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 trademarks relating to cat litter products.
B2K Pet Product’s trademark related to goods in Class 31 with the specification of “Cat litter”. Pets Global’s earlier trademark was registered in the same class with the specification “Litter for animals namely, food for cats”.
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When B2K’s trademark 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’s mark was similar to Pets Global’s mark (Section 8(2)(b) of the Trademarks Act) and that Pets Global was passing off its products as those of B2K (Section 8(7)(a) of the Trademarks 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 – that is, ‘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 trademark in Singapore at all material times. It also had applications and registrations in the United States, Malaysia, Russia, Japan, South Korea, Taiwan and Thailand.
- It sold its Fussie Cat products in Singapore, the United States, 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 trademark, in which the mark was prominently featured on various websites.
In Pets Global Pte Ltd v B2K Pet Products Pte Ltd ( SGIPOS 3) the hearing officer held that Pets Global’s opposition failed on both grounds.
With regard to the Section 8(2)(a) ground, the hearing officer found that the marks were not visually, aurally or conceptually similar. She noted as follows:
- 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 texts were not visually, aurally or conceptually similar. The only possible similarity in the textual component was the white cursive font.
- Overall, the only main points of similarities in the two contested trademarks were:
- a white cursive font against a black background;
- a device which could possibly be regarded as a signboard; and
- 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 it did not adduce sufficient evidence of sales figures in Singapore or marketing and advertising efforts in Singapore.
The case at hand addressed three interesting points.
The first was how the court decides on visual similarity of marks where the textual component is the dominant component of the mark. A substantially lower weighting 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 whether the textual components were similar, the hearing officer noted that:
- visually, 'Fussie Cat' and 'Kit Cat' were different;
- aurally, 'Fussie Cat' consisted of three syllables, while 'Kit Cat' consisted of two syllables. Apart from 'cat', there was no similarity in the remaining two syllables; and
- 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 Pets Global.
The second point addressed was that there is a subtle difference in establishing passing off under common law and under 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 was subtly different. Section 8(7)(a) reads as follows:
"A trademark 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 trademark or other sign used in the course of trade."
As such, Pets Global could not submit an argument of misrepresentation by B2K based on the packaging of its products (which it sought to do). In addition, when scrutinising B2K’s proposed mark for passing off under Section 8(7)(a), the court considered only the “notional and fair use” of the proposed mark and its specifications under the application.
The third point 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.
In reaching her decision, the hearing officer also reiterated and applied established principles and tests, including the following.
To establish whether a mark should be refused under Section 8(2)(b), the three-step test (known as the 'step-by-step' approach) is applied. The three requirements are:
- the similarity of the marks (visually, aurally and conceptually);
- the similarity of goods or services; and
- the likelihood of confusion arising from the similarities.
The court must ultimately conclude whether the marks, when observed in their totality, are similar rather than dissimilar.
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 a thoughtless person in a hurry.
To establish passing off, goodwill, misrepresentation and the damages suffered or likely to be suffered must be proven. At the very least, sufficient evidence is required (eg, sales figures in Singapore and marketing and advertising efforts in Singapore). In particular, to prove misrepresentation the opponents should adduce evidence directed at the following factors:
- the nature and extent of the goodwill and reputation relied on;
- the closeness or otherwise of the respective fields of activity in which the opponent and the applicant carry on business;
- the similarity of the marks;
- the manner in which the applicant has used the mark (if any);
- the manner in which the particular trade is carried out;
- the class of persons which are alleged likely to be deceived; and
- all other surrounding circumstances.
However, rights holders should note 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.
This article first appeared in IAM. For further information please visit www.iam-media.com.