Mobil Petroleum Co, Inc v Hyundai Mobis

JurisdictionSingapore
JudgeLee Seiu Kin J
Judgment Date30 June 2008
Neutral Citation[2008] SGHC 104
Date30 June 2008
Subject MatterBad faith,Whether close resemblance between opposed mark and earlier mark,Section 8(3) Trade Marks Act (Cap 332, 1999 Rev Ed),Whether similarity between opposed mark and earlier mark should lead to finding of bad faith,Similarity of goods and likelihood of confusion,Connection, confusion and damage to interests,Whether use of opposed mark was registered for goods or services identical with or similar to those for which earlier mark was protected,Whether use of opposed mark in relation to goods or services for which registration was sought would indicate connection between those goods or services and proprietor of earlier mark,Trade Marks and Trade Names,Whether there would be likelihood of confusion on part of public,Grounds for refusal of registration,Section 8(2) Trade Marks Act (Cap 332, 1999 Rev Ed),Section 8(4) Trade Marks Act (Cap 332, 1999 Rev Ed),Passing off,Section 7(6) Trade Marks Act (Cap 332, 1999 Rev Ed)
Docket NumberOriginating Summons No 1577 of 2007
Published date09 July 2008
Defendant CounselGoh Yoke Hong Karol and Ang Kai Hsiang (Alban Tay Mahtani & De Silva LLP)
CourtHigh Court (Singapore)
Plaintiff CounselLai Tze Chang Stanley, Vignesh Vaerhn and Lim Ming Hui Eunice (Allen & Gledhill LLP)

30 June 2008

Judgment reserved.

Lee Seiu Kin J:

1 This is an appeal by the applicant (“Mobil”) against the decision of the Principal Assistant Registrar of Trade Marks (“the PAR”) allowing the application of the respondent (“Hyundai Mobis”) for registration of the mark T02/05501Z (“the Opposed Mark”), which was described in Mobil’s written submission as follows:

Mark

Class

Goods

MOBIS

12

Automobile apparatus and equipment, automobile mechanisms, engines automobile bodies, sections, devices including safety and anti-theft devices, automobile componentary segments, parts, fittings, and accessories for automobiles being goods in Class 12.

2 The application to register the Opposed Mark was filed on 17 April 2002. The Opposed Mark was published for opposition on 1 August 2003 and Mobil filed its Notice of Opposition to the registration of the Opposed Mark on 1 December 2003. As the date of the application to register the Opposed Mark was 17 April 2002, the relevant version of the legislation would be the 1999 Revised Edition of the Trade Marks Act (Cap 332)(“the Act”).

Grounds of Opposition

3 In its Notice of Opposition, Mobil set out the following grounds of opposition:

(a) Registration of the Opposed Mark would be contrary to s 8(2) of the Act;

(b) Registration of the Opposed Mark would be contrary to s 8(3) of the Act;

(c) Registration of the Opposed Mark would be contrary to s 8(4) of the Act;

(d) Registration of the Opposed Mark would be contrary to s 7(6) of the Act; and

(e) Registration of the Opposed Mark would be contrary to s 7(1) of the Act.

4 Mobil relied on its MOBIL and MOBIL derivative trade marks in Singapore in support of its opposition to the Opposed Mark. These are set out in the appendix to the Notice of Opposition. There are 26 registered trade marks, most of which are in Class 4, with some registrations in Classes 2, 9, 16, 19, 35, 36 and 37.

5 The grounds for opposition based on ss 8(2) and 8(3) of the Act are set out in paragraph 6 of the Notice of Opposition as follows:

By virtue of the registrations and use of the Opponent’s MOBIL and MOBIL derivative Trade Marks and because of the similarity of the Application Mark to the Opponent’s MOBIL and MOBIL derivative Trade Marks, registration of the Application Mark, if allowed, would be contrary to the provisions of Sections 8(2) and 8(3) of the Trade Marks Act (Chapter 332). [emphasis in original]

6 The grounds for opposition based on s 8(4) of the Act are set out in paragraph 7 of the Notice of Opposition as follows:

By reason of the reputation and goodwill established in the Opponent’s MOBIL and MOBIL derivative Trade Marks, the use of the Application Mark in relation to the goods for which registration is sought is calculated to deceive or cause confusion and will lead to the Applicant’s goods being passed off as or mistaken for that of the Opponent’s. Such use by the Applicant is also likely to lead to the belief that there is some connection in the course of trade between the Applicant and the Opponent when in fact no such connection exists. Registration of the Application Mark, if allowed, would therefore be contrary to Section 8(4) of the Trade Marks Act (Chapter 332). [emphasis in original]

7 The grounds for opposition based on s 7(6) of the Act are set out in paragraph 8 of the Notice of Opposition as follows:

By virtue of the prior registrations and use of the Opponent’s MOBIL and MOBIL derivative Trade Marks, the Applicant cannot claim to be the bona fide owner of the Application Mark and registration of the Application Mark would therefore be contrary to Section 7(6) of the Trade Marks Act (Cap 332). [emphasis in original]

8 The grounds for opposition based on s 7(1) of the Act are set out in paragraph 9 of the Notice of Opposition as follows:

By reason of the prior registrations and use of the Opponent’s MOBIL and MOBIL derivative Trade Marks, the Application Mark is devoid of any distinctive character and therefore registration of the Application Mark would be contrary to Section 7(1) of the Trade Marks Act (Cap 332). [emphasis in original]

However this was not pursued by Mobil in this appeal and I need not deal with it.

Background Facts

9 The PAR heard the opposition on 26 June 2007 and gave her decision on 26 September 2007. In her grounds of decision, she set out the background facts at [4]–[14]:

Opponents’ Evidence

4. The Opponents’ evidence was declared by Robert E Harayda, the Assistant Controller of Exxon Mobil Corporation which is the parent company of the Opponents. He is also the Vice President of Opponents. He has been employed by the Exxon Mobil Corporation or its affiliates for 20 years and has been the Vice President of the Opponents since 1 January 2003. The Opponents are a subsidiary of Mobil Corporation which until 1999 was an independently owned global gas and oil company. In 1999 Mobil Corp was acquired by Exxon Mobil Corp. The Opponents are an indirect subsidiary of both Exxon Mobil Corp and Mobil Corp.

5. The Opponents or other Exxon Mobil companies are the registered proprietors or applicants of the trade mark Mobil or Mobil derivative marks in several classes in Singapore or worldwide. IN Singapore they have 49 registrations and they have numerous registrations in about 179 countries around the world. Some of the countries where they have registrations are Australia, China, European Union, Hong Kong, New Zealand, Thailand, United Kingdom and United States of America.

6. In their booklet Mobil: A Century in Singapore (Exhibit M-7) the Opponents state that the Mobil’s first predecessor Vacuum Oil opened a company in Singapore in 1893. Vacuum Oil was the first to use the mark Mobiloil in Singapore. Vacuum Oil teamed up with Standard Oil Company of New York (Socony) and by 1931, the Flying Red Horse with the word Mobilgas underneath it was used by the Vacuum-Socony Corporation in Singapore. In 1955, the company changed its name to Socony Mobil Company Inc in America. In 1966, it changed the company name to Mobil Oil Corporation in America. In Singapore the Mobil Refining Singapore Sdn Bhd was incorporated in 1963. In 1966 Mobil opened its refinery in Jurong. Sometime in the 1960s the first petrol station bearing the name Mobil was opened in Singapore. In 1971 Mobil Refining Singapore Sdn Bhd changed its name to Mobil Oil Singapore Pte Ltd.

7. Exxon Mobil companies’ sales of fuel products under the mark Mobil in Singapore are as follows:

1999 S$ 169 m

2000 S$ 195 m

2001 S$ 218 m

2002 S$ 191 m

2003 S$ 195 m

8. Exxon Mobil companies’ sales of lubricant products under the Mobil mark in Singapore are as follows:

2001 US$ 139 m

2002 US$ 116 m

2003 US$ 116 m

9. Exxon Mobil companies’ expenditure on promotions and advertising for lubricants and LPG under the Mobil mark are as follows:

1995 S$ 1.3 m

1996 S$ 1.9 m

1997 S$ 2.7 m

1998 S$ 1.9 m

1999 S$ 1.6 m

10. The Exxon Mobil’s companies advertising and promotion expenditure on the Mobil brand of products for the subsequent years are combined with the Esso brand of products and these figures are as follows:

2000 S$ 1.5 m

2001 S$ 4.7 m

2002 S$ 2.5 m

2003 S$ 3.1 m

11. The Mobil mark has been listed in the Business Week magazine as the one of the 100 Top Brands. In the year 2002 it was ranked 89 with a brand value of US$2.36 billion and in the year 2004 it was ranked 96 with a brand value of US$2.4 billion. In the booklet Mobil: A Century years in Singapore (Exhibit 7) published in 1993 for their century in Singapore celebration, it is stated that the company had 43 service stations in Singapore. In 1991 Mobil Asia Pacific Pte Ltd (MAPPL) was set up to coordinate activities in Singapore, Malaysia, Hong Kong, Taiwan, China, Thailand, the Philippines and Guam/Micronesia and it was awarded Operational Headquarters status by the Economic Development Board. In 1977 Mobil proposed the first Singapore Arts Festival and since then it remains its principal sponsor. It is a founding member and supporter of the Singapore Cultural Foundation and Singapore Symphony Orchestra and has been awarded the Patron of the Arts Award on 4 occasions. Mobil organizes the Mobil Marathon once in 2 years and has started the Mobil Athlete Adoption Scheme. Mobil also brings into Singapore world renowned speakers for the Annual Singapore Lecture. It also sponsors national school events like Chemistry and Physics Olympiads and the NUS National Economics Quiz.

Applicants’ Evidence

12. The Applicants’ evidence was declared by Myung-Ki, the manager in charge of intellectual property rights of the Applicants. He has been employed by the Applicants or their affiliates for 13 years. The Applicants say their company was established in 1977 in Korea as Hyundai Precision & Ind. Co and that they changed their name to Hyundai Mobis in November 2000. The Applicants are in the business of designing and supplying automotive parts for Hyundai, Kia and other automobile companies in Korea and around the world. They say that they are the largest auto parts manufacturer in Korea. The Applicants state that the mark Mobis is derived from the combination of the words mobile and system. Mobile refers to automobiles and system refers to the harmonization of the complicated mechanical apparatus, therefore Mobis refers to an enterprise specializing in the manufacture of automobile components and system.

13. The Applicant has registrations and pending applications for the Mobis mark in 58 countries around the world. They say that their mark and the Opponents’ Mobil mark co-exist in 13 countries throughout the world namely, Algeria, Aruba, Chile, Czech, Djibouti, Ecuador, Korea, Myanmar, Nepal, Norway, Rep Dominicana, USA and Zimbabwe. They say that in Algeria, Chile, Djibouti and USA their marks co-exist in the same class namely, class 12.

14. The Applicants state that they first commenced use of the mark in Korea in November 2000. Since then their goods bearing their mark have been...

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5 cases
  • Mobil Petroleum Company, Inc. v Hyundai Mobis
    • Singapore
    • Court of Appeal (Singapore)
    • 5 August 2009
    ...("the Judge"). The Judge, in a reserved judgment, dismissed the appeal by the appellant (see Mobil Petroleum Co, Inc v Hyundai Mobis [2008] 4 SLR (R) 427). He agreed with the PAR that conceptually the MOBIL mark and the opposed mark were not similar and that there was no indication of a con......
  • MediaCorp News Pte Ltd v Astro All Asia Networks PLC
    • Singapore
    • High Court (Singapore)
    • 3 August 2009
    ...Mark was not a well-known mark in Singapore. She considered two cases, Mobil Petroleum Company Inc v Hyundai Mobis (“Mobil Petroleum”) [2008] 4 SLR 427 and Amanresorts Limited v Novelty Pte Ltd [2008] 2 SLR 32 (“Amanresorts”) in arriving at her decision. First, the PAR considered that in Mo......
  • P. T. Swakarya Indah Busana v Haniffa Pte Ltd and another
    • Singapore
    • High Court (Singapore)
    • 30 March 2012
    ...burden of proving that a mark is registered in bad faith lies in the party asserting it, see Mobil Petroleum Co, Inc v Hyundai Mobis [2008] 4 SLR(R) 427 at [41]. A high standard of proof is required, see Nautical Concept Pte Ltd v Jeffery Mark Richard and another [2007] 1 SLR(R) 1071 at [15......
  • MediaCorp News Pte Ltd v Astro All Asia Networks PLC
    • Singapore
    • High Court (Singapore)
    • 3 August 2009
    ...Mark was not a well-known mark in Singapore. She considered two cases, Mobil Petroleum Company Inc v Hyundai Mobis (“Mobil Petroleum”) [2008] 4 SLR 427 and Amanresorts Limited v Novelty Pte Ltd [2008] 2 SLR 32 (“Amanresorts”) in arriving at her decision. First, the PAR considered that in Mo......
  • Request a trial to view additional results
1 books & journal articles
  • Intellectual Property Law
    • Singapore
    • Singapore Academy of Law Annual Review No. 2008, December 2008
    • 1 December 2008
    ...are reviewing is interesting because it is the first case to look at the scope of s 8(3). 17.29 In Mobil Petroleum Co Inc v Hyundai Mobis[2008] 4 SLR 427, the High Court was concerned with the registrability of the ‘MOBIS’ mark (shown below) for automobile parts. The trade mark applicant wa......

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