Twitter, Inc. v V V Technology Pte Ltd [2022] SGIPOS 4

Tribunal/Court:

IPOS

 

Type:

Opposition

 

Applicant’s Mark ("Application Mark"):

Singapore Trade Mark Application No. 40201818292X for “” in Class 42:

“Information services relating to information technology; Maintenance of computer software relating to computer security and prevention of computer risks; Maintenance of software for internet access; Monitoring of computer systems by remote access; Preparation of reports relating to computer programs; Providing Information on Computer technology and programming via a web site; Provision of information relating to computer programming.”.

 

Opponent’s Registered Marks:

Singapore Trade Mark No. 40201515578X for “” in Class 09, 35, 38, 41, 42 and 45.

 

Procedural History:

This trade mark opposition was commenced by TWITTER, INC. against V V Technology Pte Ltd, a competitor’s application to register “”.

 

Claim(s)/Issue(s):

Ground 1 - Section 8(2)(b)*

Whether the Application Mark is similar to the earlier Opponent’s Mark

Ground 2 - Section 8(7)(a)*

Whether there is passing off.

*Opponent also relied on its following prior unregistered marks: 

 

Decision:

Opposition succeeds. Application Mark is refused registration.

 

The Opponent has succeeded based on Grounds 1 & 2:

 

Ground 1 - Section 8(2)(b)

The Registrar’s Findings:

1. Similarity of Mark: Application Mark is marginally visually similar, aurally identical and conceptually identical to Opponent’s Marks.
2. Similarity of Services: Requirement is met due to some clear overlap in the services (“Monitoring of computer systems by remote access; Maintenance of computer software etc.")
3. Likelihood of Confusion: Registrar has opined that consumers are more likely to perceive an economic link between the two marks – either that the Application Mark is a new iteration of the Opponent’s Mark, and/or that the Application Mark is a modified mark that the Opponent is using for new closely-related digital services which are extensions of the Opponent’s existing range of services.

 

Ground 2 - Section 8(7)(a)

The Registrar’s Findings:

1. Goodwill: Opponent has acquired goodwill in its business in Singapore.
2. Misrepresentation: Due to finding that there is a likelihood of confusion under Section 8(2)(b) above, the Registrar has found that the Opponent has established this element.
3. Damages: Registrar has found that there is a real risk that the Applicant’s misrepresentation would divert sales and custom away from the Opponent.