BEABA v Biba (Zhejiang) Nursing Products Co., Ltd [2022] SGIPOS 5 – Trade Mark Opposition Hearing for Trade Mark Nos. 40401909817Y and 40201909820Q

Tribunal/Court:

IPOS

 

Type:

Opposition

 

Applicant’s Mark (Application Mark):

Singapore Trade Mark Application No. 40201909817Y and 40201909820Q for “” in the following classes:

• Class 5 [Lacteal flour for babies; food for babies; nutritional supplements; infant formula; powdered milk for babies; sanitary towels; diapers for incontinence; babies' diaper-pants; adult diapers; diapers for pets; linseed oil dietary supplements; medicines for human purposes; porcelain for dental prostheses; veterinary preparations; panty liners [sanitary]; insecticidal animal shampoos; adjuvants for medical purposes; cotton for medical purposes; drugs for medical purposes; pants, absorbent, for incontinence]; and
• Class 16 [Paper; towels of paper; advertisement boards of paper or cardboard; note books; magazines [periodicals]; pictures; wrapping paper; stationery; stamps [seals]; steel pens; writing instruments; writing or drawing books; page holders; books; pads [stationery]; envelopes [stationery]; printing blocks; drawing rulers; envelope sealing machines for offices; toilet paper].

 

          Opponent’s Registered Mark (Opponent’s Mark):

Singapore Trade Mark No. 40201401833P for “ ” in the following classes:

 

• Class 7 [Electromechanical kitchen apparatus; electromechanical food preparation machines; food mixers; electric food blenders; electric fruit presses for household use; electric food processors];
• Class 9 [Weighing apparatus and instruments (scales and food scales); thermometers not for medical use; sunglasses; electric visual and/or sound monitoring apparatus; covers for electric outlets; safety harnesses for children (other than for vehicle seats or sports equipment); nets for protection against accidents; light dimmers (regulators];
• Class 10 [Surgical, medical, dental and veterinary apparatus and instruments; apparatus and instruments for the treatment of babies; apparatus and instruments for babies namely, feeding bottles, incubators and teats; feeding bottles; feeding bottle teats; feeding bottle valves; babies' pacifiers [teats]; thermometers for medical use; teething rings.];
• Class 11 [Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating; apparatus and utensils for heating and cooking by electricity; plate warmers; stoves; electric feeding bottle warmers; electric baby food jar warmers; electric apparatus for heat conditioning; sterilizers for bottles and breastfeeding equipment; lighting apparatus; nightlights];
• Class 20 [Furniture; mirrors; display frames and mirror frames; baby changing tables; seats for children; booster seats for children for feeding (furniture), not for use in vehicles; high chairs for children; baby bouncers; infant walkers; cradles; umbrella beds (furniture); playpens for babies; mats for infant playpens; toy chests; baskets of wicker; hooks, not of metal, for clothes rails; clothes hangers and covers; mobiles for decoration; cushions; packaging containers of plastic]; and
• Class 21 [Non-electric household or kitchen utensils and containers (neither of precious metal, nor coated therewith); non-electric cooking utensils; table plates; glasses; bowls; cups; egg cups; non-electric feeding bottle warmers; baby food jar warmers (non-electric); refrigerating containers (not electric or gas powered); insulated containers, bags, small bags and pouches for food or beverages, for household use; microwave containers; feeding bottle drainers; hand-held shakers; brushes for cleaning feeding bottles; combs, sponges and brushes (except paint brushes); articles for cleaning purposes; potties for babies; portable baby baths; trash cans; babies' diaper disposal bins; toilet cases; hair brushes; toilet sponges, toothbrushes; flasks; perfume vaporizers; soap boxes; cotton bud boxes for household use; powder boxes].
• In actual use the Opponent’s mark appears in stylised form. (Opponent’s Stylised Mark)

 

Procedural History:

This trade mark opposition was commenced by BEABA, owner of the registered “” trade mark above in Class 7, 9, 10, 11, 20 and 21 against Biba (Zhejiang) Nursing Products Co., a competitor’s application to register “” in Class 5 and 16. The Parties are involved in several IP disputes worldwide.

 

Claim(s)/Issue(s):

1. The Application Mark is similar to the Opponent’s Mark;
2. The Application Mark is passing off as the Opponent;
3. The Opponent’s Mark is well – known;
4. The Application was made in bad faith;
5. The Application (in relation to Class 5 goods) is contrary to public policy or morality or deceptive; and
6. The Application Mark (in relation to Class 16 goods) violates the Opponent’s copyright of its Stylised Mark.

 

Decision:

Opposition succeeded on 3 grounds out of 6 grounds for Class 5 and 2 out of 6 grounds for Class 16. The Opponent was awarded 50% of its costs for the Class 5 application and 30% of its costs for Class 16 application, to be taxed, if not agreed.

 

Similarity between the Competing Marks

1. The Registrar has found that the Application Mark and Opponent’s Marks to be:

• Visually similar, i.e., very high degree of similarity;
• Aurally identical; and
• Conceptually identical.                                             Overall, the marks are more similar than dissimilar and the degree of similarity is very high.

 

2. However, the Registrar found that there is goods-similarity between the Applicant’s Class 5 goods and the Opponent’s Registered Goods but there is no goods-similarity for Class 16 goods.

 

3. As to likelihood of confusion, the Registrar found that given the high degree of similarity between the marks, coupled with imperfect recollection in consumers, it would be virtually impossible for consumer to differentiate the competing marks. As such, the Registrar found that there is likelihood of confusion that the marks are one and the same.

 

4. Therefore, it was concluded that opposition under Section 8(2)(b) succeeded in relation to Class 5 application but failed in Class 16 application.

 

           Passing-off

5. The Registrar ruled that opposition under Section 8(7)(a) succeeded in relation to Class 5 application but failed in Class 16 application.

 

6. As to the element of damage (for the Class 5 Application), the Registrar found that there would be damage in at least two categories:

• blurring since both sides are in direct competition for some of their goods (the Opponent’s “potties for babies” in Class 21 and the Applicant’s “babies’ diaper-pants” in Class 5);
• restriction of business expansion opportunities since the Opponent would not be able to expand to the related field in Class 5.

 

       Well-Known Mark

7. The Registrar ruled that opposition under Section 8(4)(b)(i) succeeded in relation to Class 5 application but failed in Class 16 application. The Opponent (in relation to its Class 5 goods) established the following:

• The Application Mark is identical with or similar to the Opponent’s Mark;
• The Opponent’s Mark is well known in Singapore (i.e., to actual and potential consumers of baby food blenders and other childcare and baby-related products);
• Use of the Application Mark in relation to Class 5 goods would indicate a connection with the Opponent; and
• Use of the Application is likely to damage the Opponent’s interests.

 

       Bad Faith

8. The Registrar ruled that opposition under Section 7(6) succeeded in relation to both Class 5 and Class 16 applications.  The Registrar ruled that the Applicant failed to furnish a credible explanation on how the Application Mark was derived.

 

        Public Policy/Deceptive (with respect to Class 5 application)

9. The Registrar ruled that opposition under Section 7(4)(a) and (b) failed. The Registrar ruled that the Opponent failed to establish that there is some connotation or sign inherent in the mark itself that when used in relation to the goods claimed is likely to be contrary to public policy or to deceive the public.

 

      Copyright infringement (with respect to Class 16 application)

10. The Registrar ruled that opposition under Section 8(7)(b) succeeded.  The Registrar found that the visual appearance and stylisation used by the Applicant is almost identical to the Opponent.  Hence, the Registrar concluded that the Opponent’s Stylised Mark has been substantially copied by the Applicant.