Daimler unsuccessful in its opposition claim that VIVO is similar to VITO

Daimler unsuccessful in its opposition claim that VIVO is similar to VITO.

 

Case:

Daimler AG v Vivo Mobile Communication Co., Ltd. [2022] SGIPOS 1

 

Tribunal/Court:

Intellectual Property Office of Singapore (“IPOS”)

 

Type:

Opposition

 

Opponent:

Daimler AG (“Opponent”) is one of the largest vehicle manufacturers in the world.

 

Applicant:

Vivo Mobile Communication Co., Ltd. (“Applicant”) is a global technology company which produces electronic goods.

 

Background:

The Opponent opposed the application of the “VIVO” mark filed by the Applicant in Class 12 in respect of “Electric vehicles; Cars; Motorcycles; Driverless cars [autonomous cars]; Bicycles; Mobility scooters; Trolleys; Tires for vehicle wheels; Remote control vehicles, other than toys;Water vehicles; Air vehicles; Upholstery for vehicles” on the grounds that the mark is similar to the Opponent’s earlier mark “VITO” which was also registered in Class 12  for “Motor vehicles, parts and fittings thereof”.

 

The Opponent argued that its mark (“VITO”) is inherently distinctive and as such the Applicant’s mark meets all three aspects of similarity namely visual, aural and conceptual similarity.  The Opponent  claimed that because they had used their mark extensively, there is a likelihood of consumers being mistaken into believing that both parties are economically linked. The Opponent also alleged that the use of "VIVO" on the overlapping goods closely related to vehicles would amount to the tort of passing off and therefore the registration of "VIVO" should be disallowed. 

 

Following its assessment by way of a three-step approach, the Registrar rejected the Opponent’s contention that the marks were similar and held that there was no likelihood of confusion as the marks were similar to a low extent. In addition, the distinctive nature of the Opponent’s goods would attract a high level of attention on the consumers' part and therefore, the likelihood of consumers being confused is low. The Opponent also failed to establish the tort of passing off as the element of misrepresentation was not proven.

 

The opposition failed on both grounds, and the Registrar decided that the application will proceed to registration.

 

Claim(s)/Issue(s):

The main issues before the Registrar are:

 

Whether there are visual, aural, and conceptual similarities between both marks, which may result in a likelihood of confusion on the part of the public; and

 

Whether the tort of passing off can be established.

 

Decision:

 

Issue 1 - Whether there are visual, aural, and conceptual similarities between both marks, which may result in a likelihood of confusion on the part of the public

 

After reviewing the evidence and considering the parties’ submissions, the Registrar found that:

 

On the assessment of the similarity of marks:

 

the marks are visually similar to some extent;
aurally similar to a low extent; and
conceptually neutral or at most similar to a low extent,

 

Therefore the marks are overall similar to a low extent.

 

On the assessment of similarity of goods:

 

There is a slight overlap of goods; but due to the price point of the opponent’s mark, any confusion would be dispelled with at the latest at the point of purchase.

 

Issue 2 -  Whether the tort of passing off can be established.

 

In relation to this ground there are 3 elements to be established:

 

Goodwill;
Misrepresentation; and
Damage

 

On the assessment of Goodwill

 

As “Goodwill” in the context of passing off is concerned with the goodwill in the business “as a whole” and not specifically to the VITO mark, although sales activity was low for the VITO brand, the Registrar was satisfied that the Opponent’s “Goodwill” had been established.

 

On the assessment of Misrepresentation

 

As the Opponent’s evidence reflected the use of the VITO mark mostly if not always with its Mercedes-Benz Marks, misrepresentation is not established

 

On the assessment of Damages

 

Since misrepresentation was not established, there was no need to address the issue of damage

 

Points of interest:

 

The proceedings clarified/affirmed the following:

 

In this present case, although the marks “VITO” and “VIVO” were visually similar to some extent, the Registrar agreed with the Applicant that becaue the marks are short word marks, consumers are likely to pay close attention to each letter in the respective marks. The Applicant quoted an earlier decided case  that because the marks are short word marks “the differences in letters would be more amplified as compared to longer marks” and “the fact that there are more letters in common than not does not necessarily lead to a conclusion  that the marks are therefore similar”