its direct reference to the character or quality of snack foods. Since a word which was phonetically equivalent to an unregistrable word was itself unregistrable, “Smax? a word phonetically equivalent to “Smacks? should also not be registered under s 10 (1) (d): at [21] and [23].

(2) “Smax? was not registrable as an invented word under s 10 (1) (c) of the Act. As much as credit should be given to the respondent’s attempts to render the mark distinctive, through the use of a stylised font, irregular capitalisation and misspelling, these peripherals were insufficient to represent a “covert and skilful allusion? to the character or quality of the goods. Any allusions which “SmaX? might have in that regard were, in the view of the court, destroyed by its phonetic equivalence to “Smacks?. At the end of the day, a creatively misspelt word could not be an “invented? one within s 10 of the Act, when it sounded like a word not registrable under that section: at [24].

(3) A factual inquiry under s 15 of the Act referred to a substantial number of persons of ordinary care and intelligence endowed with general recollection. The likelihood of confusion and deception which would arise in such audience was to be determined with reference to the similarity of the marks, the goods to which the marks applied, their packaging and the reputation of the earlier mark: at [30] and [32].

(4) The respondent had discharged its legal burden of showing that there was no likelihood of confusion or deception with the use of their “SmaX? mark. On the facts, the parties’ goods were not competing items and there were visual differences in their marks. There was also no actual evidence of confusion: at [34] and [35].

(5) The appeal was allowed on the ground that the respondent’s “SmaX? mark did not fulfil the requirements of s 10 (1) (c) or s 10 (1) (d). The appellants failed on the issue of likelihood of confusion under s 15: at [37].

“BALI? Trade Mark [1969] 1 WLR 1306; [1969] RPC 472 (folld)

“Bulova Accutron? Trade Mark [1969] RPC 102 (refd)

Crosfield & Sons Ltd’s Application,Re (1909) 26 RPC 837 (refd)

“Dustic? Trade Mark (1955) 72 RPC 151 (refd)

Eastman Photographic Materials Co Ltd’s Application (1898) 15 RPC 476 (folld)

Electrix’s Application, Re [1959] RPC 283 (folld)

“Kwik Kopy? Trade Mark [1982] RPC 102 (refd)

“Ombrella? Trade Mark [1974] RPC 683 (refd)

“Orlwoola? Trade Mark (1909) 26 RPC 850 (refd)

Philippart v William Whiteley (1908) 25 RPC 565 (folld)

Pianotist Co’s Application (1906) 23 RPC 774 (refd)

Registrar of Trade Marks v W & G Du Cros (1913) 30 RPC 660 (refd)

Smith Hayden & Co’s Application (1946) 63 RPC 97 (refd)

“Thermos Prima? Trade Mark [1991] RPC 120 (refd)

Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd [1991] 1 SLR (R) 903; [1991] SLR 133 (folld)

Trade Marks Act (Cap 332,1992 Rev Ed)ss 10 (1) (c), 10 (1) (d), 15 (consd);s 11

P Sivakumar and Jason Sim (Ella Cheong & G Mirandah) for the appellant

Tan Tee Jim and Jason Chan (Allen & Gledhill) for the respondent.

Judgment reserved.

Lai Kew Chai J

(delivering the judgment of the court):

1 This appeal centres on the opposition raised against the respondents’ mark “SmaX? (No 1532/1989) which appears thus:

2 The mark “SmaX? was accepted for registration by the Singapore Registry of Trade Marks and Patents in Class 30 (“snack foods and preparations for making snack foods?), and advertised in the Government Gazette on 22 September 1991. The appellants owned a Part A Registration for “Kellogg’s SMACKS?, with “SMACKS? disclaimed (No 80454) and a Part B Registration for “SMACKS? (No B6509/1990), the latter obtained as a result of an earlier British registration. The respondents’ mark was applied to savoury spiced snack products, appearing in a stylised jagged font (outlined against a darker shadow relief), with “S? and “X? in upper case; whereas the appellants’ marks were applied to breakfast cereals (sold as “Kellogg’s Smacks?, “Kellogg’s Sugar Smacks? or “Kellogg’s Honey Smacks?).

3 On 26 November 1991 the appellants filed their opposition to the respondents’ registration of “SmaX? as a Part A trade mark (under s 10 Trade Marks Act). Before both the assistant registrar (on 14 May 1997) and judicial commissioner on appeal (7 March 1998), the appellants failed to invalidate the “SmaX? mark. The two issues to settle on this appeal are, first, whether the respondents’ “SmaX? mark is registrable as a trade mark under s 10 Trade Marks Act (“TMA?), and secondly, whether the use of “SmaX? by the respondents is likely to deceive or cause confusion to the trade and the public such that registration of the mark should not be allowed under s 15 TMA. At all material times the appellants have relied on their own registrations in support of their opposition to the registration of the respondents’ mark.

4 Before dealing with each of these issues it is useful to outline the relevant statutory provisions which are applicable, and discuss the interface between the Part A and Part B schemes of registration in Singapore’s trade mark system.

Relevant statutory provisions

5 Sections 10 and 11 TMA are reproduced as follows:

10 (1) A trade mark (other than a certification trade mark) registrable in Part A of the register shall contain or consist of at least one of the following essential particulars:

1. (a) the name of a company, individual or firm represented in a special or particular manner;

2. (b) the signature of the applicant for the registration or some predecessor in his business;

3. ...