The Singapore Court of Appeal has recently affirmed the decision of the High Court of Singapore and invalidated Global Tobacco Manufacturers (International) Sdn Bhd’s (“GTM”) trade mark registration for
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in respect of cigarettes and related products owing to its similarities to an earlier registration for the mark
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in the name of Mr Jamal Abdulnaser Mahmoud Al Mahamid. Mr Al Mahamid also sought to invalidate GTM’s registration under the bad faith and reputation based grounds however, was unsuccessful due to a lack of evidence.
These decisions provide a reminder that trade marks which share the identical word element will not necessarily be distinguished by additional and distinct graphic elements.
The Invalidation Proceedings
Invalidation proceedings were brought by Mr Al Mahamid on the basis that:
- GTM’s mark is similar to Mr Al Mahamid’s trade mark registration covering cigarettes and related products, and there is a likelihood of confusion;
- use of GTM’s mark amounts to passing off;
- GTM’s application was made in bad faith; and
- given that Mr Al Mahamid’s mark is well known in Singapore, use of GTM’s mark indicates a connection between the parties, and there is a likelihood of confusion because of such use.
High Court decides that the cigarette marks are too similar
At first instance, the High Court decided that the word “Manchester” dominates each mark. While there were additional and distinct graphic elements to each mark, these did not “draw significant attention away from the words” and “it was the word “Manchester” that would be remembered, not the surrounding frill”. As such, the marks were considered confusingly similar.
“Manchester” inherently distinctive of cigarettes and tobacco
Interestingly, the High Court considered the word “Manchester” to be inherently distinctive of cigarettes because “it has no connection in general usage with cigarettes or tobacco, and would not provide any information in itself to aid a consumer buying cigarettes. The word “Manchester” does not describe cigarettes or tobacco in anyway”. Although it was acknowledged that Manchester was a city in England in the introductory paragraph of the High Court’s decision, the geographical significance of the word Manchester did not detract from the distinctiveness of that word in relation to the goods in question, and was therefore not considered a factor mitigating a likelihood of confusion.
Likelihood of confusion between the two tobacco companies trade marks
The High Court considered that there was a likelihood of confusion as the two marks cover identical goods, and because the marks are highly similar. Despite the different visual elements present in each mark, the word MANCHESTER is common to each and “dominates or is at least a significant part of, either mark”. In these cases, any consumer with imperfect recollection would be likely to confuse goods bearing one mark for the other. Moreover, while GTM argued that the lack of evidence of actual confusion was an important consideration, the High Court considered that this was not fatal as such evidence is not necessary to demonstrate a likelihood of confusion.
The Court of Appeal agrees: Marks are too similar and likely to confuse
The Court of Appeal agreed that the dominant element of both marks is the word “Manchester”, that the non textual components have little impact in differentiating the marks, and that “Manchester” is inherently distinctive in connection with cigarettes. Accordingly, the Court of Appeal considered that there was a high degree of similarity between the marks and its use is likely to confuse.
Was GTM’s trade mark application made in bad faith?
Though not the subject of appeal, it is interesting to note that before the High Court, Mr Al Mahamid also claimed that GTM’s registration should be invalidated on the ground that it was made in bad faith. While Mr Al Mahamid argued that GTM must have known of his mark when GTM started to use its mark due to his sales in many other countries, there was no supporting evidence that GTM’s conduct fell short of normally accepted standards of commercial behaviour. The High Court commented that the cases on bad faith show “that something akin to exploitation or dishonesty is required”.
Lack of evidence to support goodwill and reputation
Finally, the ground that GTM’s registration should be invalidated because use of GTM’s mark amounts to passing off also failed before the High Court and were not subject to appeal. This ground was unsuccessful primarily due to the lack of evidence supporting the reputation in Mr Al Mahamid’s mark in Singapore, serving as a timely reminder to litigants to ensure that adequate evidence is filed to support a claimed reputation.