V V Technology Pte Ltd v Twitter, Inc.

• Jurisdiction: Singapore
• Judge: Goh Yihan JC
• Judgment Date: 23 November 2022
• Docket Number: Tribunal Appeal No 4 of 2022
• Court: High Court (Singapore)

V V Technology Pte Ltd

and

Twitter, Inc

[2022] SGHC 293

Goh Yihan JC

Tribunal Appeal No 4 of 2022

General Division of the High Court

Intellectual Property — Trade marks and trade names — Passing off — Misrepresentation — Applicant and respondent operating in same fields of business activity with similar products and services — Whether there was likelihood of misrepresentation and damage — Section 8(7)(a) Trade Marks Act (Cap 332, 2005 Rev Ed)

Intellectual Property — Trade marks and trade names — Registration criteria — Conflict with earlier marks — Applicant seeking registration of trade mark in respect of broad range of digital goods and services which overlapped with respondent's mark — Competing animal marks depicting bird in flight — Whether applicant's trade mark was similar to respondent's trade mark — Section 8(2)(b) Trade Marks Act (Cap 332, 2005 Rev Ed)

Intellectual Property — Trade marks and trade names — Registration criteria — Distinctiveness — Respondent's mark depicting two-dimensional profile of small bird in flight that was arbitrary and meaningless in relation to goods and services — Respondent's bird mark consisting of simple geometry — Whether respondent's mark possessed high level of inherent technical distinctiveness — Whether respondent's mark possessed high level of non-technical distinctiveness — Section 8(2)(b) Trade Marks Act (Cap 332, 2005 Rev Ed)

Held, dismissing the appeal:

What “distinctiveness” should mean in the marks-similarity inquiry

(1) The concept of “technical distinctiveness” was introduced for the first time into Singapore trade mark law in the case of Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc[2014] 1 SLR 911 (“Staywell”), where the Court of Appeal drew a distinction between technical and non-technical distinctiveness. This idea originated from the English Court of Appeal decision of Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc[2002] EWCA Civ 1534 (“BUD”). However, Lord Walker in BUD was merely intending to illustrate existing principles in his own words rather than setting out any new distinction, and the term “technical distinctiveness” had not been mentioned in subsequent decisions emanating from the UK and other Commonwealth jurisdictions. Before Staywell, the case law was already quite stable in terms of the taxonomy employed to describe the two well-accepted concepts in trade mark law in what Staywell labelled as “non-technical distinctiveness” and “technical distinctiveness”: at [35] to [37] and [43].

(2) Taxonomical uncertainty had resulted after Staywell's introduction of new terms, and if this court was not so bound, it would have respectfully suggested that the word “distinctiveness” should simply mean “technical distinctiveness” without the need to attach any appellation as Lord Walker in BUD never intended to introduce any taxonomical change, and there was and remained a stable taxonomical practice for the various terms. But as this court was bound by higher authority, it could only suggest a more consistent use of the relevant expressions with the understanding that “distinctiveness” bore the following three meanings in so far as it applied to the marks-similarity inquiry: (a) inherent technical distinctiveness; (b) acquired technical distinctiveness; and (c) non-technical distinctiveness. Further, inherent technical distinctiveness and acquired technical distinctiveness were distinctions that applied only to technical distinctiveness: at [52] and [60] to [62].

How “distinctiveness” should be applied in the marks-similarity inquiry

(3) Despite the Court of Appeal's guidance in Staywell that distinctiveness was a factor integrated into the marks-similarity inquiry, there were numerous cases that had treated distinctiveness as a separate threshold inquiry. This had become common practice as it was probably simpler to deal with the assessment of distinctiveness separately as a matter of practicality, as opposed to truly integrating it into each step of the visual, aural and conceptual marks-similarity analysis. However, reasons of convenience and practicality were not good enough to unilaterally decide to depart from what was clearly a binding authority emanating from the Court of Appeal: at [65], [67], [74] and [76].

(4) Quite apart from stare decisis, there were substantive reasons why distinctiveness should not be analysed as a separate step. The first was the need for conceptual certainty. Second, the precise meaning of distinctiveness would depend on the context in which it was being applied, and to coalesce the issue of distinctness into a single “threshold” risked obscuring the context. It was thus important to not treat distinctiveness as a separate, threshold enquiry: at [77] to [79].

Acquired technical distinctiveness should not be considered at the marks-similarity inquiry

(5) There was a related problem as to whether acquired technical distinctiveness (which would require the consideration of external matter) should be considered in the marks-similarity inquiry. This issue arose from two apparently contradictory propositions in Staywell, namely: (a) that distinctiveness was an integral factor in the marks-similarity inquiry; and (b) the assessment of marks-similarity was mark-for-mark without consideration of any external matter. The court was of the view that acquired technical distinctiveness should not be considered at the marks-similarity inquiry for reasons based on precedent, principle and policy: at [80], [82] and [90].

(6) In terms of precedent, the decisions at the Registry and High Court levels were of no direct assistance as there were no clear answer derived. Looking at the Court of Appeal cases both before and after the seminal decision in Staywell, a close examination would reveal that while there might have been rather strong obiter comments on the issue, none of these statements actually formed the ratio decidendi of the case as the controversial issue of acquired technical distinctiveness did not have to be decided in the end. Given the inconclusiveness of the other apex court decisions, the court had to therefore turn to Staywell itself where the tenor behind the judgment was that the Court of Appeal likely regarded the inquiry of acquired technical distinctiveness to include considerations of external matter, and these would go beyond the mark-for-mark comparison at the marks-similarity stage. The recognition in Staywell that technical distinctiveness comprised both inherent and acquired technical distinctiveness was meant to be descriptive and not prescriptive, and hence, the Court of Appeal likely did not intend to contradict its own statement that the mark-for-mark assessment had to be done without consideration of any external matter. As a matter of precedent, this court was bound by Staywell to find that acquired technical distinctiveness should not be considered at the marks-similarity stage: at [92], [95], [100], [104], [106] and [109].

(7) Taking this view was also consistent with principle as, amongst other reasons, this would uphold the distinction between the issue of resemblance between the competing marks and the question of the effect of such resemblance. The question of the effect of resemblance between the marks on the perception of consumers should only be considered at the likelihood of confusion stage. By considering acquired technical distinctiveness at the likelihood of confusion stage (as opposed to the marks-similarity stage), there was also the benefit of avoiding the evaluation of the same kind of evidence twice over at different stages. As a matter of policy, such a rule would stop the adducing of much irrelevant evidence with the attendant cost consequences on all parties: at [110] and [115] to [118].

Whether the competing marks were similar

(8) In relation to visual similarity, the Registered Mark had a normal level of distinctiveness from a visual perspective in all aspects of the concept, and would correspondingly enjoy only a normal threshold before a competing sign would be considered to be dissimilar to it: at [129].

(9) When comparing between competing animal marks, the court might be guided by: the general shape, movement, features and composition of the animals depicted in the competing marks. By themselves, these guidelines were result-neutral and did not slant in favour of a particular type of mark: at [132].

(10) The competing marks were visually similar considering the general shape and composition of the competing marks of a two-dimensional, side profile of a small bird with curvilinear features, swept back wings opening out, etc. The court should not focus on pedantic stylistic dissimilarities based on a side-by-side comparison of the marks. The general movement of the competing marks was also similar as the average consumer with imperfect recollection would simply perceive two birds which were in flight. In relation to general features, the court should not adopt a “detailed spot-the-difference” comparison and the various differences identified by the applicant in the beak, eyes, etc, were ultimately trivial and unlikely to feature in the average consumer's overall impression of the marks. Thus, the competing marks had a fair degree of visual similarity: at [135], [137], [152], [153], [155] and [156].

(11) Aural similarity was not relevant because, amongst other reasons, device-only marks by definition did not contain an oral component that might be subject to analysis: at [157] and [158].

(12) On conceptual similarity, there was no immutable rule that conceptual similarity should be considered as a more important or less important factor when dealing with device marks. The PAR adopted the correct level of analysis in assessing the conceptual similarity of the competing marks as involving birds in flight. The PAR did not conduct the analysis at too high a level of abstraction. The competing marks were...