Valentino Globe BV v Pacific Rim Industries Inc

• Jurisdiction: Singapore
• Court: Court of Appeal (Singapore)
• Judge: Chao Hick Tin JA
• Judgment Date: 26 March 2010
• Neutral Citation: [2010] SGCA 14
• Citation: [2010] SGCA 14
• Defendant Counsel: Samuel Seow and Kelvin Lee (Samuel Seow Law Corporation)
• Published date: 01 April 2010
• Plaintiff Counsel: Ponnampalam Sivakumar (Joseph Lopez & Co)
• Hearing Date: 21 October 2009
• Date: 26 March 2010
• Docket Number: Civil Appeal No 46 of 2009
• Subject Matter: Trade Marks and Trade Names

Chao Hick Tin JA (delivering the grounds of decision of the court): Introduction

This was an appeal by Valentino Globe BV (“the Appellant”) against the decision of the High Court judge (“the Judge”) in Valentino Globe BV v Pacific Rim Industries Inc [2009] 4 SLR(R) 577 (“the GD”) where the Judge rejected the Appellant’s opposition to Pacific Rim Industries Inc’s (“the Respondent”) application for the registration of the latter’s mark known as the “Emilio Valentino & V Device” (“the Application Mark”).

Factual background

On 18 December 2003, the Respondent of 5359 Valley Blvd, Los Angeles California 90032, United States of America, filed the Application Mark for registration in respect of “Leather goods; all included in Class 18 [of the Nice Classification, ie, the International Classification of Goods and Services under the Nice Agreement]”. The registration application was accepted and advertised on 25 June 2004 in the Trade Marks Journal. On 25 August 2004, a notice of opposition was filed by the Appellant, who owned trade mark registration rights in Singapore for an array of “Valentino” trade marks bearing multifarious designs. Collectively, these “Valentino” trade marks shall hereinafter be referred to as “the Valentino Marks”.¹

The Appellant pursued its objection to the Application Mark before the Principal Assistant Registrar (“PAR”) of the Registry of Trade Marks, relying on various grounds of opposition including, inter alia, ss 7(6) and 8(2) of the Trade Marks Act (“TMA”) (Cap 332, 1999 Rev Ed) (“TMA 1999”). At this juncture, we should explain that although the TMA 1999 was amended in 2004 by Act No 20 of 2004 (“the 2004 Amendment Act”), ss 7(6) and 8(2) of the TMA 1999 were in no way affected by the 2004 Amendment Act. In July 2005, a new revised edition of the TMA, incorporating all the amendments made thereto, was published (“TMA 2005”). What were ss 7(6) and 8(2) of the TMA 1999 are now the same provisions in the TMA 2005, which is the current edition of the Act in force here. For ease of reference, these two provisions will be referred to hereinafter simply as “s 7(6)” and “s 8(2)” respectively.

Having failed before the PAR on all the grounds of its opposition, the Appellant appealed to the High Court but proceeded only under ss 7(6) and 8(2). The High Court upheld the decision of the PAR, for largely the same reasons. Before this court, the Appellant again relied only on ss 7(6) and 8(2). The Appellant’s arguments were essentially as follows: Pursuant to s 8(2), the registration of the Application Mark should not be allowed because there existed a likelihood of confusion on the part of the public as the Application Mark was similar to the Appellant’s Valentino Marks and was to be registered for similar or identical goods (“the Confusingly Similar Issue”). Pursuant to s 7(6), the registration of the Application Mark should not be allowed because of the Respondent’s bad faith (“the Bad Faith Issue”).

The findings of the Judge The Confusingly Similar Issue

In so far as the Confusingly Similar Issue was concerned, while the PAR found that among all the Valentino Marks, only T99/04403D and T00/21726H (“the Relevant Marks”) could be said to be similar to the Application Mark², she eventually found, having carefully examined the marks, that the Relevant Marks were aurally and conceptually dissimilar to the Application Mark.³ The Judge agreed with the findings of the PAR.

The first argument raised by the Appellant was that the array of Valentino Marks evinced a “monopoly claimed [sic] to the device mark [of the word mark Valentino on its own] as well as the composite mark consisting of both the word Valentino and the V device” (the GD at [25]). In response, the Judge remarked that the Appellant could not and did not have a monopoly of the word “Valentino” and noted that if it did, “the many marks which contain the word “Valentino” would never have been registered to begin with” (the GD at [26]).

The Appellant also argued that the “Application Mark, which reads “Emilio Valentino”, would result in a misimpression that it was another mark in the Valentino Mark series, thereby resulting in public confusion” (the GD at [25]). In this regard, the Judge held that (and this is an important point) (the GD at [26]):

[V]iewing the Application Mark and the Appellant’s Relevant Marks holistically, I find that there is indeed little similarity, be it visually, aurally or conceptually. Even though the common denominator between the Application Mark and the Appellant’s trade marks is the word “Valentino”, the Application Mark consists of several other distinguishing features as the PAR had pointed out. Accordingly, I am of the view that the use of the Application Mark would not result in a likelihood of confusion. The most outstanding difference between the Application Mark and the Relevant Marks is, to my mind, the name “Emilio” in the former. That the name “Emilio” precedes “Valentino” is a very glaring difference between the marks because in the aural sense especially, they are very distinct from one another. One would hear the name “Emilio” before “Valentino” when pronouncing the Application Mark and reading-wise, one would very likely read the name “Emilio” first too. The Application Mark must be viewed in its entirety. Simply because it incorporates the word “Valentino” does not mean that it is so visually and aurally similar as to be confused with the Appellant’s Relevant Marks.

We would, at this juncture, note that in so far as the argument based on s 8(2) was concerned, the Appellant was (in its appeal to this court) relying only on the following two Valentino Marks: T89/07704E (registered under Class 25 of the Nice Classification) and T89/07703G (registered under Class 25 of the Nice Classification) (collectively, “the Appeal Marks”), instead of the Relevant Marks (see [5] above), to aver that the registration of the Application Mark would cause confusion⁴. In relation to T89/07704E (with its counterpart being registered as T89/07702I under Class 18 of the Nice Classification), the Judge was of the view that this particular Valentino Mark which contained the words “valentino garavani” was dissimilar to the Application Mark. This was his reasoning at [28]:

Simply because the word “valentino” is embedded within the marks does not make “Emilio Valentino” and “valentino garavani” similar to each other. Juxtaposing the “valentino garavani” trademark against the Application Mark, I am hard pressed to find any similarity save for the common constituent word “valentino”, but even that similarity is far from compelling as the Application Mark uses the capital letter “V” in spelling “Valentino” whereas the Appellant’s mark uses the lowercase letter “v”. Further, “valentino” in the Appellant’s “valentino garavani” trademark precedes the word “garavani” whereas in the Application Mark, “Valentino” only comes after the word “Emilio”. Visually and aurally, the marks are thus more distinct than similar.

Turning to the second Valentino Mark (ie, T89/07703G) which the Appellant relied upon for the purposes of this appeal, the Judge also rejected the contention that T89/07703G was similar to the Application Mark. He described the differences between these two marks at [29] of his GD as follows:

With regard to T89/07703G, the word “valentino” is above the ‘V’ endless belt device … . The positioning of the word “Valentino” in relation to the device is thus unlike that in the Application Mark which has the words “Emilio Valentino” below, not above the stylized “V”.

The Bad Faith Issue

As regards the Bad Faith Issue, both the Judge and the PAR were of the view that “[s]ince it was the Appellant which had alleged bad faith on the part of the Respondent, … the burden rests upon the Appellant to prove such bad faith” (the GD at [20]). The specific instances of bad faith alleged by the Appellant were: (a) the Respondent’s hijacking of its Valentino Marks; (b) the Respondent’s lack of proprietorship with regard to the Application Mark; and (c) the Respondent’s copying of the Application Mark from a gentleman in Italy who shared an identical mark with the Respondent (see the GD at [20]). After a detailed and careful examination of the evidence before him, the Judge dismissed all the allegations.

The issues in this appeal

As would be apparent from what was stated above (particularly at [4]), there were, in essence, two issues in this appeal. First, the Appellant submitted that the Respondent’s application to register the Application Mark was made in bad faith pursuant to s 7(6). Second, that confusion was likely to arise in the minds of the public on account of the fact that the Application Mark was similar in particular to the Appeal Marks and was proposed to be registered for similar goods as those of the Appellant, contrary to s 8(2). Accordingly, on either or both grounds, the Appellant contended that the Application Mark should not be registered. We would also add that before us, the Appellant’s main fire-power was concentrated on s 7(6) instead of s 8(2). Accordingly, we will first deal with the Confusingly Similar Issue based on s 8(2), which we can dispose of briefly.

The Confusingly Similar Issue: whether there existed a likelihood of confusion on the part of the public as the Application Mark was similar to the Appeal Marks and was to be registered for similar or identical goods

Section 8(2) 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...