Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd
Jurisdiction | Singapore |
Judge | George Wei JC (as he then was) |
Judgment Date | 21 August 2015 |
Neutral Citation | [2015] SGHC 216 |
Plaintiff Counsel | Moiz Haider Sithawalla and Tham Chang Xian (Tan Rajah & Cheah) |
Docket Number | TA No 11 of 2014 |
Date | 21 August 2015 |
Hearing Date | 28 January 2015 |
Subject Matter | passing off,conflicts with earlier marks,grounds for refusal of registration,Trade marks and trade names,registration criteria |
Year | 2015 |
Citation | [2015] SGHC 216 |
Defendant Counsel | Teo Kwan Soon Paul (Ravindran Associates) |
Court | High Court (Singapore) |
Published date | 10 September 2015 |
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
The Opponent is the registered proprietor of the following trade marks:
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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
There is some evidence that the
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:
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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:
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:
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 issuesThe 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:
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:
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:
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,
Section 8(2)(b) of the TMA provides as follows:
A trade mark shall not be registered if because —
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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
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