This article looks at the recent decision by the Intellectual Property Office of Singapore (IPOS) in the Matter of a Trade Mark Application by Hardwood Pte Ltd and subsequent Opposition by GCIH Trademarks Limited [2021] SGIPOS 6.
Background
This case involves an opposition proceeding commenced by GCIH Trademarks Limited (the "Opponent") against Singapore trademark application for "OT TANGO" in Class 30 filed by Hardwood Pte Ltd.
The Opponent is in the food production business and holds trademark registrations in numerous countries around the world, including Singapore, for a range of "TANGO" word and composite marks which are used in relation to chocolates and confectionary since 1991. Meanwhile, the Applicant is part of the Orang Tua Group ("OT Group") based in Indonesia and producing a range of daily necessities including food and beverages. The applicant claimed that their "OT TANGO" trademark was initially launched as a brand of wafer in Indonesia in 1994 and first used in Singapore in 2000.
In this dispute, the Opponent alleged that "OT TANGO" is too similar to the Opponent's "TANGO" trademarks which may result in confusion amongst the relevant public, and would amount to the tort of passing off. They also claimed that "TANGO" is a well-known mark in Singapore and the registration of "OT TANGO" in Class 30 is likely to damage their interests.
Decision Summary
The Opposition was successful as the Principal Assistant Registrar ("PAR") was convinced that the marks are similar to a significant degree as they share a common denominator, and the element "OT" would not serve to distinguish them. The tort of passing off was successfully established by the Opponent but the well-known status of the Opponent's mark was not decided by the Registrar as the Opponent had already succeeded on two out of its three claims.
Under the assessment for marks similarity, the Registrar found that the goods covered by the marks were identical as they relate to "chocolate and cocoa related products" in Class 30 and were visually, aurally and conceptually similar to a significant degree such that these elements point towards a finding of likelihood of confusion. As the goods were considered everyday products which would not attract a high degree of attention, the average consumer would be misled to think that "OT" is the manufacturer of "TANGO" chocolate/confectionary or that both entities are commercially related.
The presence of the additional textual element "OT" did not assist the Applicant in their submissions that the marks are dissimilar. However, we wish to highlight two important issues which were raised and clarified at this part of the decision (the stage of mark comparison) which may be of interest to trademark practitioners:
- whether evidence relating to acquired distinctiveness may be considered during the marks-similarity assessment; and
- whether the inclusion of a house mark may assist in enhancing the dissimilarities between two potentially conflicting marks.
In relation to the first issue, the Opponent had adduced sales and advertising figures and contended that "TANGO" enjoyed a greater level of distinctiveness because it has been using the mark in Singapore since 1991 and their goods were sold in various renowned supermarkets in Singapore. The Opponent submitted that the evidence strengthened the case for marks-similarity against the Application Mark, but this argument was rejected by the PAR as it should be reserved for the stage of confusion assessment.
Therefore, we now understand that evidence relating to acquired distinctiveness has a bearing at the stage of confusion assessment as such evidence relates to the effect of resemblance from the consumers' perception, and not at the similarity assessment stage.
With regards to the second issue, the Applicant argued that the presence of "OT" introduces the idea of a brand identity which was the distinguishing factor between the marks. However, the PAR was of the view that "OT" and "TANGO" were found to be equally distinctive in relation to the goods and "OT" alone was insufficient to draw the consumers' attention away from the common denominator "TANGO". "OT", by itself, failed to communicate a trade source to the average consumer that it actually meant "Orang Tua". The outcome would have been different if the mark in issue was a house mark followed by a term which is descriptive or non-distinctive.
The Opponent's claim for passing off was also successful as the Opponent had established the likelihood of confusion for similar goods. The element of goodwill was established through the Opponent's evidence of use of its "TANGO" marks in Singapore in connection with chocolate and confectionary for several years prior to the date of application of "OT TANGO", 31 May 2018. Lastly, damage was established as the products were in direct competition and misrepresentation was likely to result in the diversion of sales or loss of sales by the Opponent.
Conclusion
As detailed above, this decision provides two important takeaways for all practitioners and businesses. First, it addresses the appropriate juncture where evidence of acquired distinctiveness may be adduced for the Registrar's consideration in an opposition based on marks similarity. Secondly, it provides additional guidance to practitioners and businesses in assessing whether the incorporation of a house mark may be sufficient (or insufficient) to enhance the dissimilarities between two potentially competing marks prior to filing an application.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
