Singapore Trade Marks - GCIH Trademarks Limited v Hardwood Pte Ltd [2021] SGIPOS 6

Tribunal/Court:

IPOS

 

Type:

Opposition

 

Applicant's Marks (Application Marks):

1. 

Class: 30

 

2. 

Class: 30

 

Opponent's Marks:

1. 

Class: 30

 

2. 

Class: 30

 

Procedural History:

This trade mark opposition was commenced by the owner of the “TANGO” trade mark (registered in Class 30 for chocolate and cocoa products) against a competitor’s application to register “OT TANGO” (in Class 30 for, among other things, chocolate and cocoa products).

 

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; and
3. The Opponent’s Mark is well-known.

 

Decision:

Opposition allowed. Application Mark refused registration. Applicant to pay Opponent’s cost.

1. When observed in totality the Registrar found the marks are similar to a strong degree:
   • visually similar to a significant degree;
   • aurally more similar than dissimilar; 
   • conceptually identical (or highly similar at the very least); and
   • goods are similar.
2. The Opponent succeeded in passing off having established goodwill, misrepresentation and likelihood of suffering damages.
3. The Registrar did not decide on well-known status of Opponent’s mark since the Opponent was successful in the two claims.

 

Summary:

OT Tango chocolates and cocoa products brand ousted by Tango brand in a successful opposition of the former’s trade mark registration in Singapore. The Registry found GCIH Trademarks Limited, owner of the Tango brand, had made a case that OT Tango brand was visually, aurally and conceptual similarity to Tango and further found OT Tango to have passed off as Tango.