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

• Judge: Judith Prakash J
• Judgment Date: 09 October 2012
• Neutral Citation: [2012] SGHC 204
• Citation: [2012] SGHC 204
• Court: High Court (Singapore)
• Published date: 18 October 2012
• Docket Number: Originating Summons No 679 of 2011
• Plaintiff Counsel: Prithipal Singh (instructed) and Denise Mirandah (Mirandah Law LLP)
• Defendant Counsel: Elaine Tan (Amica Law LLC)
• Subject Matter: Trade Marks and Trade names,grounds for refusal of registration,Registration criteria,distinctiveness,well-known trade mark
• Hearing Date: 18 April 2012

Judith Prakash J:

This trademark 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” trademark belonging to Sheraton and the “trademark belonging to Staywell.

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 4-star business hotel.

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 and luxury name. In Singapore, the brand is attached to a hotel called The St. Regis Singapore which opened officially in April 2008.

Background to the appeal

On 3 March 2008, Staywell applied to register the trademark in a series of two marks (“the Application Mark”) in Singapore under Singapore Trade Mark No T08/02642I in Classes 35 and 43. Class 35 deals with advertising, marketing, promotion and publicity services; business management, business administration, office functions and provision of office facilities, among other things. Class 43 basically deals with providing hotel services and other services related to or connected with the hospitality industry. The difference between the two marks in the series is that in the first mark, the device is coloured black whereas in the second, it is coloured royal purple.

Staywell’s application was published on 7 May 2008 for opposition purposes. On 8 September 2008, Sheraton and Starwood filed a notice of opposition to oppose the registration of the Application Mark. In the opposition and before me, Sheraton and Starwood took a joint stand and therefore when dealing with them jointly, I shall refer to them as the “Opponents”.

In Singapore, Sheraton is the registered proprietor of the ST. REGIS trademark in various classes. In four of these classes, namely 41, 42 (the predecessor of the current class 43), 36 and 37, the trademark is the simple word mark “ST. REGIS”. In other classes, Sheraton is the owner of a device which has no words but includes the capital letters “S” and “T” in an intertwined format. For the purpose of this judgment, I shall refer to Sheraton’s trademarks in classes 41, 42, 36 and 37 as “the Opponents’ Mark”. These trade marks were registered on various dates well before 3 March 2008.

The Opponents relied on ss 8(2)(b), 8(4)(a) read with (b)(i), 8(4)(a) read with (b)(ii), 7(4)(b) and 7(6) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”) as their grounds of opposition to the registration of the Application Mark.

After evidence was filed by both parties, the hearing took place before the Principal Assistant Registrar of Trade Marks (“the PAR”) on various dates in 2011. The PAR delivered her decision on 19 July 2011. The PAR held as follows: The Opponents had failed to discharge their burden of proof that the Singapore public had goodwill attaching to the St. Regis Hotel Singapore and therefore the ground of opposition under passing off (s 8(7)(a) of the Act) failed. On the ground of opposition under s 8(2)(b), the Application Mark and the Opponents’ Mark were on the whole similar, and the services of Staywell and the Opponents were similar, and taking into account all the surrounding circumstances, there was a real likelihood of confusion amongst the public as to the source of Staywell’s services if the Application Mark was allowed to proceed to registration. Therefore, the opposition under s 8(2)(b) was successful. On the ground of opposition under s 8(4)(a) read with (b)(i), the Opponents’ Mark was well known in Singapore as at 3 March 2008, the date of the Staywell application, and as the Application Mark and the Opponents’ Mark were similar, there was a likelihood of confusion and it was likely that potential customers would be misled into thinking that Staywell’s services originated from the Opponents or that there was some connection between the two parties. Therefore, this ground of opposition was successful. On the ground of opposition under s 8(4)(a) read with (b)(ii), the Opponents’ Marks were not well known to the public at large because the PAR was not convinced that they were known to the general public let alone most sectors of the public and the Opponents had not submitted concrete evidence to prove that their marks were recognised by most sectors of the public. As such, this ground of opposition failed. On the grounds of opposition under s 7(6) and s 7(4), both these grounds failed. First, the Opponents had not been able to establish bad faith on the part of Staywell in applying for the registration of the Application Mark in Singapore. Secondly, s 7(4) did not apply at all to the situation in this case.

Staywell has appealed against the decision of the PAR on s 8(2)(b) and on s 8(4). The Opponents lodged a cross appeal in respect of the PAR’s decision to reject the opposition under s 8(7)(a) of the Act. Staywell also appealed in respect of certain decisions that the PAR made regarding the admissibility of two sets of documents, one adduced by Staywell and the other adduced by the Opponents. I will deal with the various appeals in turn.

Appeal in relation to s 8(2)(b) of the Act

Section 8(2)(b) provides as follows:

A trade mark shall not be registered if because – (a) ... (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.

Therefore, for the registration of the Application Mark to be denied, it must be established that: The Application Mark is similar to the earlier marks viz the Opponents’ Mark; The Application Mark is to be registered for services identical or similar to those for which the Opponents’ Mark is protected; and There exists a likelihood of confusion on the part of the public because of the above.

Are the marks similar?

The authorities have established that there are three aspects of similarity to be considered in relation to competing marks: aural, visual and conceptual. In this case, the PAR found that the Application Mark and the Opponents’ Marks were not similar visually, but were similar aurally and in concept. Her finding on the visual dissimilarity is not contested by either party but Staywell does not accept that the marks are otherwise similar.

Staywell’s submission is that the marks are conceptually dissimilar as “PARK REGIS” denotes a wide open space while “ST. REGIS” denotes a person and that they are also aurally dissimilar because the first word of each mark is different and is pronounced quite differently from the other. The Opponents’ case is that the marks are aurally and conceptually similar as the dominant feature in the Opponents’ Mark is “REGIS” and not “ST. REGIS” and that REGIS is a distinctive word unlike PARK or SAINT and therefore the Application Mark has wholly incorporated the distinctive component of the Opponents’ Mark.

In Ozone Community Corp v Advance Magazine Publishers Inc [2010] SGHC 16 (“Ozone”), the court articulated a two-stage test in the determination of similarity between a trademark and a sign. The first stage was to determine to what extent the three aspects of similarity enumerated above had been met and the second stage was to enquire as to the distinctiveness of the trademark in question because the distinctiveness of the trademark is an important factor in the inquiry into the similarity between the marks under s 8(2)(b) of the Act (see Ozone at [67]). The court there observed that the PAR had erred in failing to consider the level of distinctiveness of the trademark in his inquiry into the similarity between the mark and the sign under consideration.

In the earlier case of The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] 2 SLR(R) 690 (“Polo”), the Court of Appeal considered the issue of distinctiveness before it went on to discuss whether the marks and signs involved there were similar.

The question arises as to which step should be taken first. I have adopted different approaches in different cases. In Doctor’s Associates Inc v Lim Eng Wah Trading as Subway Niche [2012] SGHC 84, I followed the order established in Ozone but in Intuition Publishing Ltd v Intuition Consulting Pte Ltd [2012] SGHC 149 (“Intuition”), I adopted the approach taken in Polo. This was because the Court of Appeal in Polo had indicated (at [10]) that a more distinct mark generally receives greater protection and on the facts before me in Intuition, this was helpful in determining how many differences there should be between the allegedly infringing sign and the registered mark to make the sign different from the mark. I do not think that there is any specific way of implementing the two-step test. Which step is adopted first must 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. The only point to be remembered is that both steps should be undertaken as distinctiveness would affect the global assessment of similarity.

In this case, I will adopt the order followed in Polo case since the...