Tribunal/Court:
IPOS
Type:
Opposition
Applicant’s Marks (Application Marks):
1.
Classes: 9 and 42
2.
Classes: 38 and 45
Opponent’s Marks:
1.
Classes: 9, 35 and 42
2.
Classes: 3, 5, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 22, 24, 25, 26, 27, 28, 30, 34, 35, 36, 38, 41, 42, 43 and 45
Procedural History:
This trade mark opposition was commenced by the owner of the “Mitalk” and “Mi” trade marks (registered in multiple classes including Classes 09, 38 and 42) against MiChat Pte Ltd.’s application to register “Michat” mark in Classes 9, 38, 42 and 45.
Claim(s)/Issue(s):
Decision:
Opposition was allowed in Applicant Mark – 1 (Classes 9 and 42).
Application Mark – 2 (Classes 38 and 45) will proceed to registration. Each party is to bear its own costs.
Application Mark vs. Opponent’s Earlier Mi Mark
The Registrar found that Opponent’s Earlier Mi Mark is evidently more dissimilar than similar to the Application Mark.
When observed in totality, the Registrar found the marks are more dissimilar than similar:
Application Mark vs. Opponent’s Earlier Mitalk Mark
visually more similar than dissimilar to a low extent;
aurally more similar than dissimilar to a low extent;
conceptually considerably more similar than dissimilar;
goods and/or services in Application Mark-1 are similar;
goods and/or services in Application Mark-2 are dissimilar; and
likelihood of confusion is established.
**An appeal to the High Court on the Registrar’s decision is now pending.
Summary:
Xiaomi wins opposition against MiChat trade mark registration in Singapore citing MiChat is similar to its MiTalk trade mark. Xiaomi was also successful in establishing that MiTalk was well known and that allowing MiChat to be used in Singapore would mean MiChat was clearly passing off as MiTalk.