Ozone Community Corporation v Advance Magazine Publishers Inc.

JurisdictionSingapore
CourtHigh Court (Singapore)
Judgment Date15 January 2010
Docket NumberOriginating Summons No 414 of 2009
Date15 January 2010

[2010] SGHC 16

High Court

Woo Bih Li J

Originating Summons No 414 of 2009

Ozone Community Corp
Plaintiff
and
Advance Magazine Publishers Inc
Defendant

Gill Dedar Singh and Ruby Tham (Drew & Napier LLP) for the applicant

Stanley Lai, Vignesh Vaerhn and Eunice Lim (Allen & Gledhill LLP) for the respondent.

Application No 1568121 in the name of Global Spa, Re; and Re Opposition thereto under No 45679 in the name of Advance Magazine Publishers Inc (refd)

Application No 2136517A in the name of IPC Magazines Ltd to register a trade mark in Classes 9, 16 & 35, Re; and Re Opposition thereto under No 50532 by Liberty Media for Women LLC (refd)

Application No 2242582A by the Secretary to the Quorn Hunt to register a series of trade marks in Classes 9, 13, 16, 18, 21, 25 and 41,Re; and Re Opposition No 90056 by Marlow Foods Ltd (O-319-04) (refd)

Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87 (refd)

Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65 (refd)

British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (refd)

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

City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 (folld)

Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 (not folld)

European Ltd, The v The Economist Newspaper Ltd [1998] ETMR 307 (refd)

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

Itochu Corp v Worldwide Brands, Inc [2007] SGIPOS 9 (refd)

Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp) [2007] 1 SLR (R) 1082; [2007] 1 SLR 1082 (refd)

Julius Sämaan Ltd v Tetrosyl Ltd [2006] FSR 42 (refd)

Kellogg Co v Pacific Food Products Sdn Bhd [1998] 3 SLR (R) 904; [1999] 2 SLR 651 (refd)

Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd [2000] 1 SLR (R) 687; [2000] 2 SLR 766 (refd)

Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [2000] FSR 77 (refd)

Lloyd Schuhfabrik Meyer v Klijsen Handel BV, Case C-342/97 [1999] 2 CMLR 1343 (refd)

McDonald's Corp v Future Enterprises Pte Ltd [2004] 2 SLR (R) 652; [2004] 2 SLR 652 (refd)

McDonald's Corp v Future Enterprises Pte Ltd [2005] 1 SLR (R) 177; [2005] 1 SLR 177 (refd)

MediaCorp News Pte Ltd v Astro All Asia Networks plc [2009] 4 SLR (R) 496; [2009] 4 SLR 496 (refd)

Mystery Drinks GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) , Karlsberg Brauerei KG Weber Intervening [2004] ETMR 217 (refd)

Nautical Concept Pte Ltd v Jeffery Mark Richard [2007] 1 SLR (R) 1071; [2007] 1 SLR 1071 (refd)

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

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 (folld)

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

Sports Café Ltd v Registrar of Trade Marks (1998) 42 IPR 552 (refd)

Valentino Globe BV v Pacific Rim Industries Inc [2009] 4 SLR (R) 577; [2009] 4 SLR 577 (refd)

Rules of Court (Cap 322,R 5, 2006 Rev Ed) O 87r 4 (2)

Trade Marks Act (Cap 332,1992 Rev Ed) s 15

Trade Marks Act (Cap 332,1999 Rev Ed) ss 8 (2) (b) , 8 (4) , 27 (2) (b) (consd) ;ss 8 (3) ,27 (2) ,75 (2) (a)

Trade Marks and Trade Names–Registration criteria–Grounds for refusal of registration–Whether applicant's goods similar to opponent's goods–Applicable principles and considerations in assessing similarity between goods–Section 8 (2) (b) Trade Marks Act (Cap 332, 1999 Rev Ed)

Trade Marks and Trade Names–Registration criteria–Grounds for refusal of registration–Whether applicant's trade mark similar to opponent's earlier registered trade mark–Applicable principles and considerations in assessing aural similarity between compared word marks–Section 8 (2) (b) Trade Marks Act (Cap 332, 1999 Rev Ed)

Trade Marks and Trade Names–Registration criteria–Grounds for refusal of registration–Whether applicant's trade mark similar to opponent's earlier registered trade mark–Applicable principles and considerations in assessing visual similarity between compared word marks–Section 8 (2) (b) Trade Marks Act (Cap 332, 1999 Rev Ed)

Trade Marks and Trade Names–Registration criteria–Grounds for refusal of registration–Whether applicant's trade mark similar to opponent's earlier registered trade mark–Consideration of level of distinctiveness in earlier trade mark–Section 8 (2) (b) Trade Marks Act (Cap 332, 1999 Rev Ed)

Trade Marks and Trade Names–Registration criteria–Grounds for refusal of registration–Whether applicant's trade mark similar to opponent's earlier registered trade mark–Whether all three elements of visual similarity, aural or phonetic similarity and conceptual similarity between compared trade marks had to be satisfied before marks could be adjudged to be similar–Whether distinctiveness in earlier trade mark had to be considered in inquiry into similarity between compared marks–Section 8 (2) (b) Trade Marks Act (Cap 332, 1999 Rev Ed)

Trade Marks and Trade Names–Registration criteria–Grounds for refusal of registration–Whether applicant's trade mark similar to opponent's earlier registered trade mark–Whether similarity between compared marks might be founded on conceptual similarity alone–Applicable principles and considerations in assessing conceptual similarity between compared word marks–Section 8 (2) (b) Trade Marks Act (Cap 332, 1999 Rev Ed)

Trade Marks and Trade Names–Registration criteria–Grounds for refusal of registration–Whether likelihood of confusion on part of public–Applicable principles and considerations in assessing likelihood of confusion on part of public–Section 8 (2) (b) Trade Marks Act (Cap 332, 1999 Rev Ed)

Tort–Passing off–Goodwill–Misrepresentation–Damage to goodwill–Whether applicant's mark misrepresentation to public leading or likely to lead public to believe applicant's goods were opponent's goods–Standard of proof where opponent's earlier registered trade mark descriptive in nature–Applicable principles and considerations in assessing misrepresentation–Section 8 (4) Trade Marks Act (Cap 332, 1999 Rev Ed)

Tort–Passing off–Goodwill–Misrepresentation–Damage to goodwill–Whether opponent's trade mark had goodwill in Singapore–Standard of proof where opponent's earlier registered trade mark descriptive in nature–Section 8 (4) Trade Marks Act (Cap 332, 1999 Rev Ed)

Ozone Community Corporation ( Ozone ), a company engaged in the design and retailing of fashion apparel (such as clothing, bags and footwear) and fashion accessories for both men and women, applied to register its word mark, HYSTERIC GLAMOUR, in Class 16, in respect of paper and cardboard; industrial packaging containers of paper; towels of paper; table napkins of paper; hand towels of paper; handkerchiefs of paper; paper patterns; tailors' chalk; table cloths of paper; blinds of paper; banners of paper; flags of paper; baggage tags; printed matter; paintings and calligraphic works; photographs, photograph stands; playing cards; stationery and study materials ( Ozone's goods ). Ozone's application was opposed by Advance Magazine Publishers Inc ( AMP ), the registered proprietor of the word mark, GLAMOUR, in, inter alia, Class 16, in respect of magazines, books and publications ( AMP's goods ). AMP's GLAMOUR word mark was used primarily in conjunction with GLAMOUR magazine, a magazine devoted to the reporting and portraying of, inter alia, contemporary women's fashion and beauty. The HYSTERIC GLAMOUR and the GLAMOUR word marks were devoid of stylisation, embellishment or device.

Before the Principal Assistant Registrar of Trade Marks ( the PAR ), AMP based its opposition on, inter alia, ss 8 (2) (b) and 8 (4) of the Trade Marks Act (Cap 332, 1999 Rev Ed) ( the Act ). While AMP's opposition under s 8 (4) of the Act failed, its opposition under s 8 (2) (b) of the Act succeeded.

The decision of the PAR vis-à-viss 8 (2) (b) of the Act was as follows. With regard to the first requirement of similarity of marks, the PAR held that while Ozone's HYSTERIC GLAMOUR mark and AMP's GLAMOUR mark were visually and aurally dissimilar, they were however conceptually similar. On the basis of such conceptual similarity alone, the PAR then concluded that both word marks were similar within the meaning of s 8 (2) (b) of the Act. In relation to the second requirement of similarity of goods, the PAR held that Ozone's goods and AMP's goods (ie, only the Class 16 goods specified by Ozone and AMP) were similar. As for the third and last requirement of likelihood of confusion on the part of the public, the PAR, after identifying the relevant segment of the public to be the entire group of women who read magazines for leisure and [who] are fashion conscious ( the relevant public ), then held that although Ozone's HYSTERIC GLAMOUR mark and AMP's GLAMOUR mark were visually and aurally dissimilar, the conceptual similarity between both word marks could, given the overlap between Ozone's and AMP's business, give rise to a likelihood of confusion on the part of the relevant public if the word marks were affixed on similar goods. Accordingly, the PAR concluded that the AMP's action under s 8 (2) (b) of the Act was made out.

The decision of the PAR vis-à-vis s 8 (4) of the Act was as follows. With regard to the first requirement of goodwill or reputation, the PAR observed that although AMP claimed that its use of the GLAMOUR mark in Singapore started from 1984, apart from a table and random invoices that did not date beyond 2000, there was no good evidence that AMP's magazine started selling in Singapore from 1984. The PAR also noted that the highest circulation of AMP's magazine at 903 copies in Singapore was unimpressive and a number that [was] disproportionately low for the population of Singapore that [was] around 3 million at...

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