Valentino Globe BV v Pacific Rim Industries Inc.
Jurisdiction | Singapore |
Judge | Chao Hick Tin JA |
Judgment Date | 26 March 2010 |
Neutral Citation | [2010] SGCA 14 |
Published date | 01 April 2010 |
Date | 26 March 2010 |
Year | 2010 |
Hearing Date | 21 October 2009 |
Plaintiff Counsel | Ponnampalam Sivakumar (Joseph Lopez & Co) |
Citation | [2010] SGCA 14 |
Defendant Counsel | Samuel Seow and Kelvin Lee (Samuel Seow Law Corporation) |
Court | Court of Appeal (Singapore) |
Docket Number | Civil Appeal No 46 of 2009 |
This was an appeal by Valentino Globe BV (“the Appellant”) against the decision of the High Court judge (“the Judge”) in
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,
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,
Having failed before the PAR on all the grounds of its opposition, the Appellant appealed to the High Court but proceeded
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 [
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
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 (
The Bad Faith IssueWith 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”.
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 appealAs would be apparent from what was stated above (particularly at
Section 8(2) provides as follows:
A trade mark shall not be registered if because –
- 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
- 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...
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