In a decision rendered by the Intellectual Property Office of Singapore (IPOS), IPOS held that Guccio Gucci S.p.A’s opposition against Guccitech Industries (Private Ltd)’s trade mark application succeeded.
(A) Who are the parties involved in this case?
Guccitech Industries (Private Limited) (Applicant)
- Incorporated in Singapore in 2010 and is engaged in the business of designing and manufacturing household appliances.
Guccio Gucci S.p.A (Opponent)
- Owner of the globally renowned brand GUCCI that traces its history as far back as 1921 when Mr. Guccio Gucci opened a shop in Florence, Italy.
- Owner of the GUCCI trade mark, registered in respect of a wide range of goods and services in Singapore, including “Porcelain and ceramic articles; drinking glasses and glass flasks” (in Class 21) and retail services (in Class 35).
(B) What actually happened?
The Applicant applied to register the trade mark “
The Opponent opposed the registration of the Application Mark.
The opposition was based on the Opponent’s earlier trade mark registrations, including “
The Opponent relied on the following grounds in the Trade Marks Act (Cap. 332) in support of its opposition:
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(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 afore-mentioned 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) succeeded. The IP Adjudicator found that the parties’ respective marks were similar given that the dominant and distinctive part of the Application Mark is the word GUCCI. The goods under the Application Mark were in certain respects also similar to the goods and services of the Opponent’s Marks. As a result, there was a likelihood of confusion, considering the particularly distinctive nature of the GUCCI mark.
Section 8(4): The grounds of opposition under Section 8(4) succeeded. The requisite similarity between the Opponent’s Marks and “the whole or an essential part of” the Application Mark was established. The test for similarity under Section 8(2)(b) and Section 8(4) was held to be the same. On the basis of voluminous evidence submitted by the Opponent, the IP Adjudicator found that the Opponent’s GUCCI mark is both well known in Singapore and well known to the public at large in Singapore. Use of the Application Mark would dilute unfairly the highly distinctive character of the Opponent’s GUCCI marks by removing the exclusivity the Opponent currently enjoys in the use of GUCCI as an indication of the trade origin of goods and/or services and would give the Applicant an unfair advantage.
Section 8(7)(a): The ground of opposition under Section 8(7)(a) succeeded. The IP Adjudicator found that the Opponent had the requisite goodwill in Singapore to sustain an action for passing off. In view of the finding that use of the Application Mark would give rise to a likelihood of confusion or wrongfully indicate a connection with the Opponent, the IP Adjudicator held that it was self-evident that there was misrepresentation. Also, he considered that there would be a “real tangible risk of substantial damage” being caused to the Opponent through such misrepresentation.
Absolute ground of refusal
Section 7(6): The ground of opposition under Section 7(6) failed. The IP Adjudicator held that the Applicant had merely gambled on the law and took a risk in applying for the Application Mark (whilst hoping perhaps that the Opponent would not oppose to its attempt to register the Application Mark), but it did not necessary follow that the application was made in bad faith.
Hence, the opposition succeeded under all the above-mentioned relative grounds of refusal.
(E) Rationale for holding
Relative grounds of refusal
Section 8(2)(b):
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.
Similarity of Marks
In determining whether the marks are similar, three aspects of similarity (i.e. visual, aural and conceptual similarities) guide the inquiry.
Each of the two marks must be considered as a whole and not broken down into its component parts, for that is the way an average consumer would perceive them. An evaluation of what is/are the essential element(s) of the mark should also be undertaken for composite marks such as the Application Mark, for it is that or those that the average consumer would pay attention to.
In terms of visual similarity, the IP Adjudicator held that, looking at the Application Mark as a whole, the dominant and distinctive part of it is the word GUCCI, notwithstanding the addition in the word “GUCCITECH” of the descriptive -TECH suffix and the presence of the strapline INNOVATION SAVES SPACE in much smaller lettering. The IP Adjudicator considered the stylized G in the Application Mark would unlikely be accorded meaningful attention by the average consumer, albeit acknowledging the fact that it may be noticed in passing. As such, the marks were found to be similar.
In terms of aural similarity, the IP Adjudicator considered it unhelpful to adopt a purely quantitative assessment (i.e. simple syllable count in each respective mark) in this case. This was because adopting a purely quantitative approach could have the consequence that a later mark could be differentiated sufficiently from a third party’s distinctive earlier mark incorporated in it merely by adding sufficient matter of a descriptive nature as to overwhelm in purely quantitative terms the distinctive element that comprised the opponent’s earlier marks. The IP Adjudicator instead considered that the dominant and distinctive part of the Application Mark remains pronounced as “GOO-CHEE”, aurally similar to the Opponent’s Marks.
In terms of conceptual similarity, the IP Adjudicator held that the word GUCCI has an Italian connotation but does not have any dictionary meaning in English or Italian language. The IP Adjudicator considered that the fact that the entirety of that word comprises the dominant and distinctive part of the Application Mark, meant that the Application Mark is conceptually very similar to the Opponent’s Marks.
Hence, the marks were held to be very similar visually, aurally and conceptually.
Similarity of Goods or Services
The IP Adjudicator considered the services for which the Opponent’s T1319783Z trade mark was registered for (i.e. “retail services relating to the sale of … glassware, porcelain, cutlery …”) to be similar to at least some of the goods contained in the Applicant’s specification of goods. In relation to the Opponent’s T8301755E trade mark, the IP Adjudicator also identified a subset of the Applicant’s lengthy specification of goods which would likely to sold at wholesale and retail outlets in proximity to “porcelain and ceramic articles and/or drinking glasses” covered by the Opponent’s said trade mark. The goods were deemed similar since they were complementary or used in the process of preparing food by whatever means and in that food’s subsequent consumption. The IP Adjudicator considered it unrealistic to draw a fine line between the goods used in the preparation of food and those used in its consumption as both are often sold and used in close proximity. As such, it was found that there is the requisite similarity of goods in this case.
Likelihood of Confusion
The IP Adjudicator held that on the basis of the evidence before him, there was a real possibility that an average consumer, when visiting a department store to buy cooking appliances, upon encountering the Application Mark, would naturally assume that goods sold under it came from a source economically linked with the owner of registered trade mark T8301755E. There was in fact, a serious likelihood of confusion between the marks taking into account the particularly distinctive nature of the GUCCI mark.
The ground of opposition under Section 8(2)(b) therefore succeeded.
Section 8(4):
Whether whole or an essential part of the applicant’s mark is identical or similar to the earlier mark
The first element was held to be established since there is no difference in the mark-similarity analysis under Section 8(2)(b) and Section 8(4) of the Trade Marks Act. Given that it was held under the Section 8(2)(b) ground that the marks were similar, this first element was established as well. The IP Adjudicator found that an essential part of the Application Mark is identical to the Opponent’s GUCCI mark.
Well known in Singapore
The IP Adjudicator found on the basis of the voluminous evidence submitted by the Opponent, that the mark GUCCI is well known in Singapore to, at the very least, the average consumer of the goods offered for sale at retail outlets operated by the Opponent under the GUCCI mark.
Indicate a connection likely to damage the interests of the owner of the earlier trade mark
The IP Adjudicator held that he had already found in Section 8(2)(b) that there is a likelihood of confusion. Likewise, and in light of all the evidence tendered, the IP Adjudicator found that use of the Application Mark in relation to the goods for which the Application Mark was sought to be registered for would likely be taken by the average consumer to indicate some trade connection with the Opponent. Such a misapprehension would inevitably result in damage to the Opponent’s interests as it would mean that the Opponent would lose its present exclusivity in the use of the word GUCCI as a trade mark
The IP Adjudicator also found that the Opponent’s GUCCI mark is well known to the public at large in Singapore, considering the notoriety the GUCCI mark enjoys for retail services in Singapore, enhanced by extensive advertising and promotion. Although the status of being a trade mark that is well known to the public at large is typically considered a “coveted” and “a rare and exclusive class”, the IP Adjudicator opined that there was far more than sufficient evidence on which to find that the GUCCI trade mark was indeed such a member of the rare and exclusive class of trade marks. The Application Mark if registered, would dilute the distinctiveness of the Opponent’s Marks by depriving the Opponent of the exclusivity it has in the registration and use of the word GUCCI as a trade mark. Also, the Applicant would gain an unfair advantage due to the misapprehension that it has some trade connection with the Opponent.
The ground of opposition under Section 8(4) therefore succeeded.
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 clearly had the requisite goodwill in Singapore to sustain an action for passing off, in light of the evidence tendered.
The IP Adjudicator considered it self-evident that use by the Applicant of the Application Mark in relation to goods sought to be registered for would constitute misrepresentation, given his finding under the afore-mentioned grounds of opposition that the same is likely to cause confusion or wrongfully indicate a connection with the Opponent.
The IP Adjudicator found that there would also be a “real tangible risk of substantial damage” being caused to the Opponent through such misrepresentation, should the Applicant use the Application Mark in relation to the goods sought to be registered for.
The opposition under Section 8(7)(a) thus succeeded.
Absolute ground of refusal
Section 7(6):
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 that the Applicant had merely gambled on the law and took a risk in applying for the Application Mark, but it did not necessary follow that the application was made in bad faith. It was not so unreasonable a gamble as to justify a finding of bad faith on the facts.
Hence, the ground of opposition under Section 7(6) failed.
Commentary:
Interestingly, the IP Adjudicator observed that a significant number of 6,852 exhibits which were submitted by the Opponent in support of its case were irrelevant to the issues that were to be decided. Counsels in trade mark opposition proceedings were reminded to “seek to restrain such an impulse to bury the tribunal and the opposing party in material that is irrelevant or excessive”.
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This article is written by Renee Xavier from Alpha & Omega.
This legal update was originally published on Alpha and Omega’s website.
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 a 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.