In a decision rendered by the Intellectual Property Office of Singapore (IPOS), IPOS held that Starbucks’ opposition against Morinaga Milk Industry Co., Ltd’s trade mark application failed on all grounds.
(A) Who are the parties involved in this case?
(1) Morinaga Nyugyo Kabushiki Kaisha (Morinaga Milk Industry Co., Ltd.) (Applicant)
- Japanese manufacturer of dairy products including milk, ice cream, beverages and foods. It is well-established in Japan, having been founded in 1917.
(2) Starbucks Corporation D/B/A Starbucks Coffee Company (Opponent)
- One of the largest roasters and retailers of specialty coffee in the world, founded in 1971.
(B) What actually happened?
The Applicant applied to register their trade mark (“the Application Mark”) on 23 October 2013 in respect of goods in Classes 29 and 30 including milk, milk products, milk beverages, coffee and coffee beverages.
The Opponent opposed the registration of the Application Mark. The opposition was based on the Opponent’s earlier trade mark registrations (“the Opponent’s Marks”).
Relative grounds of refusal
- Section 8(2)(b): That the Application Mark should not be registered as it is similar to the Opponent’s Marks and is to be registered for goods identical with or similar to those for which the Opponent’s Marks is protected.
- Section 8(4): That the Application Mark should not be registered as the whole or an essential part of it is similar to the Opponent’s Marks, which are well known (or “well known to the public at large in Singapore”) and use of the Application Mark in relation to goods for which it is sought to be registered would indicate a connection with the Opponent and is likely to damage the interests of the Opponent (or cause dilution in an unfair manner / take unfair advantage of the distinctive character of the Opponent’s Marks in the case of “well known to the public at large in Singapore”).
- Section 8(7)(a): That the Application Mark should not be registered as its use in Singapore is liable to be prevented by virtue of the law of passing off.
Absolute grounds of refusal
- Section 7(4)(b): That the Application Mark should not be registered as it is of such as nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods).
- Section 7(6): That the Application Mark should not be registered as the application was made in bad faith.
(C) What is/are the issue(s) in dispute?
Whether the aforementioned grounds of opposition were made out by the Opponent.
(D) Holding
Relative grounds of refusal
Section 8(2)(b):
The ground of opposition under Section 8(2)(b) failed. The IP Adjudicator found that the parties’ respective marks were dissimilar. The IP Adjudicator rejected the Opponent’s arguments that the green-black-white colour scheme and layout of the marks within concentric circles rendered the marks similar. The dominant textual and figurative elements in the marks sufficiently and substantially outweighed any common denominator (i.e. allegedly the colour scheme, layout and concentric circles) between the parties’ marks.
Section 8(4):
The grounds of opposition under Section 8(4) failed on the basis that there was no requisite similarity between the Opponent’s Marks and “the whole or an essential part of” the Application Mark. The test for similarity under Section 8(2)(b) and Section 8(4) was held to be the same.
Section 8(7)(a):
The ground of opposition under Section 8(7)(a) failed. Although the IP Adjudicator found that the Opponent had the requisite goodwill in Singapore to sustain an action for passing, the IP Adjudicator was not convinced that there was any misrepresentation. Particularly, the IP Adjudicator was not convinced that the colour scheme and concentric circles device were in themselves distinctive identifiers of the Opponent’s goods. She found that the distinctiveness of the Opponent’s Marks was in its depiction as a whole, which includes the STARBUCKS textual element and/or the pictorial mermaid element – both of which were very different from the Opponent’s Marks which contained the words “Mt. Rainier” with a pictorial mountain device. Hence, there could be no misrepresentation.
Absolute grounds of refusal
Section 7(4)(b):
The ground of opposition under Section 7(4)(b) failed. The threshold for deception was a relatively high threshold. There must be a “real tangible danger” of confusion rather than a mere “cause to wonder”. The determination was whether the connection between the place and the goods is “fairly obvious to the public” so as to engender a “literal association” between the geographical reference and the goods concerned, or whether the connection is less compelling and accordingly the geographical reference is liable to be merely fanciful and non-deceptive. The IP Adjudicator disagreed with the Opponent’s argument that the Application Mark made a direct reference to Seattle such as to create an expectation amongst consumers that the goods were produced or manufactured in Seattle. She found that the Application Mark merely communicated “Mt. RAINIER” as the geographical reference, not Seattle. Used in the context of the statement “The Mountain of Seattle” as it appears in the Application Mark, it was used in a purely informative manner and points to Mt. Rainier as the mountain in Seattle. It did not bring to mind Seattle a such. The relevant consumer would likely regard the reference to “Mt. RAINIER” as a fanciful reference rather than an indication of deceptive origin.
Section 7(6):
The ground of opposition under Section 7(6) failed. The IP Adjudicator held that even if the Applicant had actual or constructive knowledge of the Opponent’s trade marks, business and products, it did not necessary follow that the application was made in bad faith. Further, the Applicant’s act of drawing cultural inspiration from Mt. Rainier did not fall short of commercially acceptable practices, given that it is common for traders to borrow concepts or seek inspiration from things, people and places.
Hence, the opposition failed on all grounds.
(E) Rationale for holding
Relative grounds of refusal
Section 8(2)(b):
The law on Section 8(2)(b) is well-settled in Singapore. The Court of Appeal in Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911 reaffirmed the step-by-step approach. The first element is to assess whether the respective marks are similar. The second element is to assess whether the goods or services for which registration is sought are identical or similar to those for which the earlier trade mark is protected. The third element is to consider whether there exists a likelihood of confusion because of the first two elements. The first two elements are assessed individually before the final element which is assessed in the round. If, for any one step, the answer is in the negative, the inquiry ends and this ground of opposition fails.
In determining whether the marks are similar, three aspects of similarity (i.e. visual, aural and conceptual similarities) guide the inquiry. However, there is no requirement that all three aspects must be established before the marks can be found similar.
In terms of visual similarity, the Opponent’s argument was that the Application Mark applied for in black and white would if registered, be protected in respect of all colours and therefore visual similarity is even more apparent since both parties’ marks could potentially be used in identical colour schemes. To this, the IP Adjudicator was of the view that such matters delve into the realm of “extraneous matter”, which should not be considered at the first element’s stage. Also, this matter should only rightly be considered under the confusion stage (third element’s stage), and not the mark-similarity stage of the step-by-step inquiry. Hence, where the Application Mark is depicted in black and white, colour is not a factor which influences the mark-similarity assessment. The IP Adjudicator went further to state that even if the marks were in the same colour combination, she was of the view that the identical/similar colour combination in itself is insufficient to lead to an overall finding of visual similarity, for the similarity in colour combination is clearly outweighed by the points of dissimilarity.
Still on the point of visual similarity, the Opponent alleged that the marks were similar because they had the same layout: (i) a concentric circles layout; (ii) a pictorial device in the innermost circle; (iii) Applicant’s brand name in curved lettering at the top of the concentric circle; (iv) a descriptive phrase in curved lettering at the bottom of the concentric circle; and (v) proportions of the textual elements and pictorial device in the marks were identical. To this, the IP Adjudicator opined that (ii) and (iii) were precisely elements which served to distinguish the marks. Also, the IP Adjudicator was of the view that the concentric circles device per se was de minimis and of negligible significance. She assessed that the features of colour and layout of the marks were outweighed by the stronger and more dominant textual and figurative elements in each mark, i.e. “Mt. RAINIER” and mountain figurative element in the Application Mark as opposed to “STARBUCKS”, “COFFEE” and a lady/mermaid device in the Opponent’s Marks.
Given the above, the IP Adjudicator found that the overall layout and colour scheme, do not per se render the marks similar, and such similarity, if any, was sufficiently and substantially outweighed by the dissimilar elements in each mark. Hence, the marks were dissimilar from a visual perspective.
In terms of aural similarity, there are two main approaches: (i) consider the dominant components of the mark in assessing whether the competing marks as a whole were similar; or (ii) undertake a quantitative assessment as to whether the competing marks have more syllables in common than not. The key textual component of the Application Mark was “Mt. Rainier” whilst it was “Starbucks” or “Starbucks Coffee” in the Opponent’s Marks. The IP Adjudicator found that regardless of the approach taken, the marks were still aurally dissimilar.
In terms of conceptual similarity, what is important is “the impression of the average consumer”. The IP Adjudicator rejected the Opponent’s contention that conceptual similarity arose from the reference made to Seattle in the Application Mark, which the Opponent claims to be the city which is “widely known in popular culture as the birthplace of Starbucks coffee and the location of the Opponent’s headquarters”. She held that such a consideration extended into the realm of extraneous matter which should not feature in the “mark for mark” comparison under Staywell. Further, the IP adjudicator opined that it was not at all apparent that the average consumer would make such a conceptual connection. Also, the Opponent’s Marks taken as a whole, did not bear a conceptual impression of Mt. Rainier or Seattle. An average consumer would likely only associate the word “Starbucks” as being adopted by the Opponent as a corporate name. The conceptual impression of the Opponent’s Marks, if any, was influenced largely by its distinctive mermaid device which, is nowhere similar to a mountain concept. Hence, the marks were dissimilar from an aural perspective.
Given the above dissimilarities between the marks visually, aurally and conceptually, the IP Adjudicator found the Application Mark as a whole to be clearly dissimilar to the Opponent’s Marks. The ground of opposition under Section 8(2)(b) hence failed at the first step of mark similarity, and it was unnecessary to consider the second and third elements in the step-by-step approach.
Section 8(4):
The common element that had to be established for the heads of opposition under Section 8(4) was the requirement that “the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark”.
The Opponent tried to argue that the test for mark-similarity under Section 8(4) ought to be different, and of a lower threshold compared to Section 8(2)(b). The IP Adjudicator, citing legal authority Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2015] 5 SLR 618 (which was also followed in Apple Inc v Xiaomi Singapore Pte Ltd [2017] SGIPOS 10) clarified that the same test for mark-similarity would apply for both sections. The differences in statutory wording could be explained by the legislative history of Section 8(4), and it was not Parliament’s intention for the test to be any different.
Given that there was no requisite similarity between the Opponent’s Marks and “the whole or an essential part” of the Application Mark, the IP Adjudicator held that it was not necessary to decide on the other elements of Section 8(4). Nonetheless, the IP Adjudicator held that even if she accepted that the Opponent’s Marks were well known in Singapore, the essence of well known-ness resided in the textual element “STARBUCKS” and the pictorial mermaid element, and not the concentric circles device or the layout of the Opponent’s Marks, whether in their specific colours or otherwise. Also, the IP Adjudicator was also not persuaded that the use of the Application Mark would cause dilution in an unfair manner or take unfair advantage of the distinctive character of the Opponent’s Marks. This is because the distinctive character of the Opponent’s Marks resided in its distinctive mermaid device and/or the “STARBUCKS” word element. No evidence was adduced by the Opponent to prove that the concentric circles device and/or the layout of its mark, whether in their specific colours or otherwise should be the distinctive character instead.
Section 8(7)(a):
In evaluating opposition to trade mark registration under Section 8(7)(a), the court considers whether the normal and fair use of the Application Mark in respect of goods/services for which the mark is sought to be registered would result in passing off. Hence, Section 8(7)(a) effectively requires the court to consider the position of the opponent in a notional passing off action. The opponent must persuade the court that on the materials before it, there is at least a prima facie case that a passing off claim would be successful.
The elements to establish passing off are: (i) Goodwill; (ii) Misrepresentation / Confusion; and (3) Damage.
The IP Adjudicator found that the Opponent had the requisite goodwill in Singapore to sustain an action for passing off, in light of the evidence tendered.
To prove misrepresentation, it is incumbent on the Opponent to show that the Applicant’s “notional and fair” use of the Application Mark in respect of the goods for which the registration is sought, would amount to a misrepresentation leading or likely to lead the public into believing that those goods are the goods of the Opponent or from a commercially related trade source. A threshold inquiry was that a mark or get-up must be distinctive of the plaintiff’s products or services. If a mark or get-up is not distinctive of the plaintiff’s products or services, the mere fact that the defendant has used something similar or even identical in marketing and selling its products or services would not amount to misrepresentation.
The IP Adjudicator was not persuaded that the Opponent’s distinctive indicia resided in the colour and concentric circles layout of the Opponent’s Marks. No evidence was adduced to prove so, and the IP Adjudicator agreed with the Applicant that the concept of a concentric circles layout is something which honest traders may wish to use in connection with goods in Classes 29 and 30. The distinctiveness of the Opponent’s Marks was found to lie in the textual “STARBUCKS” element and/or the pictorial mermaid element.
Hence, it was held that misrepresentation was not established as the Applicant was not seeking to register something similar. There cannot be any deception or likelihood of deception under the law of passing off where the marks in question are clearly dissimilar. The opposition under Section 8(7)(a) thus failed.
Absolute grounds of refusal
Section 7(4)(b):
Upon reviewing relevant legal authorities, the IP Adjudicator concluded that the applicable threshold for deception is that of a “real tangible danger”, a relatively high one as opposed to the one contended for by the Opponent, i.e. whether the public would “cause to wonder”.
The Opponent argued that the Application Mark made a direct reference to Seattle, and as such, the Application Mark implied that the goods originated from the city or region of Seattle, when they in fact do not.
The IP Adjudicator held that the nature of the geographical deception would depend, inter alia, on the sort of connection the geographical reference had in relation to the goods concerned. The more remote the connection, the more likely it would be that the public would only make a fanciful association between the mark and the goods, in which case there would be no deception under Section 7(4)(b). Relevant factors to consider in determining if there was public deception may include: (i) the nature of the mark and the impression it communicates/conveys to the public; (ii) the nature of the goods claimed; (iii) the connection which the geographic reference has with the goods claimed; (iv) the knowledge and characteristics attributable to the public; and (v) the trade/industry practice.
A determination had to be made on whether the connection between the place and the goods is fairly obvious to the public so as to engender a literal association between the geographical reference and the goods concerned, or whether the connection is less compelling and accordingly the geographical reference is liable to be merely fanciful and non-deceptive.
Having regard to the above factors, the IP Adjudicator was not persuaded that there would be a real tangible danger of public deception. The IP Adjudicator reasoned that the Singapore public is unlikely to associate Seattle with coffee, as opposed to Paris with perfumes and Switzerland with chocolate. Furthermore, the most prominent element in the Application Mark was the word element “Mt. RAINIER”, which was reinforced by the mountain device, and both elements do not reinforce the impression of Seattle conveyed by the Application Mark. The phrase “THE MOUNTAIN OF SEATTLE” in the Application Mark also appears in significantly less prominence, in terms of size and positioning. In the context of the Application Mark as a whole, the IP Adjudicator opined that this phrase was merely informative, i.e. that Mt. Rainier is a mountain in Seattle, rather than serving as reference to the city of “Seattle, Washington” as such. She did not consider that the geographical reference of Seattle spoke so directly to the public looking at the mark as a whole. Hence, the IP Adjudicator held that the geographical reference which the Application Mark communicates and which the public perceives is “Mt. RAINIER” and not “Seattle”. The evidence was also not sufficiently compelling to demonstrate that consumers in Singapore would readily associate “Mt. Rainier” with Seattle. The weakness of the link (if any) between “Mt. RAINIER” in the Application Mark and coffee products rendered it more probable that not that the public will make only a fanciful rather than literal association between the geographical reference and coffee products.
It was also common practice, amongst businesses in the food and beverage industry operating in Singapore and worldwide, to include geographical names or geographical icons in their marks, regardless of where the products literally originate, e.g. Paris Baguette, Georgia Coffee, etc. The IP Adjudicator was also of the view that the public is sufficiently exposed to such branding concepts in the food and beverage sector, such that, the Singapore public would be “reasonably observant and circumspect and thus sufficiently alert and sensible such as not to need protection from claims that might only deceive a relatively small number of customers”.
The fact that a mark contains a geographical reference will not necessarily always trigger an objection under Section 7(4) unless it creates an expectation in the mind of the consumer, having perceived that geographical reference, that the goods originate from that geography.
Hence, there was no public deception as to origin.
Section 7(6):
The Opponent alleged that the Application Mark was conceived and designed to capitalize and free-ride on the growing fame, reputation and goodwill of the Opponent’s marks, business and products.
The IP Adjudicator, in applying the applicable principles on bad faith in Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203 found that even if the Applicant had actual or constructive knowledge of the Opponent’s trade marks, business and products, it did not necessarily follow that the application was made in bad faith. Further, the Applicant’s act of drawing cultural inspiration from Mt. Rainier did not fall short of commercially acceptable practices, given that it is common for traders to borrow concepts or seek inspiration from things, people and places.
Hence, the ground of opposition under Section 7(6) failed.
Commentary:
The Opponent in trying to establish misrepresentation under the Section 8(7)(a) ground had referred to instances of alleged actual confusion and had submitted some public comments in its evidence to advance its case. The IP Adjudicator was cautious in placing too much weight on such evidence, and in her words, the “Opponent [had] garnered loyal fans who may perhaps be quick to pass judgment or comment on the Application Mark”, and she opined that even if the evidence indicated some degree of “initial interest” confusion, such a concept was not part of Singapore’s law. Further, she noted that there were also contrary views expressed. Hence, this evidence was not found compelling in establishing a likelihood of confusion.
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This article is written by Renee Xavier from Alpha & Omega and edited by Rishika Pundrik of Asia Law Network.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.