The case of A-STAR-Education Discovery Camps Pte. Ltd. v Discovery Communications, LLC concerned an opposition brought by a corporate giant in the media world against a small Singapore incorporated company. The case was likened to a David and Goliath clash and we will summarise below how an underdog won against a much bigger player in this trade mark proceeding.
Background to the proceedings
The Applicant, A-STAR-Education Discovery Camps Pte. Ltd. (formerly known as Changededu Holdings Pte. Ltd. is an education company that provides educational development and enrichment camps for children in Singapore.
On 26 July 2017, the Applicant applied to register the trade mark in Singapore in classes 9, 16 and 43. The goods and services covered by the application were predominately related to educational purposes including inter alia, audio cassettes for language teaching, computer programmes for studying languages, educational apparatus, films bearing recorded educational material, art materials, educational materials in printed form, school supplies, child care services and providing temporary lodging at holiday camps (the full list of goods and services can be found on page 2 of the decision).
The application was accepted and subsequently opposed by Discovery Communications, LLC ('the Opponent'). The Opponent is one of the world's largest media companies with operations dating back to 1985. The Opponent owns 130-plus worldwide television networks, including the Discovery Channel. The Opponent relied on the following earlier registrations:
|Trade Mark Application||Date||Class|
TM No. T1414024F
|September 2014||9, 38, 41|
|2||DISCOVERY EDUCATION TM No. T0908248I||24 July 2009||9, 16, 28|
|3||DISCOVERY GO TM No. T1210936H||27 July 2012||9, 38, 41|
|4||DISCOVERY KIDS TM No. T1217103I||14 November 2012||9, 18, 41|
|5||DISCOVERY CHANNEL TM No. T0105038C||6 April 2001||16|
|6||DISCOVERY KIDS TM No. T1302177D||7 February 2013||16|
|7||DISCOVERY ADVENTURES TM No. T1114528Z||17 October 2011||39, 41|
|8||THE DISCOVERY CHANNEL TM No. T9206666J||31 August 1992||41|
TM No. T1010851H
|23 August 2010||41|
It is of interest to note that the Opponent did not have a registration for the plain word "DISCOVERY".
In the opposition, the Opponent relied on the following grounds:
- The mark was similar to the earlier trade marks and for identical or similar goods and services (section 8(2)(b) of the Trade Marks Act);
- The prior marks were well known in Singapore and the Applicant's mark would likely damage the interests of the Opponent (section 8(4)(a) and s 8(4)(b)(i) of the Trade Marks Act);
- The prior marks were well known to the public at large in Singapore and the Applicant's mark would cause dilution in an unfair manner to the earlier trade mark or take unfair advantage of the distinctive character of the earlier trade mark (section 8(4)(a) and s 8(4)(b)(ii)(A) and (B) of the Trade Marks Act);
- By virtue of any rule of law, in particular, the law of passing off (section 8(7)(a) of the Trade Marks Act); and
- Bad faith (section 7(6) of the Trade Marks Act).
Similarity between the marks
To assess the similarity of the marks, the Hearing Officer approached this with a three-step test:
- Whether there was identity or similarity of the respective marks;
- Whether there was identity or similarity between the goods and services for which registration was sought as against the goods and services for which the earlier trade mark was protected; and
- Whether there existed a likelihood of confusion arising from the two similarities.
The opposition would fail if the answer to any one of the above were negative.
From a visual comparison, the Hearing Officer found that the marks were more dissimilar than similar. In particular, it was found that the overall distinctiveness of the word "DISCOVERY" in the Opponent's earlier marks was low because it was an ordinary English word and had a connection to the Opponent's goods and services. The Hearing Officer also commented on the differences of the respective marks including the placement of the globe device on the capital letter D in the Opponent's mark and the cursive font and underscore of the word "DISCOVERY" in the Applicant's mark . However, the stylisation in the subject mark was not sufficient to visually detract from the overall impression of the marks, although this was also shadowed by the fact that the overall distinctiveness of the word "DISCOVERY" was low.
From an aural and conceptual perspective, it was found that the marks were more similar than dissimilar. However, the similarity was in the word "DISCOVERY", which was considered not distinctive.
Similarity between the goods or services
The Hearing Officer found that there was a substantial overlap of the goods in classes 9 and 16. Whilst the Opponent did not have registration for services under class 43, it was found that the Opponents services under class 39 were wide enough to overlap with the Applicant's class 43 services. Therefore, there was some similarity of goods and services in the respective marks.
Likelihood of confusion from the two similarities
The Hearing Officer considered a number of factors including the degree of similarity of the marks, reputation, impression given by the marks and the possibility of imperfect recollection of the marks. Overall, it was considered that despite the competing marks being more similar than dissimilar, the similarity did not give rise to a likelihood of confusion due to the low distinctiveness of the word "DISCOVERY".
Well known marks
In respect of well-known marks, the Hearing Officer found that the overall evidence was sufficient for a finding that the Opponent's earlier marks were well known in Singapore. On the other hand, the Hearing Officer did not find that the Opponent's marks were well known to the public at large in Singapore. On this basis and because there was no reasonable likelihood of confusion, this ground also failed.
To succeed on the ground of section 8(7)(a) of the Trade Marks Act, the Opponent must establish goodwill, misrepresentation and damage. The Hearing Officer had previously established that there was no likelihood of confusion between the competing marks. Accordingly, there cannot be any misrepresentation that would sufficiently deceive the public into thinking that the Applicant's goods were the same as the Opponent's goods. Therefore, the ground of passing off was unsuccessful.
The Opponent pointed out that the Applicant had changed its name twice since the filing of the subject application. The Opponent asserted that the name changes were deliberate to give the subject mark "a veneer of legitimacy". The Hearing Officer stated that an allegation of bad faith was a serious claim and in the absence of any evidence to support this claim, the Applicant's change in name should not be taken to be made in bad faith. Thus, the Opponent failed in the ground of bad faith.
In summary, the opposition failed on all grounds and the subject application was allowed to proceed to registration.
Remarks This decision was a classic case of David and Goliath, a face-off between a corporate giant and a small incorporated company in Singapore. Whilst this case will encourage small businesses to pursue their trade mark rights, it also serves as a reminder to corporate giants to keep a good record of their expenditure, profit and reputation specific to the country of the proceeding. Overall, this decision reinforces well-established principles in trade mark law and provides valuable insight for both small