Aramara successful in invalidating a registered trade mark on grounds of similarity and admission by the other party

Case:

Aramara Beauty LLC (dba Glow Recipe) v Sinchen Group Pte. Ltd. [2022] SGIPOS 18

 

Tribunal/Court:

Intellectual Property Office of Singapore (“IPOS”)

 

Type:

Opposition

 

Applicant:

Aramara Beauty LLC (dba Glow Recipe).

 

Proprietor:

Sinchen Group Pte. Ltd.

 

Background:

The Applicant sought for a declaration of invalidity in relation to the registered mark “Glow Recipe” by the Proprietor in Class 3 in respect of “Beauty masks; Collagen preparations for cosmetic purposes; Cosmetics; Cosmetic creams; Lipstick; Lotions for cosmetic purposes; Make-up; Skin whitening creams; Cream for skin whitening; Cream for whitening the skin; Class 5 in respect of Dietary fiber; Albumin dietary supplements; Dietary supplements with a cosmetic effect; Enzyme dietary supplements; Glucose dietary supplements; Nutritional supplements; Nutritive substances for microorganisms; Propolis dietary supplements; Protein dietary supplements; Royal jelly dietary supplements; and Class 32 in respect of Beer; Energy drinks; Mineral waters [beverages]; Non-alcoholic beverages; Seltzer water; Soda water; Soft drinks; Table waters; Vegetable juices [beverages]; Waters [beverages].

 

The Applicant argued that the trade mark is identical to the well-known earlier trade mark of the Applicant, “Glow Recipe”, that is protected. The goods and/or services covered by the registered mark are also identical or similar to the Applicants’ goods and services protected by the earlier trade mark.

 

The Proprietor filed evidence with the Registrar but failed to supply a copy of the evidence to the Applicant. On two occasions the Registrar sought evidence of service of evidence upon Applicant, also stating that failure to reply would constitute an admission of the facts as alleged by Applicant. On both occasions Proprietor failed to reply.

 

The Proprietor did not respond to the Registrar’s directions and did not attend the hearing altogether. In the circumstances, the Proprietor was deemed to admit to the facts alleged by the Applicant.

 

The Registrar ruled that the trade mark by the Proprietor is registered for goods similar to the goods and/or services that are protected under the earlier trade mark. Due to the similarity of the marks and the goods and/or services covered, there is a strong likelihood for confusion. Therefore, the Applicant succeeded in its application for a declaration of invalidity.

 

Claim(s)/Issue(s):

The main issues before the Registrar are:

 

Whether the registered mark is identical to the earlier trade mark that is protected;

 

Whether the goods and/or services of the registered mark and the goods and/or services covered by the earlier mark are identical;

 

Whether there exists a likelihood of confusion.

 

Decision:

Issue 1 - Whether the registered mark is identical to the earlier trade mark that is protected

 

Upon perusing the Applicant’s submissions, the Registrar found that:

 

The Applicant’s mark is well known in Singapore; and

 

The subject mark is entirely identical to the earlier trade mark.

 

Issue 2 - Whether the goods and/or services of the registered mark and the goods and/or services covered by the earlier mark are identical;

 

Whilst the Applicant did not expressly state the goods and/or services that are protected under the earlier trade mark, it is highly likely the Applicant’s goods and/or services are identical to the Proprietor’s goods and / or service in relation to beauty, skin care products, health-related products, amongst others.

 

Issue 3 - Whether there exists a likelihood of confusion.

 

In view that both marks are identical and that their respective goods and services are similar, a likelihood of confusion is more likely than not to exist; and

 

Further, in view the nature of the Applicant’s goods can be readily accessed through online and bricks and mortar trade channels with low barriers to entry, for the purposes of health and beauty, there is a high likelihood of confusion.

 

Points of interest:

The proceedings clarified/affirmed the following:

 

The burden of proof relating to an application for a declaration of invalidity falls on the Applicant;

 

Silence (no response) is deemed as an admission by the Proprietor to the facts alleged by the other party;

 

A trade mark must not be registered if it is identical with an earlier trade mark and is to be registered for goods and/or services similar to those for which the earlier trade mark is protected, resulting in a likelihood of confusion on the part of the public.