Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd

JurisdictionSingapore
JudgeGeorge Wei JC (as he then was)
Judgment Date21 August 2015
Neutral Citation[2015] SGHC 216
Plaintiff CounselMoiz Haider Sithawalla and Tham Chang Xian (Tan Rajah & Cheah)
Docket NumberTA No 11 of 2014
Date21 August 2015
Hearing Date28 January 2015
Subject Matterpassing off,conflicts with earlier marks,grounds for refusal of registration,Trade marks and trade names,registration criteria
Year2015
Citation[2015] SGHC 216
Defendant CounselTeo Kwan Soon Paul (Ravindran Associates)
CourtHigh Court (Singapore)
Published date10 September 2015
George Wei J:

This is an appeal from the principal assistant registrar of trade marks’s (“PAR”) decision, regarding Rovio Entertainment Ltd’s (“the Opponent”) opposition to Kimanis Food Industries Sdn Bhd’s (“the Applicant”) Trade Mark Application No. T1204840G.

The Opponent’s Trade Marks

The Opponent is a software development and entertainment company incorporated in Finland. Its most famous and successful product is the mobile phone game franchise Angry Birds, which was first released in 2009. According to the Opponent, the Angry Birds game has 200 million active users worldwide, and has seen 350 million downloads globally.1

The Opponent is the registered proprietor of the following trade marks:

Trade Mark Classes registered Date
T1111886Z “Red Bird Mark” 3, 9, 14, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 32, 33, 34, 35, 36, 38, 41 and 43 Priority Claim: 31 March 2011 Date of Filing: 15 April 2011
T1113897F “Angry Birds Word Mark” 3, 9, 14, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 32, 33, 34, 35, 36, 3, 41, and 43 Priority Claim: 31 March 2011 Date of Filing: 15 April 2011
(collectively, “the Opponent Marks”)

For convenience, the registered trade marks will be referred to as the “Red Bird Mark” and the “Angry Birds Word Mark”.

The Opponent also uses a stylised version of the Angry Birds Word Mark (“Fancy Word Mark”). The Fancy Word Mark is exhibited at [10] of the Opponent’s “Amended Grounds of Opposition”2. While the Fancy Word Mark is not a registered trade mark in Singapore, the Opponent has asserted that it enjoys copyright in the Fancy Word Mark.3 The Fancy Word Mark and the Red Bird Mark were registered for copyright in the USA and China.4 I reproduce the Fancy Word Mark below:

Aside from being used in respect of the Angry Birds game, the Opponent Marks (as well as the Fancy Word Mark) appear to have been used in Singapore on a wide variety of merchandise, including toys, cakes, snacks and fast food. The merchandise is not manufactured and sold by the Opponent itself. It is sold by the Opponent’s licensees. In fact, the Opponent’s business model is at least in part reliant on licensing the Opponent Marks to a wide range of businesses for their use on merchandise. That said, the date on which the use of the Opponent Marks on merchandise commenced in Singapore and the scale of such use are somewhat unclear from the evidence before me.

There is some evidence that the Angry Birds concept has been marketed in Singapore. For example, it was promoted in association with Singapore’s 2011 and 2012 Formula 1 Night Race, and the Singapore Cable Car from June 2012. It has also been advertised at the Singapore Changi airport in November 2012, and at the Takashimaya Department Store in 2011.5

The Applicant’s Trade Mark

The Applicant is a snack food manufacturer. It is a company incorporated in Malaysia. It has sold its snacks under the brands “Jimbo” and “D-Jack” in Malaysia and abroad.

The Applicant applied to register the following mark in Trade Mark Application No. T1204840G on 5 April 2012:

Trade Mark Classes registered Date
T1204840G “Angry Bite Mark” 30 Flour based savoury snacks; food products containing (principally) flour; cereal based snack food; snack food products made from maize flour; snack food products made from potato flour; snack food products made from rice flour; snack food products made from soya flour; rice based snack foods; flour confectionary; sesame snacks. Date of application: 5 April 2012
(Referred to as the “Angry Bite Mark”) The Decision below

Before the PAR, the Opponent objected to the registration of the Angry Bite Mark on the grounds of ss 8(2)(b), 8(4) and 8(7) of the Trade Marks Act (Cap. 332, 2005 Rev Ed) (“TMA”).

Five main grounds of opposition were relied on: Pursuant to s 8(2)(b) of the TMA: The Angry Bite Mark is similar to the Opponent Marks in respect of identical or similar goods, and there exists a likelihood of confusion. Pursuant to s 8(4)(a) read with s 8(4)(b)(i) of the TMA: The Angry Bite Mark (or an essential part of it) is similar to the Opponent’s earlier well known trade marks and indicates a connection in the course of trade with the likelihood of causing damage to the interests of the Opponent. Pursuant to s 8(4)(a) read with s 8(4)(b)(ii) of the TMA: The Angry Bite Mark (or an essential part of it) is similar to the Opponent’s earlier well known trade marks, the use of which will cause dilution or take unfair advantage of the earlier well known trade marks. Pursuant to s 8(7)(a) of the TMA: The Applicant’s use of the Angry Bite Mark constitutes passing off. Pursuant to s 8(7)(b): The Angry Bite Mark infringes the copyright in the Opponent’s Red Bird Mark as well as the copyright in the Fancy Word Mark.

The evidence for the Opponent comprised two statutory declarations by Mr Harri Koponen and Ms Kati Levoranta. Evidence for the Applicant consisted of a statutory declaration of Mdm Huang Len Len. No expert or survey evidence was provided.

Having considered the evidence and submissions presented by both parties, the PAR dismissed the Opponent’s opposition, and awarded costs to the Applicant (see [2014] SGIPOS 10 (“the PAR’s GD”)). In summary, the PAR held that: In relation to s 8(2)(b) of the TMA, the marks are more dissimilar than similar in totality, and there is no likelihood of confusion. In relation to s 8(4) of the TMA, the Opponent Marks are “well known in Singapore” under s 8(4)(a), but are not “well known to the public at large” under s 8(4)(b)(ii) of the TMA. Regardless, the Opponent Marks and the Angry Bite Mark are not identical or similar. Further, the Applicant’s use of the Angry Bite Mark would not indicate a connection between its goods and the Opponent. In relation to s 8(7)(a) of the TMA, under the law of passing off, there is insufficient evidence to demonstrate goodwill in the Opponent Marks, and there is no misrepresentation. In relation to s 8(7)(b) of the TMA, there is no copyright infringement because there is no proof that the Opponent Marks are original creations, and there is no proof of copying.

The present appeal

The matter is now before me on an appeal filed by the Opponent against the PAR’s decision. In the present appeal, the Opponent has dropped its objection on the ground of s 8(4)(b)(ii) read with s 8(4)(a) of the TMA which concerns earlier trade marks which are “well known to the public at large in Singapore”.6

It pursues the appeal on the ground that the PAR erred in relation to s 8(2)(b), s 8(4)(b)(i) read with s 8(4)(a), s 8(7)(a) and s 8(7)(b) of the TMA.

Legal issues

The issues that arise for my consideration in this appeal can be neatly structured around the statutory grounds upon which the Opponent relies to object to the registration of the Angry Bite Mark.

The first broad issue is whether the Opponent’s objection on the ground of s 8(2)(b) of the TMA can succeed. Specifically, the following points were canvassed: For the purposes of the similarity comparison in s 8(2)(b) of the TMA, can this court consider the separately registered Opponent Marks as a composite mark, or is the court limited to considering the Angry Bite Mark separately against the Red Bird Mark and the Angry Bird Word Mark respectively? In light of the conclusion in (a), are the Angry Bite Mark and the Opponent Marks similar? If the Applicant is allowed to register and use the Angry Bite Mark, is there a likelihood of confusion on the part of the public? I note in passing that in its submissions, the Applicant did not put in question whether the similarity of goods requirement is satisfied.7 Thus, this is not a live issue before me.

The second broad issue relates to the Opponent’s objection on the ground of s 8(4)(b)(i) read with s 8(4)(a) of the TMA. The following points arise for consideration: Is the “whole or an essential part” of the Angry Bite Mark identical or similar to either of the Opponent Marks? Are the Opponent Marks “well known in Singapore”? Would the use of the Angry Bite Mark indicate a connection between the goods of the Applicant and the Opponent? If so, is the connection likely to damage the interests of the Opponent?

The third broad issue relates to s 8(7)(a) of the TMA, namely whether the Defendant’s use of the Angry Bite Mark is liable to be prevented under the tort of passing off. The following sub-issues arise for consideration: Do the Opponent Marks generate goodwill? Will the Applicant’s use of the Angry Bite Mark amount to a misrepresentation leading to a likelihood of confusion and damage?

The fourth broad issue is whether the use of the Angry Bite Mark is liable to be prevented for copyright infringement under s 8(7)(b) of the TMA. Specifically, it is necessary to consider, Whether the Opponent has subsisting copyright in the Opponent Marks or any other relevant works; and Whether the Applicant copied a substantial part of any of the Opponent’s copyright works in creating the Angry Bite Mark.

Issue 1: s 8(2)(b) of the TMA

Section 8(2)(b) of the TMA provides as follows:

A trade mark shall not be registered if because —

(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or

(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public.

In considering if s 8(2)(b) of the TMA is made out on the facts, the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911 (“Staywell”) at [15] has affirmed the...

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