Singapore Trade Marks - Xiaomi Inc. v MiChat Pte Ltd [2021] SGIPOS 2

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):

1. The Application Mark is similar to the Opponent’s Marks;
2. The Opponent’s Mark is well-known;
3. The Application Mark was passing off as the Opponent; and
4. The Application Mark has applied for in bad faith.

 

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:

• visually highly dissimilar;
• aurally similar to some extent; and
• conceptually similar to a low extent.

 

Application Mark vs. Opponent’s Earlier Mitalk Mark

1. When observed in totality, the Registrar found the marks are similar to a slight degree:

   • 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.

2. The Registrar found that the evidence was insufficient to prove that Opponent’s Mark was well known to the public at large in Singapore.
3. The Opponent succeeded in passing off having established goodwill, misrepresentation and likelihood of suffering damages in relation to Application Mark-1 only.
4. The Registrar found that the evidence was insufficient to prove that Opponent’s Mark was well known to the public at large in Singapore.
5. The Registrar did not find the Application Mark to filed in bad faith.

**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.