In a decision rendered by the Intellectual Property Office of Singapore (IPOS),
Who are the parties involved in this case?
- Bridgestone Corporation and Bridgestone Licensing Services, Inc. (“Opponents”)
- Deestone Limited (“Applicant”)
What actually happened?
The Opponents are the owners of the “Bridgestone” and “Firestone” trade marks. The Applicant applied to register the “Deestone” trade mark, which was accepted and published on 5 June 2015. The Opponents filed their Notice of Opposition against the Applicant’s Mark on 29 July 2015.
The Opponents relied upon 4 grounds for its opposition against the Applicant’s mark, namely:
- Section 8(2)(b) of the Trade Marks Act (“the Act”) (that the Applicant’s mark is confusingly similar to the Proprietor’s earlier trade mark);
- Section 8(7)(a) of the Act (passing off);
- Section 8(4)(a) read with 8(4)(b)(i) of the Act (that the Applicant’s mark was similar to the Opponent’s trade marks, which are “well known in Singapore” such as to damage the interests of the Opponent by indicating a connection between the Applicant’s goods or services and the Opponent’s; and
- Section 8(4)(b)(ii)(B) of the Act (that the Applicant’s mark was similar to the Opponent’s trade marks, which is “well known to the public at large in Singapore”, such as to take unfair advantage of the distinctive character of the Opponent’s trademarks).
What is/are the issue(s) in dispute?
- Whether the Opponents has a family of “STONE” marks;
- Whether the Opponents can succeed on their ground of opposition under Section 8(2)(b);
- Whether the Opponents can succeed on the ground of opposition under Section 8(7)(a);
- Whether the Opponents can succeed on the ground of opposition under Section 8(4)(a) read with 8(4)(b)(i); and
- Whether the Opponents can succeed on the ground of opposition under Section 8(4)(a) read with 8(4)(b)(ii)(B).
Holding
- The Principal Assistant Registrar (“the Registrar”) held that there is no finding that the “Bridgestone” and “Firestone” marks were used and recognised by consumers as a family of marks.
- The ground under Section 8(2)(b) failed.
- The ground under Section 8(7)(a) also failed.
- Lastly, Sections 8(4)(b)(i) and 8(4)(b)(ii)(B) were not made out too due to the dissimilarity between the marks.
Rationale for holding
The evidence showed that the marks were used and promoted as separate and independent brands. The “Bridgestone” and “Firestone” tyres are also distributed through separate distribution channels in Singapore with “Bridgestone” tyres being distributed by Bridgestone Tyre Sales Singapore Pte Ltd and “Firestone” tyres being distributed by Binter & Co Ltd. The Registrar noted that the manner in which the tyres are distributed and sold do not help consumers to recognise that marks with a “STONE” suffix belong to the same family. There was also no evidence to show that the Opponents attempted to educate the consumers that the brands were from the same corporate family in their invoices or advertising and promotional materials.
The Registrar further pointed out that aside from the “Bridgestone” and “Firestone” trade marks used by the Opponents, there are no other marks in their alleged “STONE” family marks. Whilst the Registrar recognised that it is not entirely impossible to use only two trade marks to substantiate the existence of a family of marks, it is however less likely that consumers will be able to recognize that a common element between two marks must belong to the same family.
While each of the Opponents’ marks is made up of two ordinary English words (“BRIDGE” and “STONE”, and “FIRE” and “STONE”), neither component of each mark stands out in the consumers’ imperfect recollection. Hence, the distinctiveness of the Opponents’ marks lay in the marks as wholes. Similarly, both elements of the Applicant’s mark contribute equally to the overall impression of the mark and its distinctiveness lays in the mark as a whole.
Comparing the Opponents’ marks and the Applicant’s mark, the Registrar found that the Applicant’s mark was visually and aurally more dissimilar than similar to the Opponents’ marks. The first component of the Applicant’s mark is very different from the first component of each of the Opponents’ marks and it was not something that would be easily missed when the marks are seen. Aurally, the marks were found to have striking phonetic differences at the beginning. Conceptually, the Applicant’s mark has no meaning as a whole and was found to be dissimilar from the Opponents’ marks. Overall, the Applicant’s mark was more dissimilar than similar to either of the Opponents’ marks. The ground under Section 8(2)(b) failed.
While there was goodwill found in favour of the Opponents, there was no misrepresentation that is sufficiently likely to deceive the public into thinking that the Applicant’s goods are those of the Opponents due to the dissimilarity between the marks (as found earlier).
Sections 8(4)(b)(i) and 8(4)(b)(ii)(B) were not made out too due to the dissimilarity between the marks.
Point of Interest:
It is not necessary for trade marks to be owned by the same legal entity in order to be protected as a family of marks as argued by the Applicant. Corporate family members could be regarded as a single source to consumers. The lack of common ownership by a single entity should not stand as a barrier to the protection over a family of marks that should otherwise be granted.
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This article is written by Renee Xavier from Alpha & Omega.
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