Sociedad Anonima Damm v Hijos de Rivera, S.A. [2022] SGIPOS 6

Tribunal/Court:

IPOS

 

Type:

Opposition

 

Applicant’s Mark:

Singapore Trade Mark Application No. 40201910153U (IR No. 1166479) for “” in: Class 32 [Beer].

 

Opponent’s Registered Mark:

Singapore Trade Mark No. T1114860B for “” in: Class 32 [Beer].

 

Procedural History:

This trade mark opposition was commenced by Sociedad Anonima Damm, owner of the registered “” trade mark in Class 32 against Hijos de Rivera, S.A., a competitor’s application to register “” in Class 32. The Parties are involved in several IP disputes worldwide.

 

The Opponent also relies on its three (3) unregistered marks in support of its opposition: 

 

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 is passing off as the Opponent;

 

Decision:

Opposition failed on all grounds.  The Application is also entitled to costs to be taxed, if not agreed.  

Similarity between the Competing Marks:

1. The Registrar has found that the Application Mark and Opponent’s Marks to be:

• Visually dissimilar;
• Aurally dissimilar; and
• Conceptually not similar.

2. The Registrar found that the word “ESTRELLA” is not the dominant component in either the Application Mark or the Opponent’s Registered Mark. The Registrar is of the view that the average consumer would view “ESTRELLA” and “DAMM” together as a whole and not simply focus on “ESTRELLA” or “DAMM”.  As such, both “ESTRELLA” and “DAMM” would be equally dominant. Similarly, each of the textual elements in the Application Mark, “ESTRELLA” and “GALICIA” is equally dominant.

3. Therefore, it was concluded that opposition under Section 8(2)(b) failed.

 

Well-Known Mark:

4. The Registrar ruled that opposition under Section 8(4) failed.  Evidence shows that the sales of “ESTRELLA DAMM” products are very low and the distribution is severely limited.  Additionally, the Opponent’s evidence on advertising and marketing is not significant and it insufficient to establish that the Opponent’s Marks are well known.

 

Passing-Off:

5. The Registrar ruled that opposition under Section 8(7)(a) failed. The Registrar concluded that the use of the Application Mark is not likely to result in consumers being deceived or confused into thinking that the Applicant’s goods are, or emanate from the Opponent. Additionally, the element of misrepresentation was also not established.