Specialist pet products supplier B2K Pet Products Pte Ltd was founded in 2008, while independent pet food company Pets Global Pte Ltd was incorporated in 2006. Both own trademarks relating to cat litter products.
B2K Pet Product’s trademark related to goods in Class 31 with the specification of “Cat litter”. Pets Global’s earlier trademark was registered in the same class with the specification “Litter for animals namely, food for cats”.
When B2K’s trademark application was accepted and published on October 25 2013 for opposition purposes, Pets Global filed a notice of opposition. Pets Global’s grounds of opposition were that B2K’s mark was similar to Pets Global’s mark (Section 8(2)(b) of the Trademarks Act) and that Pets Global was passing off its products as those of B2K (Section 8(7)(a) of the Trademarks Act).
In support of the Section 8(2)(b) claim, Pets Global argued as follows to show that both marks were visually and conceptually similar:
In support of the Section 8(7)(a) claim, Pets Global argued as follows to show that it had goodwill in Singapore on the relevant date:
In Pets Global Pte Ltd v B2K Pet Products Pte Ltd ( SGIPOS 3) the hearing officer held that Pets Global’s opposition failed on both grounds.
With regard to the Section 8(2)(a) ground, the hearing officer found that the marks were not visually, aurally or conceptually similar. She noted as follows:
The case at hand addressed three interesting points.
The first was how the court decides on visual similarity of marks where the textual component is the dominant component of the mark. A substantially lower weighting would be given to the remaining components in the mark when deciding on similarity of marks.
In this case, the words in the mark were clearly the dominant component of the mark. It was therefore a comparison of 'Fussie Cat' with 'Kit Cat'. In deciding whether the textual components were similar, the hearing officer noted that:
The second point addressed was that there is a subtle difference in establishing passing off under common law and under Section 8(7)(a). In this case Pets Global sought to establish passing off under Section 8(7)(a). This meant that the misrepresentation element required to be established for passing off was subtly different. Section 8(7)(a) reads as follows:
"A trademark shall not be registered if, or to the extent that, its use in Singapore is liable to be prevented -
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trademark or other sign used in the course of trade."
As such, Pets Global could not submit an argument of misrepresentation by B2K based on the packaging of its products (which it sought to do). In addition, when scrutinising B2K’s proposed mark for passing off under Section 8(7)(a), the court considered only the “notional and fair use” of the proposed mark and its specifications under the application.
The third point addressed by the hearing officer was that when considering the goodwill requirement for passing off of an online retailer, a website with the domain ‘com.sg’ does not automatically provide a sufficient nexus to business operations in Singapore. The case lays down a stricter test which requires consideration of whether “the website ultimately reaches the Singapore consumer”. This stricter test is necessary, as businesses operating online are not fettered by geographical limitations. Therefore, it should prevent frivolous passing-off claims from being brought by companies with little local presence.
In reaching her decision, the hearing officer also reiterated and applied established principles and tests, including the following.
To establish whether a mark should be refused under Section 8(2)(b), the three-step test (known as the 'step-by-step' approach) is applied. The three requirements are:
The court must ultimately conclude whether the marks, when observed in their totality, are similar rather than dissimilar.
When considering similarity, the court considers the average consumer who would exercise some care and a measure of good sense in making his or her purchases, and is not a thoughtless person in a hurry.
To establish passing off, goodwill, misrepresentation and the damages suffered or likely to be suffered must be proven. At the very least, sufficient evidence is required (eg, sales figures in Singapore and marketing and advertising efforts in Singapore). In particular, to prove misrepresentation the opponents should adduce evidence directed at the following factors:
However, rights holders should note the hearing officer’s statement that a lack of or insufficient evidence of marketing and sales effort is not fatal to a passing-off claim
For further information please contact:
Alpha & Omega Law Corporation
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