Mobil Petroleum Company, Inc. v Hyundai Mobis

• Court: Court of Appeal (Singapore)
• Judgment Date: 05 August 2009
• Docket Number: Civil Appeal No 98 of 2008 (Originating Summons No 1577 of 2007)
• Date: 05 August 2009

Mobil Petroleum Co, Inc

Plaintiff

and

Hyundai Mobis

Defendant

[2009] SGCA 38

Chao Hick Tin JA

,

Andrew Phang Boon Leong JA

and

V K Rajah JA

Civil Appeal No 98 of 2008 (Originating Summons No 1577 of 2007)

Court of Appeal

Trade Marks and Trade Names–Well-known trade mark–Refusal of registration–Automobile parts manufacturer registering trade mark which was similar to that used by oil and oil lubricant company–Whether use of later trade mark in relation to goods and services for which later trade mark was sought to be registered would indicate connection between those goods and services and proprietor of earlier trade mark–Whether there was likelihood of confusion on part of public because of such use–Whether interests of proprietor of earlier trade mark were likely to be damaged by such use–Section 8 (3) Trade Marks Act (Cap 332, 1999 Rev Ed)

Trade Marks and Trade Names–Well-known trade mark–Whether appellant was entitled to rely on ss 4 (2), 28 (2) and 55 Trade Marks Act (Cap 332, 2005 Rev Ed) to oppose registration of respondent's trade mark–Sections 4 (2), 28 (2) and 55 Trade Marks Act (Cap 332, 2005 Rev Ed)

The appellant was the registered proprietor of the trade mark MOBIL in the oil and oil lubricant business. The respondent, on the other hand, designed and manufactured automobile parts. The appellant opposed the registration of the respondent's trade mark MOBIS on the ground that it was similar to the registered MOBIL trade mark and could,inter alia, give rise to confusion under s 8 (3) of the Trade Marks Act (Cap 332, 1999 Rev Ed) ("TMA"). The two trade marks were designed differently, and the respondent gave evidence that the MOBIS trade mark was derived based on the concept of combining the two words "Mobile" and "System", which meant "an enterprise specialising in the manufacture of automobile component and system". The High Court found that the trade marks were conceptually not similar and that there was no indication of a connection between the goods bearing the MOBIS mark and the appellant. In the result, the High Court held that there was no likelihood of confusion on the part of the public and dismissed the appellant's case. Nonetheless, the High Court opined (albeit obiter) that had the requirements of "connection" and "confusion" been made out under s 8 (3), there was enough evidence to find that the interests of the appellant would likely be damaged by use of the respondent's trade mark. The appellant then appealed against the High Court's decision. The appellant also argued for the first time before the Court of Appeal, that ss 4 (2), 28 (2) and 55 of the Trade Marks Act (Cap 322, 2005 Rev Ed) ("TMA 2005") gave the appellant additional rights to oppose the MOBIS trade mark.

Held, dismissing the appeal:

(1) The law of passing off required a trade mark to possess goodwill in Singapore before a plaintiff could succeed in his claim whereas the TMA dispensed with such a requirement for well known marks. Therefore, caution had to be exercised before applying any tests derived from the law of passing off to the law of well known marks under the TMA. That being said, there were much similarities between the two regimes because the provisions in the TMA on the protection of well known marks were introduced to supplement the protection already afforded to well known marks under the common law. Therefore, there should be a level of commensurability between the standards adopted in both the common law and statutory regimes: at [19] to [34].

(2) The essential prerequisites of s 8 (3) were satisfied and it was undisputed that the MOBIL trade mark was a well known mark. The only matters in dispute were the requirements of "connection", "confusion" and "damage" under s 8 (3): at [15] to [18].

(3) On the requirement of "connection" under s 8 (3) (ii), there was no need to show confusion of the public since this was already an express requirement under s 8 (3) (iii). A "connection" under s 8 (3) could relate to a connection as to trade origin, quality or as to business. A business connection suggested some business relationship between the owner of the earlier trade mark and the goods or services covered by the opposed trade mark. In this case, there was no connection under s 8 (3) (ii) as a connection was not a mere association between Mobil and MOBIS or a mere expectation that Mobil would expand into the field which the MOBIS trade mark was to be registered: at [48], [49], [51] to [54] and [59] to [62].

(4) On the requirement of "confusion" under s 8 (3) (iii), proof of this requirement did not exempt a plaintiff from showing that there was a "connection" under s 8 (3) (ii). Each element required under s 8 (3) had to be proven serially. The "global confusion test" under s 8 (2) was equally applicable to show "confusion" under s 8 (3) (iii) and "confusion" had to be based on a substantial portion of the public. In this case, there was no "confusion" because the trade channels of both Mobil and Hyundai Mobis were different, and an average consumer who saw MOBIS automobile parts would be slow to confuse them with Mobil. Even if the appellant provided a novel one stop service for motorists, including the provision of vehicle repair services, the novel concept would in itself reduce the likelihood of confusion. In any case, educated consumers in Singapore were unlikely to be confused: at [64], [69], [82] and [85] to [88].

(5) On the requirement of "damage" under s 8 (3) (iv), while the scope of "interests" protected under the section was broad, it did not extend to non-confusing types of dilution of the well known mark by way of blurring or tarnishment. Under s 8 (3) (iv), any damage to interests would flow from "confusion" shown under s 8 (3) (iii). Possible heads of damage (but by no means exhaustive) could include restriction on the expansion of trade mark use and risk of litigation. In this case, there would not be any damage to the appellant's interests because the appellant would not have suffered from a diversion of sales, and because the registration of the MOBIS trade mark would not have restricted the ability of the appellant to expand the use of its MOBIL trade mark. In any case, even if there was a mere likelihood of damage to the appellant's interests, this was in itself insufficient to oppose the registration of the MOBIS trade mark under s 8 (3) unless the requirements of "connection" and "confusion" were also shown to have been met: at [93], [96], [99] to [106] and [108] to [111].

(6) On the issue of opposing the MOBIS trade mark based on ss 4 (2), 28 (2) and 55 of the TMA 2005, this would be tantamount to fudging distinct provisions in the trade mark legislation. These provisions did not relate to the opposition of trade marks and since the law of registration was exhaustively set out in Part II of the trade mark legislation, conceptual clarity between different provisions in the legislation had to be maintained: at [113] to [119].

Amanresorts Ltd v Novelty Pte Ltd [2008] 2 SLR (R) 32; [2008] 2 SLR 32 (refd)

Associated Newspapers Group Plc v Insert Media Ltd [1991] FSR 380 (refd)

Barnsley Brewery Co Ltd v RBNB [1997] FSR 462 (refd)

Britesmile International, Ltd v Smile Inc Asia Pte Ltd [2005] SGIPOS 9 (refd)

Caterpillar Inc v Ong Eng Peng [2006] 2 SLR (R) 669; [2006] 2 SLR 669 (refd)

CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR (R) 975; [1998] 2 SLR 550 (refd)

Chelsea Man Menswear Ltd v Chelsea Girl Ltd [1987] RPC 189 (refd)

Future Enterprises Pte Ltd v McDonald's Corp [2007] 2 SLR (R) 845; [2007] 2 SLR 845 (refd)

Frank Reddaway and Frank Reddaway & Co, Ltd v George Banham and George Banham & Co, Ltd [1896] AC 199 (refd)

HP Bulmer Ltd and Showerings Ltd v J Bollinger SA and Champagne Lanson Pere et Fils [1978] RPC 79 (refd)

Hyundai Mobis v Mobil Petroleum Co, Inc [2007] SGIPOS 12 (refd)

Illustrated Newspapers, Ltd v Publicity Services (London), Ltd [1938] Ch 414 (refd)

J Bollinger v Costa Brava Wine Co Ltd (No 2) [1961] 1 WLR 277 (refd)

McDonald's Corp v Joburgers Drive-In Restaurant (Pty) Ltd (1996) 35 IPR 11 (refd)

Neutrogena Corp v Golden Ltd [1996] RPC 473 (refd)

North Cheshire & Manchester Brewery Co v Manchester Brewery Co [1899] AC 83 (refd)

Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR (R) 216; [2009] 3 SLR 216 (refd)

Pensonic Corp Sdn Bhd v Matsushita Electric Industrial Co Ltd [2008] SGIPOS 9 (refd)

Philips Electronics NV v Remington Consumer Products [1998] RPC 283 (refd)

Polo/Lauren Co, LP, The v Shop In Department Store Pte Ltd [2005] 4 SLR (R) 816; [2005] 4 SLR 816 (refd)

Polo/Lauren Co, LP, The v Shop In Department Store Pte Ltd [2006] 2 SLR (R) 690; [2006] 2 SLR 690 (refd)

Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40 (refd)

Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd [2006] 1 SLR (R) 401; [2006] 1 SLR 401 (refd)

Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 (refd)

Spalding (AG) & Bros v A W Gramage Ltd (1915) 32 RPC 273 (refd)

Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd [2000] 2 SLR (R) 214; [2000] 3 SLR 145 (refd)

Tie Rack Plc v Tie Rack Stores (Pty) Ltd (1989) (4) SA 427 (refd)

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

York Pacific Holdings Ltd v U-Re Auto Sdn Bhd [1998] 5 MLJ 84 (refd)

Trade Marks Act (Cap 332,1999 Rev Ed)ss 8 (2), 8 (3), 27 (3) (consd);ss 7 (1) (b), 7 (6),8 (2) (b),8 (3) (a),8 (3) (b),8 (3) (i),8 (3) (ii),8 (3) (iii),8 (3) (iv),8 (4) (a),55 (1)

Trade Marks Act (Cap 332,2005 Rev Ed)ss 4 (2), 8 (4), 28 (2), 55 (consd);ss 2 (1),8 (4) (b) (i),8 (4) (b) (ii) (A), 55 (3),55 (3) (a),55 (4),55 (5)

Trade Marks Act1993 (South Africa)s 35

Trade Marks Act 1994 (c 26) (UK)s 56

Trade Marks Act1995 (Cth)s 120 (3)

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