Singapore Trade Marks - The underdog wins it all in its attempt to register its trade mark – Discovery Communications, LLC v A-Star Education Discovery Camps Pte. Ltd. [2020] SGIPOS 4.

In a decision rendered by the Intellectual Property Office of Singapore (IPOS), it was held that the Opponent had failed on all of the following grounds of opposition for the Applicants application to register its’ mark:

• that the mark and the goods and services were similar in that there would be a likelihood of confusion amongst the public (Section 8(2)(b) Trade Mark Act);
• that based on the law of passing off, goodwill, misrepresentation and likelihood of damages was established (Section 8(7)(a) Trade Mark Act);
• that it’s mark is well known in Singapore and in registering the Applicant’s mark damage would be caused to the Opponent’s interest (Section 8(4)(b)(i) read with 8(4)(a) of the Trade Mark Act); and
• that the Applicant’s intention of registering its mark is one that was made in bad faith (Section 7(6) of the Trade Mark Act).

 

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

 

A-STAR-Education Discovery Camps Pte. Ltd. v Discovery Communications, LLC (“Applicant”).

A Singapore Private Limited Company that provides educational development and enrichment camps for children in Singapore and has more than 15,000 students worldwide.

 

Discovery Communications, LLC (“Opponent”).

The Opponent commenced its business in 1985 through its television channel, The Discovery Channel and became one of the world’s leading non-fiction media companies with over 3 billion subscribers in over 220 countries and territories, including Singapore.

 

(B)       What actually happened?

The Applicant applied to register the trade mark “Discovery CAMPS” in Singapore under classes 9, 16 and 43 on 26 July 2017. The goods and services under the application were focused on its educational services and the products required to aid its educational services. The goods included audio cassettes in order to teach languages.

 

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

The Opponent relied on four grounds of opposition under the Trade Marks Act which primarily reads as follow:

 

• Section 7(6) of the Act: a trade mark shall not be registered if the application is made in bad faith;
• Section 8(2)(b) of the Act: that a trade mark shall not be registered if it is similar to an earlier protected trade mark of similar or identical goods or services as there exists a likelihood of confusion on the part of the public;
• Section 8(7)(a) of the Act: that a trade mark shall not be registered if its use in Singapore is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade; and
• Section 8(4)(b)(i) read with section 8(4)(a): where an application of whole or essential part of a trade mark is made on or after 1st July 2004 and the mark is identical or similar to an earlier mark, then the later mark shall not be registered if the earlier mark is well known in Singapore and use of the later mark would indicate a connection that is likely to damage the interests of the proprietor of the earlier mark.

 

(D)       Holding

The Opponent failed on all grounds and the Applicant was able to register the trade mark “Discovery CAMPS” in classes 9, 16 and 43 where the goods and services covered by the application were predominantly for educational purposes.

 

(E)        Rationale for holding

Decision on Section 7(6):

The Opponent relied on Section 7(6) of the Trade Marks Act in opposing the Applicant’s trademarks applications by arguing that the Applicant had acted in bad faith by having its name change twice since filing its application to register the mark. The Opponent further asserted that the Applicant had deliberately changed the names to give it a ‘veneer of legitimacy’. The Applicant argued that these allegations were baseless and that they have put in hardwork and numerous steps in establishing their own reputation and goodwill around the Application mark. In substantiating this point, they cited the case ‘Jo’s the Boss (SRIS O/170/99)’ where it was stated in the decision that “[a]n allegation that the applicants were aware of the use and worldwide reputation of the opponents’ trade marks, is not sufficient to sustain an objection to registration under this head”.
Supporting the Applicant, the Hearing Officer stated that to support an allegation such as bad faith, there has to be solid evidence and due to the lack of the same, the Opponent failed on this ground.

 

Decision on Section 8(2)(b):

In making its decision under section 8(2)(b), the Hearing Officer relied on the step by step approach set out by the Court of Appeal in Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911 (“Staywell”):

• Similarity (or identity) of marks;
• Similarity (or identity) of goods or services; and
• Likelihood of confusion arising from the two similarities;

 

Similarity of marks

The three established aspects of similarity in marks is aural, visual and conceptual similarity. Applying the facts of the present case, the Hearing Officer found that visually the marks were more dissimilar than similar by making references to the placement of the glove on the letter ‘D’ of the Opponent’s mark and the cursive font of the word ‘Discover’ on the Applicant’s mark.

As for aural and conceptual similarity the Hearing Officer found that the marks were more similar however the similarity in the word Discovery itself was not considered to be distinctive.

 

Similarity of Goods and Services

The test adopted in comparing the goods and services of the competing marks registered is set out in the English case of British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (“British Sugar”) where the following factors were held to be relevant considerations in determining the question of similarity of goods and services:

• The respective used of the respective goods or services;
• The respective end users of the respective goods or services;
• The physical nature of the goods or services;
• The respective trade channels through which the goods or services reach the market;
• In the case of self-serve consumer items, whether in practice they are respectively found or likely to be found on the same or different shelves; and
• Whether the respective goods or services are competitive or complementary. This inquiry may take into account how those in the trade classify goods, for instance whether market research companies who act for the industry put the goods or services in the same or different sectors.

 

Comparing the goods and services registered under the parties’ respective marks, the Opponent’s mark was not registered for services under Class 43 but that it services under Class 39 was wide enough to overlap with the Applicant’s class 43. Furthermore, the Hearing Officer also found there to be an overlap of the goods in class 9 and 16 between both the Applicant and Opponent’s mark.  In concluding under Goods and Services, the Hearing Officer found that there was similarity between the Opponent and Applicant goods and services.

 

Likelihood of confusion

In assessing likelihood of confusion, the Hearing Officer took into consideration the aural, visual and conceptual similarity of the marks, the similarity of goods and services of both the marks, reputation, impression and possibility of imperfect recollection of both the marks to conclude that although both the marks are more similar than dissimilar, the lack of distinctiveness in the word “Discovery” did not give rise to likelihood of confusion.

 

Decision on Section 8(7)(a):

In assessing the ground of opposition under section 8(7)(a), the Hearing Officer went through the element of goodwill, misrepresentation and damage which are required to be successful on the ground of invalidation based on the tort of passing off.

 

Goodwill

In Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) [2016] 4 SLR 86 (“Singsung”), it was held that goodwill would clearly exist in Singapore if it is shown that a business offers a product or service for sale here and a customer purchases the product or consumes the service here.

As the Hearing Officer had previously established that there is no likelihood of confusion between the competing marks, there cannot be any misrepresentation to sufficiently confuse the public into mistakenly assuming that the Applicant’s goods and services were identical to that of the Opponent’s. Therefore, the Opponent did not succeed on the ground of passing off.

 

Decision on Section 8(4)(b)(i):

In order to succeed under section 8(4)(b)(i), the Opponent had to establish all four of the following elements:

• The whole or an essential part of the Application mark is identical with or similar to an earlier trade mark;
• The earlier trade mark is well known in Singapore;
• use of the Application mark in relation to the goods and services for which the Application Mark is registered would indicate a connection between those goods or services and the proprietor of the earlier mark; and
• such use of the Application Mark is likely to damage the interests if the proprietor of the earlier trade mark. 

 

Earlier trade mark and well known earlier trade mark

Taking the overall evidence into consideration, the Hearing Officer found that the evidence was sufficient to establish that the Opponent’s earlier marks were well known in Singapore but that present mark were not deemed to be well known to the public at large in Singapore. In light of this and due to the lack of evidence on reasonable likelihood of confusion, the Opponent did not succeed on this ground.

 

(F)       Points of interest

The case demonstrated a classic example of a corporate giant going after a small company incorporated in Singapore but the end result of it was one that benefitted the underdog. This serves as a motivation to small business to pursue their trade mark rights without hesitation.