Singapore Trade Marks - B.R. v Elements Cosmeceuticals Pte. Ltd. [2021] SGIPOS 3

Tribunal/Court:

IPOS

 

Type:

Opposition

 

Applicant’s Marks (Application Marks):

Classes: 3 and 44

 

Opponent’s Marks:

Class: 3

 

Procedural History:

This trade mark opposition was commenced by the owner of the “BIOLOGIQUE RECHERCHE” trade mark (registered in Class 3) against a competitor’s application to register ““recherche” (in Class 3 and 44).

 

Claim(s)/Issue(s):

1. The Application Mark is similar to the Opponent’s Mark;
2. The Application Mark was passing off as the Opponent;
3. The Opponent’s Mark is well-known; and
4. The Application Mark has applied for in bad faith.

 

Decision:

Opposition allowed. Application Mark refused registration. Applicant to pay Opponent’s cost (75%).

 

1. When observed in totality, the Registrar found the marks are similar to a slight degree:
   • visually similar to a slight degree;
   • aurally similar to a slight degree; 
   • conceptually neither similar or dissimilar;
   • goods in Class 3 are identical;
   • services in Class 44 are similar to a moderate extent; and
   • likelihood of confusion is established.
2. The Opponent succeeded in passing off having established goodwill, misrepresentation and likelihood of suffering damages.
3. The Registrar found that the evidence was insufficient to prove that Opponent’s Mark was well- known to the relevant sector in Singapore.
4. The Registrar did not find the Application Mark to filed in bad faith. There is no rule of law or practice which dictates that trade mark applicants to inform the Registrar of the meaning of obscure words in the English language. The Registrar did not find dishonest or commercially unacceptable about the Applicant’s actions (or inaction).

 

Summary:

Despite “RECHERCHE” trade mark being found to be conceptually neither similar or dissimilar to “BIOLOGIQUE RECHERCHE” trade mark, the latter was successful in its opposition of the former.  “RECHERCHE” was found to be passing off as “BIOLOGIQUE RECHERCHE” after it succeeded in establishing goodwill, misrepresentation and likelihood of suffering damages.