Weider Global Nutrition, LLC v Morinaga & Co., Ltd [2021] SGIPOS 15

Tribunal/Court:

IPOS

 

Type:

Invalidation

 

Registered Proprietor’s Registered Mark (“Registered Mark”):

Singapore Trade Mark No. 40201711769U for “” in Class 5 [Dietary supplements for human; Nutritional supplements; Dietary supplemental drinks; Liquid nutritional supplements; Meal replacement drinks; Mineral nutritional supplements] registered on 22 June 2017.

 

Applicant’s Registered Marks (“Applicant’s Marks”):

1. Singapore Trade Mark No. T0105925I for “IN” in Class 32 [Non-alcoholic drinks; non-alcoholic protein and/or carbohydrate energy drinks; non-alcoholic mineral and glucose drinks; all included in Class 32.] registered on 26 April 2001. (“Applicant’s Word Mark”)
2. Singapore Trade Mark No. T0421581B for “” in Class 32 [Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; non-alcoholic protein and/or carbohydrate energy drinks; non-alcoholic mineral and glucose drinks.] registered on 8 December 2004. (“Applicant’s Composite Mark 1”)
3. Singapore Trade Mark No. T0421579J for “” in Class 32 [Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; non-alcoholic protein and/or carbohydrate energy drinks; non-alcoholic mineral and glucose drinks.] registered on 8 December 2004. (“Applicant’s Composite Mark 2”)

 

Procedural History:

This application for a declaration of invalidity was commenced by WEIDER GLOBAL NUTRITION LLC against MORINAGA & CO., LTD.

 

Claim(s)/Issue(s):

Ground 1 - Section 23(3)(a)(i) read with Section 8(2)(b)

Whether the Applicant’s Marks – Word Mark,  Composite Mark 1 and Composite Mark 2 are considered earlier marks.

Ground 2 - Section 23(3)(b) read with Section 8(7)(a)

Whether there is passing off.

Ground 3 - Section 23(1) read with Section 7(6)

Whether the application is made in bad faith.

 

Decision:

The application for a declaration of invalidity succeeds on one ground (under Section 23(3)(a)(i) read with Section 8(2)(b)) BUT failed on two grounds [under Section 23(3)(b) read with Section 8(7)(a) and Section 23(1) read with Section 7(6)].

 

Ground 1 - Section 23(3)(a)(i) read with Section 8(2)(b)

Registered Mark vs Applicant’s Composite Mark No. 1 and 2

The Registry found:

1. The Marks are visually more dissimilar than similar.
2. The Marks are aurally more dissimilar than similar.
3. The Marks are conceptionally dissimilar.

 

Registered Mark vs Applicant’s Word Mark

The Registered Proprietor does not dispute that the Registered Mark is similar to Applicant’s Word Mark.

The Registry found:

1. The Parties’ goods are more similar than dissimilar and the degree of similarity is above average.
2. There is a real risk of likelihood of confusion between the Registered Mark and the Applicant’s Word Mark.

In view of the same, the Registry found the ground of invalidation under Section 23(3)(a)(i) read with Section 8(2)(b) succeeds.

 

Ground 2 - Section 23(3)(b) read with Section 8(7)(a)

The Registered Proprietor does not dispute that the Applicant has acquired goodwill in Singapore.

However, the Registry found that the element of misrepresentation is not made out.

As such, the Registry found the ground of invalidation under Section 23(3)(b) read with Section 8(7)(a) fails.

 

Ground 3 - Section 23(1) read with Section 7(6)

The Registry found that the Applicant has not meet the standard of proof required to establish bad faith on the side of the Registered Proprietor.

Therefore, the Registry found the ground of invalidation under Section 23(1) read with Section 7(6) fails.

 

*Pending expiry of appeal period