English Singapore Trade Marks - Charlotte Pipe and Foundry Company v YITAI (SHANGHAI) PLASTIC CO., LTD. [2020] SGIPOS 14
Tribunal/Court:
IPOS
Type:
Opposition
Applicant’s Mark (Application Mark):
Classes: 17, 19 and 20
Opponent’s Registered Mark:
Class: 6
Opponent’s Unregistered Mark (Owner at Common Law):
1.
Classes: 6 and 17
2.
Classes: 6 and 17
Procedural History:
This trade mark opposition was commenced by the owner of the “Charlotte Pipe” trade mark (registered in Class 6 for cast iron pipes and fittings) against a competitor’s application to register “Charlotte” (in Classes 17, 19 and 20). The Opponent also relied on its rights on its unregistered marks, “Charlotte” and “Charlotte Pipe and Foundry Company”.
Claim(s)/Issue(s):
- The Application Mark was passing off as the Opponent;
- The Application Mark is similar to the Opponent’s Mark; and
- The Opponent’s Mark is well-known.
Decision:
Opposition allowed. Application Mark refused registration. Applicant to pay 1/3 Opponent’s cost.
Application Mark was passing off as the Opponent
The Opponent succeeded in passing off having established goodwill, misrepresentation and likelihood of suffering damages.
While the Applicant has failed to submit any evidence of use of the Application Mark in Singapore before the date of the International Registration (designating Singapore), the Registrar found that the Opponent had goodwill in Singapore based on evidence of the its sales revenue in Singapore.
Additionally, due to the Applicant’s lack of explanation on how they derived their mark and the similarity between the Application Mark and the Opponent’s unregistered “” mark, the Registrar has inferred that the Applicant deliberately copied the Opponent’s mark and the element of misrepresentation was satisfied.
As the Applicant had deliberately misrepresented the Opponent’s mark, it is indisputable that the Opponent’s goodwill would be adversely affected, especially as the parties were competitors supplying the similar type of goods.
Application Mark is similar to the Opponent’s Mark
The Opponent failed in arguing that the Application mark was similar to the Opponent’s as the Opponent’s registered mark was not an earlier mark.
A pre-requisite element of this ground is dependent on the fact that the Opponent’s mark(s) is/are the earlier mark(s).
While the Opponent had claimed to be an earlier mark in their filed evidences, the Registrar agreed with the Applicant that the application mark is in actual fact the earlier mark, with the International Registration date of 7 October 2015, as compared to the Opponent’s mark with the filing date of 9 February 2016. The acceptance date of publication or the date that the Registry was notified of the Singapore designation was not relevant.
As the pre-requisite was not met, this ground has failed.
Opponent’s Mark is well-known
The Opponent has also failed in arguing that it’s registered and unregistered marks were well-known marks
The Registrar, based on the evidences the Opponent has provided, has acknowledged that at most, the Opponent’s marks are known. However, that does not equate to being well-known. Additionally, the Opponent relied too heavily on the fact that the company and its marks was established in 1901 and known throughout the world, even in Singapore but, there were not enough evidences submitted to discharge the burden on the Opponent’s part (i.e., to show that the marks were well known in Singapore at the relevant date).
Summary:
Despite being the earlier mark, “Charlotte” plastic pipes fails in its bid to secure trade mark registration in Singapore after opposition by Charlotte Pipe and Foundry Company the registered proprietor of “Charlotte Pipe” trade mark forcast iron pipes and fittings.
