Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd

• Judgment Date: 31 October 2005
• Date: 31 October 2005
• Docket Number: Originating Motion No 26 of 2005
• Court: High Court (Singapore)

Richemont International SA

Plaintiff

and

Goldlion Enterprise (Singapore) Pte Ltd

Defendant

[2005] SGHC 208

Andrew Ang J

Originating Motion No 26 of 2005

High Court

Trade Marks and Trade Names–Registration–Opposition to registration of trade mark–Whether trade mark for which registration being sought similar to opponent's earlier registered mark–Whether likelihood of confusion on the part of the public–Whether application for registration of trade mark made in bad faith–Sections 8 (2) (b), 8 (3) Trade Marks Act (Cap 332, 2005 Rev Ed)

The respondent applied to register “Jean Mercier” (“the Respondent's Mark”) in a series of three marks in Class 14 under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”). The appellant's predecessors-in-title Baume & Mercier SA, which had trade mark registrations for “Baume & Mercier” in Class 14, filed a Notice of Opposition to the respondent's application. Baume & Mercier SA subsequently assigned the rights in the trade mark “Baume & Mercier” (“the Appellant's Mark”) to the appellant. The Principal Assistant Registrar (“the PAR”) of the Singapore Registry of Trade Marks dismissed the appellant's opposition to the respondent's application. The appellant appealed to the High Court. The main question before the court was whether registration of the Respondent's Mark should be denied by virtue of s 8 (2) (b) of the Act.

Held, dismissing the appeal:

(1) Three requirements had to be satisfied if registration of a trade mark was to be denied under s 8 (2) (b) of the Act: (a) the trade mark in question had to be similar to the earlier trade mark; (b) the trade mark in question was to be registered for goods identical with or similar to those for which the earlier trade mark was protected; and (c) there existed a likelihood of confusion on the part of the public: at [7].

(2) In determining whether trade marks were similar, their visual, aural and conceptual similarity had to be considered. Apart from the word “Mercier”, the visual differences between the two marks were clear. Besides, the common denominator “Mercier” was not even the distinctive feature in the Appellant's Mark such that the addition of the word “Jean” would be ineffective to obscure the similarity. This was important because the more distinctive a mark, the greater the protection it was to be accorded: at [8] and [13].

(3) Aurally, the two marks were also not similar. First, the Appellant's Mark was a combination of two surnames linked by an ampersand whereas the Respondent's Mark was just one name comprising a first name “Jean” and the surname “Mercier”. Second, as far as pronunciation was concerned, “Baume” and “Jean” did not sound the same. As for conceptual similarity, the appellant's construction was not well-founded and was too far-fetched: at [14].

(4) The PAR, having already made a determination that the goods were identical from a comparison of the specifications, erred in law by going on further to consider factors that determined whether there was similarity between goods which were not identical or identically described. In any event, the respondent had conceded that the goods, when viewed from a global context, were at best “similar goods”. The second requirement was satisfied whether the goods were identical or similar: at [18] and [19].

(5) The mere association which the public might make between two trade marks because of their similar semantic content was not in itself a sufficient basis for concluding that there was a likelihood of confusion in the absence of any possibility of a misapprehension as to the origin of the goods and services: at [20].

(6) Under s 8 (2) of the Act, the likelihood of confusion had to arise from the identity or similarity between the trade marks as well as from the identity or similarity between the goods or services. As such, once it was found that the marks in the instant case were dissimilar, the conclusion had to be that no likelihood of confusion arose even though the goods might be similar: at [21] and [24].

(7) The test for likelihood of confusion ought to be the same for ss 8 (2) and 8 (3) of the Act as for s 15 of the earlier Trade Marks Act (Cap 332, 1992 Rev Ed), viz whether there was a real prospect that ordinary sensible members of the public may be confused: at [25].

(8) In relation to the appellant's ground of opposition under s 8 (3) of the Act, while it was true that the goods were not similar, the marks were not similar either. Since it was an essential requirement that the marks had to be identical or similar, the PAR did not err in declining to consider the other requirements in s 8 (3). Since even in relation to similar goods the PAR had found that there was no likelihood of confusion, a fortiori there would be no likelihood of confusion for goods which were not similar: at [27].

(9) As for the appellant's opposition based on passing off, the appellant's argument that the PAR had erred in law by holding that the first element of passing of was the requirement of deception or confusion arising out of the goodwill and reputation in the appellant's earlier marks was an unwarranted conclusion from the PAR's Grounds of Decision. It seemed clear from the Grounds of Decision that the first element referred to goodwill and reputation and not to deception or confusion: at [29] to [31].

(10) An allegation that an application to register a mark had not been made in good faith should not be made unless it could be fully and properly pleaded and should not be upheld unless it was distinctly proved and this would rarely be possible by a process of inference. The appellant's allegation in the present case was not substantiated by evidence concretely showing that there was bad faith on the part of the respondent: at [32] and [33].

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

Broadhead's Application for Registration of a Trade Mark, In the Matter of (1950) 67 RPC 209 (refd)

Harris Simons Construction Ltd,Re [1989] 1 WLR 368; [1989] BCLC 202 (folld)

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

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

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

Pianotist Company Ld for the Registration of a Trade Mark, In the Matter of an Application by the (1906) 23 RPC 774 (folld)

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

Premier Brands UK Ltd v Typhoon Europe Ltd [2000] FSR 767 (folld)

Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491; [1990] RPC 341 (refd)

“Royal Enfield” Trade Marks [2002] RPC 24 (refd)

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

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

Wagamama Ltd v City Centre Restaurants Plc [1995] 32 IPR 613 (folld)

WILD CHILD Trade Mark [1998] RPC 455 (refd)

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

Trade Marks Act (Cap 332, 2005 Rev Ed)ss 8 (2) (b), 8 (3) (consd);ss 2 (1),7 (1) (a),7 (1) (b),7 (5),7 (6),8 (2),8 (6),8 (7) (a)

Trade Marks Act1994 (c 26) (UK)ss 5 (2),10 (2)

Max Ng and Daryl Ong Toon Howe (Max Ng & Co) for the appellant

Aloysius Leng and Laurel Loi (AbrahamLow LLC) for the respondent.

Judgment reserved.

Andrew Ang J

1 This is an appeal against the decision of the Principal Assistant Registrar (“the PAR”) of the Singapore Registry of Trade Marks dismissing the appellant's opposition to the respondent's Singapore Trade Mark Application No T00/20034I (“the Respondent's Application”).

2 The Respondent's Application was to register “Jean Mercier” (“the Respondent's Mark”) in a series of three marks in Class 14 under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”) for:

Watches; clocks; tie clips; tie pins; buckles of precious metals; keychains; cufflinks; jewellery and costume jewellery; all included in Class 14.

3 The Respondent's Application was advertised in the Trade Marks Journal No 5 of 2002 dated 1 February 2002. The appellant's predecessors-in-title, Baume & Mercier SA, filed a Notice of Opposition (“the Opposition”) to the Respondent's Application on 31 May 2002. Baume & Mercier SA subsequently assigned the trade mark applications, registrations, goodwill and/or any other rights in, inter alia, the trade mark “Baume & Mercier” (“the Appellant's Mark”) and other associated trade marks to the appellant.

4 The appellant has 16 trade mark registrations for “Baume & Mercier” and other variations in Singapore and four of these registrations are found in Class 14:

(a) Trade Mark Registration No T89/02404I “Baume & Mercier” (word) in Class 14 for “jewellery, articles not included in other classes made of precious metal or coated therewith, precious stones, clocks and watches”.

(b) Trade Mark Registration No T01/00944H “Baume & Mercier Linea” (word) in...