Ozone Community Corporation v Advance Magazine Publishers Inc.

• Jurisdiction: Singapore
• Judgment Date: 15 January 2010
• Date: 15 January 2010
• Docket Number: Originating Summons No 414 of 2009
• Court: High Court (Singapore)

Ozone Community Corp

Plaintiff

and

Advance Magazine Publishers Inc

Defendant

[2010] SGHC 16

Woo Bih Li J

Originating Summons No 414 of 2009

High Court

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 that time . Nevertheless, the PAR concluded that the circulation numbers did however indicate that AMP had some goodwill and reputation in Singapore , and since the further point as to whether the goodwill rested in AMP or the distributor of the GLAMOUR magazine was not argued before him, the goodwill should belong to AMP in the absence of any challenge. On the second element of misrepresentation, the PAR noted that the mere fact that a likelihood of confusion was found under s 8 (2) (b) of the Act did not automatically lead to the finding that there would be misrepresentation under passing off, as the element of misrepresentation require [d] more than just a likelihood of confusion in the sense understood under trade mark law . As there was no evidence that Ozone's HYSTERIC GLAMOUR mark was a subsidiary or spin-off of AMP's GLAMOUR mark and Ozone's and AMP's advertising retained their own special flavour, with no attempt to copy each other's style, the PAR concluded that there was clearly no misrepresentation ... as there [was] no attempt [by Ozone to try] to mislead or deceive the public as to the origin of [its] goods . In relation to the third element of damage, having found that the second element of misrepresentation was not made out, the PAR then considered it natural that there cannot be any case to damage that has occurred or that is likely to occur . Although the PAR also considered the alternative position where confusing similarity under s 8 (2) (b) of the Act might be seen as a misrepresentation, he was unconvinced by AMP's argument that its magazine was a class publication to prove damage. Accordingly, the PAR concluded that AMP's action under s 8 (4) of the Act was not made out.

Both parties appealed against the PAR's decision in respect of ss 8 (2) (b) and 8 (4) of the Act. Ozone argued that the PAR had erred in (a) finding that its HYSTERIC GLAMOUR mark was conceptually similar to Ozone's GLAMOUR mark; (b) finding that its HYSTERIC GLAMOUR mark was similar to Ozone's GLAMOUR mark on the basis of conceptual similarity alone; (c) not considering the lack of distinctiveness of AMP's earlier GLAMOUR mark; (d) finding that Ozone's goods, excluding printed matter were similar to AMP's good; and (e) finding that there was a likelihood of confusion between its HYSTERIC GLAMOUR mark and AMP's GLAMOUR mark. On its end, AMP argued that the PAR had erred in holding that: (a) its GLAMOUR mark was not visually similar to Ozone's HYSTERIC GLAMOUR mark; (b) its GLAMOUR mark was not aurally similar to Ozone's HYSTERIC GLAMOUR mark; and (c) the law of passing off would not prevent Ozone's use of the HYSTERIC GLAMOUR mark pursuant to s 8 (4) of the Act.

Held, reversing the decision of the PAR on s 8 (2) (b) of the Act and affirming the decision of the PAR on s 8 (4) of the Act and thereby allowing Ozone's HYSTERIC GLAMOUR word mark in Class 16 to proceed to registration:

(1) To successfully oppose Ozone's HYSTERIC GLAMOUR mark under s 8 (2) (b) of the Act, AMP had to first show that Ozone's HYSTERIC GLAMOUR mark and AMP's earlier GLAMOUR mark were similar. There were three aspects to similarity, viz, visual similarity, aural or phonetic similarity...