Tao, Hsiu-chih (the applicant) filed Singapore trademark application number T1015606G for the figurative mark Ts.Project (application mark). This application was accepted and published on April 29, 2011. Pirelli & C SpA (the opponent) opposed the application mark on the ground of similarity to their previously registered marks, passing off by the applicant and that the application was made in bad faith.

The opponent relied on their various registered marks and argued that the following marks are visually, aurally and conceptually similar to the application mark.

The opponent submitted that the Elongated P is the dominant component of the opponent’s marks and this Elongated P is “the general impression or significant detail” of the opponent’s marks and the application mark. The Registry, relying on precedents, opined that the Elongated P does not appear original or elaborate and it is likely that an average English-speaking Singaporean consumer may perceive that the letter “P” has primary purpose of accentuating the first letter of the word “Pirelli”.

With regard to visual similarity between the opponent’s first mark and the application mark, the Registry reiterated the principles of examining the marks as a “whole” and stated that the overall resemblance between the opponent’s first marks and the application mark is diminished by the fact that marks consist of words “Pirelli” and “Ts.Project” which are completely different from each other. The opponent’s second mark, which consists only of the Elongated P, was also regarded as visually dissimilar to the application mark as the words “Ts” and “Project” appearing in the application mark are not of “negligible significance” and therefore this mark as a whole is different from the application mark. The opponent’s third mark, the Elongated P with a dot, was also not considered visually similar as the other words appearing in the application mark are not insignificant and therefore despite the common “P” element, the marks as a whole are not similar. The opponent’s fourth mark, the curved “P”, was also considered as visually dissimilar to the application mark.

In relation to aural similarity, the Registrar opined that neither the number of syllables nor the individual syllables between any of the opponent’s marks were aurally similar to the application mark. Moreover, considering that neither the application mark nor the opponent’s mark convey any particular meaning, the possibility of conceptual similarity was also rejected.

With regard to opposition on the grounds of passing off, the Registrar highlighted the established requirements of goodwill, misrepresentation and damage for proving passing off. However, the opponents failed to adduce sufficient evidence to establish goodwill in Singapore, and hence, this claim was not entertained. Moreover, considering that the marks are already considered dissimilar and the applicant and opponent are in different fields of business, the chance of public confusion is unlikely. In relation to the allegation that the applicant acted in bad faith, the Registry opined that the legal burden of proof to show bad faith was discharged by the opponent. Moreover, no evidence or submissions as to why the applicant did not have the right to register the application mark were provided. Hence, opposition under this ground failed as well.

This case primarily clarifies that even if the marks in question have one common element, the marks would not be considered as visually similar, if as a whole, the mark contains elements which would not be of negligible significance.

This article first appeared in Asia IP. For further information please visit http://www.asiaiplaw.com/