S. C. Johnson & Son, Inc. v Off-White LLC [2021] SGIPOS 16

Tribunal/Court:

IPOS

 

Type:

Invalidation

 

Registered Proprietor’s Registered Mark:

Singapore Trade Mark No. 40201908644W for “” in Classes 3, 9, 14 and 18 registered on 22 April 2019 (“Subject Mark”).

 

Applicant’s Registered Marks (“Applicant’s Marks”):

1. Singapore Trade Mark No. T6843313F for “” in Class 5 [Insecticides, pesticides, herbicides, fungicides, rodenticides, preparations for the deterrence and control of insects, pests, weeds, rodents, and other noxious things] registered on 26 January 1968.
2. Singapore Trade Mark No. T0620794I for “” in Class 5 [Preparations for killing weeds and destroying vermin; insecticides; moth proofers; insect repellents; fungicides; rodenticides] registered on 5 October 2006.
3. Singapore Trade Mark No. T0620792B for “” in Class 5 [ Preparations for killing weeds and destroying vermin; insecticides; moth proofers; insect repellents; fungicides; rodenticides] registered on 5 October 2006.

 

Procedural History:

This application for partial invalidation was commenced by S. C. JOHNSON & SON, INC. against OFF-WHITE LLC for the latter’s Class 3 registration in respect to “lotions for skin care, no-medicated skin care preparations and non-medicated toiletry preparations” (Objectionable Goods”)

 

Claim(s)/Issue(s):

 

Ground 1 - Section 8(2)(b) read with Section 23(3)(a)(i)

1. Whether the Applicant’s marks are considered earlier marks.

 

Ground 2 - Section 8(4)(b)(i) read with Section 23(a)(iii)

2. Whether the Applicant’s marks are well-known.

 

Ground 3 - Section 8(7)(a) read with Section 23(3)(b)

3. Whether there is passing-off.

 

Decision:

The application for a declaration of invalidity FAILED in all grounds.

 

Ground 1 - Section 8(2)(b) read with Section 23(3)(a)(i)

Subject Mark vs Applicant’s Marks

The Registry found:

• The Subject Mark is visually more dissimilar than it is similar to either or both of the Applicant’s marks.
• The Subject Mark is aurally dissimilar to either or both of the Applicant’s marks.  The presence of exclamation mark in the Applicant’s mark gives a different aural impact.
• The Marks are conceptionally dissimilar.

In conclusion, the Registry found that the Subject Mark is patently more dissimilar than it is similar to either or both of the Applicant’s marks.

In view of the same, the Registry found the ground of invalidation under Section 8(2)(b) read with Section 23(3)(a)(i) failed.

 

Ground 2 - Section 8(4)(b)(i) read with Section 23(a)(iii)

The Registry found it not necessary to delve into the evidence submitted by the Applicant to establish whether either or both of the Applicant’s Marks are well known in Singapore in view of the Registry’s findings that the Marks are dissimilar.

As such, the Registry found the ground of invalidation under Section 8(4)(b)(i) read with Section 23(a)(iii) failed.

 

Ground 3 - Section 8(7)(a) read with Section 23(3)(b)

The Registry ruled that there is no realistic possibility of deception being caused by any representation inherent in the use by the Proprietor of the Subject Mark in relation to the Objectionable Goods or indeed any goods falling within the Subject Mark’s specification in view of the Registry’s findings that the Marks are dissimilar.

Therefore, the Registry found the ground of invalidation under Section 8(7)(a) read with Section 23(3)(b) failed.