Singapore Trade Marks – Opposition dismissed as the word “LOVE” should be free for all traders to incorporate into their trade marks – Cartier International AG v MoneyMax Jewellery Pte. Ltd [2018] SGIPOS 22

Intellectual Property News

In a decision rendered by the Intellectual Property Office of Singapore (IPOS), it was held reaffirmed that common words such as “LOVE” cannot be monopolised by a single trader in the jewellery trades as such words are frequently used in the industry.

 

(A) Who are the parties involved in this case?

(a) Cartier International AG (“Opponent”)

The Opponent is wholly-owned subsidiary of the Swiss Richemont Group and is regarded as one of the most prestigious jewellery in the world. The Opponent has a wide range of jewellery collections, which in particular to this case, the “Love” collection. The “Love” collection has a prior registration which consists of a device mark made with the letter “o” in the word “Love” as a slotted screw head and the letter “e” in small letter (“Device Mark”). It was confirmed by the Opponent that it has mainly used the Device Mark on its jewellery pieces, rather than the word “Love” simpliciter.

(b) MoneyMax Jewellery Pte. Ltd. (“Applicant”)

The Applicant is a leading pawnbroking chain with pawnshops across Singapore and Malaysia. The Applicant’s “LOVE GOLD” mark (“Applicant’s Mark”) is displayed on the storefront and within each of the Applicant’s stores. The Applicant’s Mark comprised the word “LOVE” positioned above the word “GOLD” and the two words are accompanied by the Chinese characters of “Zhen Jin” (transliteration) at the side of the word “LOVE GOLD” and enclosed within a rectangular device.

 

(B) What actually happened?

In the present case, the Opponent sought to rely on its Device Mark to prevent the registration of the Applicant’s “LOVE GOLD” mark under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”).

To begin with, section 8 of the Act sets out the “relative grounds for refusal of registration”. This means that an opposition is made based on an earlier right which is “relative” to the current application. In the present case, the Opponent sought to rely on the following relative grounds of opposition:

Section 8(2)(b), that the Applicant’s Mark is similar to the Opponent’s Device Mark and is to be registered for goods or services identical with or similar to those for which its earlier trade mark is protected and that there is a likelihood of confusion;
Section 8(4)(b)(i), that the Applicant’s Mark conflicts with the Opponent’s Device Mark which is claimed to be not only well known but also well known to the public at large in Singapore; and/or
Section 8(7)(a), that the Applicant’s Mark should not be registered by virtue of the law of passing off.

Unlike the above relative grounds of opposition, section 7 of the Act sets out the “absolute grounds for refusal of registration” which such “absolute” grounds are concerned with the nature of the mark. The Opponent hence sought to further rely on the following absolute grounds of opposition:

Section 7(1)(b), that the Applicant’s Mark is devoid of any distinctive character; and/or
Section 7(1)(c), that the Applicant’s Mark is descriptive of the intended purpose of the goods.

 

(C) What are the issue(s) in dispute?

(a) Whether the Applicant’s mark can be refused registration under the relative grounds of opposition; and/or

(b) Whether the Applicant’s mark can be refused registration under the absolute grounds of opposition.

 

(D) Holding

The Registrar noted that in Love & Co Pte Ltd v The Carat Club Pte Ltd [2009] 1 SLR(R) 561, the word “LOVE” is a word which is commonly used by jewellery traders and in the seminal decision of Love & Co, the word “LOVE” should not be monopolised by any trader. In this sense, the Registrar found that the Opponent should not be permitted to prevent registration of the Applicant’s Mark just because it incorporates the word “LOVE”. As such, the Registrar found that the Opponent fails on both relative and absolute grounds of opposition and the Applicant can therefore proceed with the registration of its mark.

 

(E) Rationale for holding

(a) “Relative” grounds of opposition

The Registrar noted from the case of Monster Energy Company v NBA Properties, Inc [2018] SGIPOS 16 that the basic criterion in all these relative grounds of opposition is that there must be identity or similarity between the competing marks. This requires one to consider the distinctiveness of an earlier mark and whether it is well known. The Registrar noted in the same case that the requirement of mark-similarity under Section 8(7) of the Act is encapsulated in the second element of the tort of passing off, namely, misrepresentation and such an operative misrepresentation will hinge on the similarity between the Applicant’s Mark and the Opponent’s Device Mark.

In making the comparison, the Registrar first considered whether the Opponent’s Device Mark is distinctive but found that the any distinctiveness in the Opponent’s Device Mark resides in the screwhead device found in the letter “o” and possibly the use of a small letter “e”. However, as neither stylisation of the Opponent’s Device Mark is present in the Applicant’s Mark, the Registrar opined that that the Applicant’s Mark cannot be said to be similar to the Opponent’s Device Mark within the meaning of Sections 8(2)(b); 8(4)(b)(i) and 8(7)(a) as otherwise the Opponent’s Device Mark would extend to the word “LOVE” simpliciter itself, i.e. a monopoly right would be conferred to the Opponent.

The relative grounds of opposition therefore fail at the threshold and the Registrar found no need to consider the other elements of the provisions.

 

(b) “Absolute” grounds of opposition

The Registrar noted that the Opponent attempted to rationalise that the Applicant’s Mark is not distinctive and/or is descriptive as follows:

the Chinese characters of “Zhen Jin” should be ignored as they held no particular meaning and are of secondary significance compared to the English words “LOVE GOLD”;
the separate words “LOVE” and “GOLD” are not distinctive and are descriptive of jewellery; and
the combination of the words “LOVE” and “GOLD” only adds to the descriptiveness of the goods and services.

However, the Registrar found that the Opponent’s approach is misguided and highlighted that in assessing distinctiveness, a mark should be considered as a whole ad not broken up into its component parts. Whilst the Registrar noted that it is not disputed that the Chinese characters of “Zhen Jin” has no meaning, these words, when used to accompany the word “LOVE GOLD” in the enclosed rectangular device, made up a significant portion of at least a third of the mark and in the Registrar’s view would render the Applicant’s Mark distinctive in whole.

As such, the Registrar also rejected the Opponent’s absolute grounds of opposition.

 

(F) Point of Interest

As opined by the Hearing Office, no one should be allowed to have a monopoly over common words such as “LOVE”. It should be free for traders to incorporate into their trade marks for jewellery. You can’t buy love nor can you prevent others from using it in their trade marks. The present case hence demonstrated how far exclusivity of a registered trade mark extends and the appropriate breadth of the legal monopoly that a registered proprietor can be entitled to.