In the matter of a Trade Mark Application by Floor Xpert Pte. Ltd. [2022] SGIPOS 9 (20 May 2022), an ex parte hearing was conducted to determine the registrability of the word mark FLOOR XPERT.
The Adjudicator held that the mark had in fact acquired distinctiveness, and that use of a corporate name, domain name and/or social media handle can potentially constitute trade mark use.
Examiners' view: Deficiencies in evidence
The application had encountered objections on the basis that FLOOR XPERT was non-distinctive and descriptive in relation to class 37 services, including floor maintenance.
Floor Xpert Pte. Ltd. ("the applicant") filed arguments and evidence to try to establish that FLOOR XPERT had acquired distinctiveness. However, the Examiners considered the applicant's evidence to be deficient and raised concerns about the following:
a) the corporate name, "FLOOR XPERT PTE. LTD.";
b) the domain name (www.floorxpert.com);
c) the social media handle @FloorXpert; and
d) the applicant's stylised mark.
When the objections were maintained in a fourth examination report, the applicant requested a hearing.
Adjudicator's view: Valid evidence of use
The Adjudicator emphasised that a distinctiveness assessment is context-dependent, but use of a corporate name, domain name and social media handle can potentially be included.
Firstly, the Adjudicator opined that consumers would focus on FLOOR XPERT over PTE. LTD in the corporate name. This was trade mark use as it conveyed the message that the applicant is a company known as "Floor Xpert".
Secondly, the Adjudicator noted the Examiner's comments that domain names served primarily as "directional references", but held that domain names and social media handles could also serve as source identifiers. The key element was unmistakably "FLOOR XPERT". Moreover, the applicant's promotion of their services through these names had generated sales.
Finally, the Adjudicator held that the evidence as a whole showed that whenever the stylised mark was used, the word mark FLOOR XPERT, corporate name, domain name or social media handle would also appear nearby.
This evidence, in addition to evidence of substantial advertising, growing sales and consumer recognition over approximately 8 years in the Singapore market, was sufficient for the Adjudicator to conclude that the mark had acquired distinctiveness.
Takeaways
The assessment of acquired distinctiveness is highly fact specific. Nevertheless, the Adjudicator's confirmation on the potential relevance to trade mark use of corporate names, domain names and social media handles offers greater scope for brand owners to meet evidentiary requirements in Singapore.
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.
