Applying visual similarity principles to marks with dominant textual components

Published 08 June 2016

Facts
Specialist pet products supplier B2K Pet Products Pte Ltd was founded in 2008, while independent pet food company Pets Global Pte Ltd was incorporated in 2006. Both own trade marks relating to cat litter products.

B2K Pet Product’s trade mark related to goods in Class 31 with the specification of “Cat litter”. Pets Global’s earlier trade mark was registered in the same class with the specification “Litter for animals namely, food for cats”.

Applicant’s (B2K Pet Products Pte Ltd)  trade mark

Opponent’s   (Pets Global Pte Ltd) earlier trade mark

When B2K Pet Product’s trade mark application was accepted and published on October 25 2013 for opposition purposes, Pets Global filed a notice of opposition. Pets Global’s grounds of opposition were that B2K Pet Product’s  mark was similar to Pets Global’s mark (Section 8(2)(b) of the Trade Marks Act) and Pets Global was passing off their products as that of B2K’s (Section 8(7)(a) of the Trade marks Act).

In support of the Section 8(2)(b) claim, Pets Global argued as follows to show that both marks were visually and conceptually similar:

  • both were depictions of a signboard;
  • the word ‘premium’ appeared in both marks in gold font;
  • both marks had textual components as the dominant component i.e ‘Kit Cat’ and ‘Fussie Cat’; and
  • The textual component of both marks was made up of white cursive font against a black background.

In support of the Section 8(7)(a) claim, Pets Global argued as follows to show that it had goodwill in Singapore on the relevant date:

  • Pets Global was incorporated in 2006 and had been in the business of selling cat litter and was the registered proprietor of its trade mark in Singapore at all material times. It also had applications and registrations in US, Malaysia, Russia, Japan, South Korea, Taiwan and Thailand.
  • It sold its “Fussie Cat” products in Singapore, US, Canada, Russia, Malaysia, Indonesia, Hong Kong, China and at online outlets.
  • It had used digital media marketing to promote its business in Singapore under its trade mark, in which the mark was prominently featured on various websites.

Decision
In  Pets Global Pte Ltd v B2K Pet Products Pte Ltd  ([2016] SGIPOS 3) the Hearing Officer held that Pets Global’s opposition failed on both grounds. 

With regard the Section 8(2)(a) ground, the Hearing Officer found that the marks were not similar visually, aurally or conceptually. She noted that:

  • while both marks could be a signboard, they were different depictions of a signboard;
  • while textual components were the dominant features of each mark, the text were not similar visually, aurally or conceptually. The only possible main points of similarities in the textual component are white cursive font.
  • Overall, the only main points of similarities in the 2 contesting trade marks are

o    white cursive font against a black background

o    a device which could possibly be regarded as a “signboard”

o    the laudatory word “premium” appearing in gold

 

With regard to the Section 8(7)(a) claim, the Hearing Officer found that Pets Global did not have substantial goodwill in Singapore as Pets Global did not adduce sufficient evidence of figures on sales in Singapore and marketing and advertising efforts in Singapore.

Comment

The case at hand addressed 3 interesting points.

The first being how the court decides on visual similarity of marks where the textual component  was the dominant component of the mark. A substantially lower weightage would be given to the remaining components in the mark when deciding on similarity of marks.

In this case, the words in the mark were clearly the dominant component of the mark. It was therefore a comparison of “Fussie Cat” with “Kit Cat”. In deciding if the textual components were similar the Hearing Officer noted that :

  • Visually “Fussie Cat” and “Kit Cat” were different.
  • Aurally,“Fussie Cat” consists of 3 syllables while “Kit Cat “ consists of 2 syllables. Apart from “Cat”, there is no similarity in the remaining two syllables.
  • Conceptually, “Fussie Cat” implied the idea of a “fussy cat” or a cat named “fussie” while “Kit Cat” alluded more to the confectionary brand  “Kit Kat”  rather than to “kitten” as was argued by the Pets Global.

The second point addressed was that there is a subtle difference in establishing passing off under common law and section 8(7)(a). In this case Pets Global sought to establish passing off under Section 8(7)(a). This meant that the “misrepresentation “element required to be established for passing off is subtly different.  

For ease of reference, Section 8(7)(a) reads as follows:

8-7 A trade mark shall not be registered if, or to the extent that, its use in Singapore is liable to be prevented  -

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade.

As such, Pets Global could not submit arguments of misrepresentation by B2K Pet Products based on the packaging of its products (which it sought to do by some of its arguments in this case). Additionally, when scrutinising B2K Pet Product’s proposed mark for passing off under Section 8(7)(a), the court should consider only the “notional and fair use” of the proposed mark and its specifications under the application.

The third point being addressed by the Hearing Officer was that when considering the goodwill requirement for passing off of an online retailer, a website with the domain ‘com.sg’ does not automatically provide a sufficient nexus to business operations in Singapore. The case lays down a stricter test which requires consideration of whether “the website ultimately reaches the Singapore consumer”. This stricter test is necessary, as businesses operating online are not fettered by geographical limitations. Therefore, it should prevent frivolous passing-off claims from being brought by companies with little local presence

The Hearing Officer in reaching her decision also reiterated and applied established principles and tests including:

 

  1. To establish if a mark should be refused under Section 8(2)(b)

 

(a)     The 3 – step test (known as the “step-by –step” approach) is applied. The 3 requirements are

  • Similarity of marks (visually, aurally and conceptually)
  • Similarity of goods or services
  • Likelihood of confusion arising from the similarities.
  1. The court must ultimately conclude whether the marks when observed in their totality are similar rather than dissimilar.

3.            When considering similarity, the court considers the average consumer who would exercise some care and a measure of good sense in making his or her purchases and is not an unthinking person in a hurry.

  1.           To establish passing off, goodwill, misrepresentation and damages suffered or likely to be suffered must be proven. Adducing sufficient evidence  (figures of sales in Singapore and marketing and advertising efforts in Singapore) is required at the very least.  In particular, to prove misrepresentation the opponents should adduce evidence directed at the following factors:

(i)                 the nature and extent of the goodwill and reputation relied on

(ii)               The closeness or otherwise of the respective fields of activity in which the opponent and the applicant carry on business

(iii)             The similarity of the marks

(iv)              The manner in which the applicant has used the mark (if any)

(v)                The manner in which the particular trade is carried out

(vi)              The class of persons who is alleged is likely to be deceived and all other surrounding circumstances.

It should however be noted the Hearing Officer’s statement that a lack of or insufficient evidence of marketing and sales effort is not fatal to a passing off claim.

 

For further information please contact:

Renee Xavier
Alpha & Omega Law Corporation
www.alphaandomega.com.sg
Email: rxavier@alphaandomega.com.sg
Tel: +65 6472 5502