Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc.

• Jurisdiction: Singapore
• Judgment Date: 09 October 2012
• Date: 09 October 2012
• Docket Number: Originating Summons No 679 of 2011
• Court: High Court (Singapore)

Staywell Hospitality Group Pty Ltd

Plaintiff

and

Starwood Hotels & Resorts Worldwide, Inc and another

Defendant

[2012] SGHC 204

Judith Prakash J

Originating Summons No 679 of 2011

High Court

Trade Marks and Trade Names—Grounds for refusal of registration—Goodwill from pre-opening advertising and opening of related good or service with same name—Whether grounds for refusal of registration under s 8 (7) Trade Marks Act (Cap 332, 2005 Rev Ed)—Section 8 (7) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Grounds for refusal of registration—Marks for similar hotel services aurally and conceptually similar but not visually similar—Any confusion potentially dispelled by mode of contracting for services—Whether grounds for refusal of registration under s 8 (2) (b)Trade Marks Act (Cap 332, 2005 Rev Ed)—Section 8 (2) (b)Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Well-known trade mark—Possibility of connection between hotels offering different qualities of service—Whether grounds for refusal of registration under s 8 (4) Trade Marks Act (Cap 332, 2005 Rev Ed)—Section 8 (4) Trade Marks Act (Cap 332, 2005 Rev Ed)

The appellant, Staywell Hospitality Group Pty Ltd (‘Staywell’), applied to register the ‘PARK REGIS’ mark on 3 March 2008 in Classes 35 and 43 of the Trade Marks Register. Sheraton, the proprietor of the mark ‘ST. REGIS’ in the same classes, and Starwood, a connected hotel operator (collectively referred to as ‘the Opponents’) filed a notice of opposition on 8 September 2008 to oppose the registration of the ‘PARK REGIS’ mark, relying on ss 8 (2) (b), 8 (4) (a)read with 8 (4) (b) (i), 8 (4) (a) read with 8 (4) (b) (ii), 7 (4) (b) and 7 (6) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (‘the Act’). The hearing took place before the Principal Assistant Registrar of Trade Marks (‘the PAR’), who held that the marks were similar and that there was a real likelihood of confusion, with potential customers being misled into thinking that Staywell's services originated from the Opponents or that there was some connection between the two parties. She accordingly found that the grounds of opposition under s 8 (2) (b)and s 8 (4) (a) read with 8 (4) (b) (i) were successful. The other grounds of opposition failed. The PAR found that the Opponents had failed to discharge their burden of proof that the Singapore public had goodwill attaching to the St. Regis Hotel Singapore within the meaning of s 8 (7) of the Act. Staywell appealed the PAR's decision on the grounds of opposition under ss 8 (2) (b)and 8 (4) of the Act. The Opponents cross-appealed the PAR's decision rejecting the grounds of opposition under s 8 (7) of the Act.

Held, allowing the appeal and dismissing the cross-appeal:

(1) In considering grounds of opposition under s 8 (2) (b) of the Act, distinctiveness would affect the global assessment of similarity. Whether distinctiveness should be examined before examining aural, conceptual and visual similarity or vice versa had to depend on the circumstances of the particular case and the assessor's determination as to which method would be more helpful in the analysis before him. In this case, the issue of distinctiveness should be considered first as the Opponents had emphasised the distinctiveness of the word ‘REGIS’ as being pivotal in the determination of aural and conceptual similarity of the Application Mark and the Opponents' Mark: at [16] and [17].

(2) The common word ‘Regis’ was not an inventive word and a great number of distinguishing elements need not be added for the marks to be dissimilar. Nevertheless, when applied to a commercial hotel, it was entirely randomly chosen. It was distinctive enough that a higher threshold for dissimilarity would apply than for the use of a common word such as ‘Glamour’ in Ozone Community Corp v Advance Magazine Publishers Inc[2010] 2 SLR 459: at [18] and [20].

(3) The marks were on the whole similar. They were aurally similar as persons enunciating both marks might pay more attention to the second distinctive word in each mark rather than to the more common first word even though they did give that first word its due pronunciation. The marks were conceptually similar as the second distinctive word employed the concept of royalty or aristocracy pictorially and aurally and they implied class, status and luxury. Given the distinctiveness of the mark, the aural and conceptual similarity offset the visual dissimilarity: at [24] and [27] to [29].

(4) The services were also similar. The difference between a four-star and six-star brand was one of price and quality but did not go towards the nature of the services provided. This was relevant to the enquiry on confusion, and not to the enquiry on the similarity of services: at [35].

(5) There was no likelihood of confusion. While the services provided were similar, the impression given by the marks was likely to be mixed due to the visual dissimilarity. The marks in the present case could not readily be detached from the hotel itself. Any confusion was likely to be dispelled either at the point of booking (through the website where both marks were prominently displayed, a travel agent, or walk-in) or check-in (for telephone bookings). There was no evidence, survey or otherwise, to indicate that there was a likelihood of confusion: at [37], [38], [43] and [44].

(6) The 30,000 Singaporean members in Starwood's customer loyalty programme, the 690,941 Singaporean visitors to the St. Regis website, and the numerous newspaper and magazine articles written about the ‘ST. REGIS’ brand and its hotel in Singapore sufficed to qualify the ‘ST. REGIS’ mark as a well-known trade mark for the purposes of s 8 (4) of the Act: at [55].

(7) The difference between s 8 (2) and s 8 (4) (b) (i) of the Act was that the former required that both marks be tied to similar goods and services, while the latter allowed a proprietor of an earlier mark to prevent registration of a later mark even though the goods and services offered by the later mark were dissimilar. The fact that ‘ST. REGIS’ was a well-known mark clearly did not a warrant a relaxation of the test of likelihood of confusion. This additional avenue was of little use to the Opponents where there was no likelihood of confusion. Given that there was no likelihood of confusion, the question of likelihood of damage was also moot: at [58] and [59].

(8) There was no goodwill attached to the ‘ST. REGIS’ brand as at 3 March 2008, the date of registration of the ‘PARK REGIS’ mark. What was important was not whether the brand name was attractive and well known but also whether it had actually brought in custom. The relevant custom related to generating income for the primary business of the hotel, viz,guest bookings and not commercial tenants. The Opponents had not discharged their burden of proof relating to the hotel's bookings and income between December 2007 and early March 2008. There was also no evidence that sales income from sale of the St. Regis Residences was generated on the basis of the merits of the St. Regis Singapore's services or because they were next to or linked with the hotel: at [68], [75], [76], [77] and [79].

British Sugar plc v James Robertson & Sons Ltd [1997] ETMR 118; [1996] RPC 281 (distd)

CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR (R) 975; [1998] 2 SLR 550 (distd)

CIR, The v Muller & Co's Margarine Ltd [1901] AC 217 (refd)

Doctor's Associates Inc v Lim Eng Wah [2012] 3 SLR 193 (distd)

Intuition Publishing Ltd v Intuition Consulting Pte Ltd [2012] SGHC 149 (refd)

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

My Kinda Bones Ltd v Dr Pepper's Stove Co Ltd [1984] FSR 289 (refd)

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

Ozone Community Corp v Advance Magazine Publishers Inc [2010] 2 SLR 459 (distd)

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

Polo/Lauren Co, LP, The v Shop In Department Store Pte Ltd [2006] 2 SLR (R) 690; [2006] 2 SLR 690, CA (folld)

Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 (distd)

Soon Peck Wah v Woon Che Chye [1997] 3 SLR (R) 430; [1998] 1 SLR 234 (folld)

Evidence Act (Cap 97, 1997 Rev Ed) s 108

Trade Marks Act (Cap 332, 2005 Rev Ed) ss 8 (2) (b) , 8 (4) , 8 (7) (a) (consd) ;ss 2 (1) (a) , 2 (8) , 7 (4) (b) , 7 (6) , 8 (4) (a) , 8 (4) (b) (i) , 8 (4) (b) (ii) , 8 (7) , 55 (3) (a)

Prithipal Singh (instructed) and Denise Mirandah (Mirandah Law LLP) for the plaintiff

Elaine Tan (Amica Law LLC) for the defendants.

Judgment reserved.

Judith Prakash J

1 This trade mark appeal pits an Australian hotel operator against two connected hotel operators based in the United States. The Australian appellant, Staywell Hospitality Group Pty Ltd (‘Staywell’), owns and operates 24 hotels, mainly in Australia and New Zealand. The American respondents, Starwood Hotels & Resorts Worldwide, Inc (‘Starwood’) and its subsidiary, Sheraton International Inc (‘Sheraton’), own and operate more than 900 hotels worldwide. The dispute here involves the ‘ST. REGIS’ trade mark belonging to Sheraton and the

trade mark belonging to Staywell.

2 Staywell operates two hotel brands - Park Regis and Leisure Inn. The first Park Regis hotel was opened in Sydney in 1972 and that hotel has been operated under the Park Regis banner continuously since then. Staywell opened a hotel in Singapore in 2010 called Park Regis Singapore and operates it as a four-star business hotel.

3 As for the ‘ST. REGIS’ brand of hotels, there are currently 17 hotels bearing this brand throughout the world. The first St. Regis hotel was opened in New York in 1902. The brand is marketed as a luxury brand with excellence and sophistication and the Opponents claim that it is highly regarded worldwide as an exclusive...