In a decision handed down on 20th December 2018 (MoneyMax Jewellery Pte.Ltd v Cartier International AG  SGIPOS 22), Cartier International AG, (“The Opponent”), unsuccessfully opposed the registration of MoneyMax Jewellery’s (“The Applicant”) mark.
The Opponent initiated trademark opposition proceedings at the Intellectual Property Office of Singapore (“IPOS”) on 28 July 2017 with the aim of preventing the Applicant’s registration of a mark containing the word “LOVE”.
The Opponent relied upon its trademark “ ” against the Applicant’s “ ” application.
The Opponent based its opposition on sections 8(2) (b), 8(4) (b) (i) and 8(7) (a) of The Trade Marks Act (Cap. 332, Rev Ed. 2005) (“TMA”), namely:
1. the Applicant’s mark is confusingly similar to an earlier trademark which would create public confusion;
2. that the Applicant’s mark was confusingly similar to its “well-known” trademarks; and
3. that use of the Applicant’s mark would be liable to be prevented by the tort of passing off.
The Opponent also sought to establish that the Applicant’s mark was not distinctive and was descriptive of the goods covered and should therefore be disallowed under Section 7 (1) (b) and Section 7 (1) (c) of the TMA.
In relation to the objections under Sections 8 (2) (b) and 8 (4) (b) (i) of the TMA, the IP Adjudicator found that the word LOVE per se was not distinctive in relation to jewellery. Accordingly, any distinctiveness in the Opponent’s “ ” mark lay in the screw head device “ ” and perhaps in the use of a small letter “e”. As neither of these elements were found in the Applicant’s mark, it had to follow that the Applicant’s mark was not similar to the Opponent’s mark within the meaning of Sections 8 (2) (b), and 8(4) (b) (i). Accordingly, the Opposition failed under Sections 8 (2) (b) and 8(4) (b) (i) of the TMA.
The IP Adjudicator also found that an essential requirement to be established under the tort of passing off was misrepresentation. To establish misrepresentation it was necessary to show that the marks were in the first place similar. Given his finding that the marks were dissimilar, it followed that the objection under Section 8(7) must fail.
In relation to the objections under Section 7 of the TMA, the IP Adjudicator rejected the Opponent’s arguments to ignore the Chinese characters in the Applicant’s mark. The IP Adjudicator held that in assessing the distinctiveness of a mark, the mark should be considered as a whole and not broken up into its component parts. He went on to add that given the Chinese characters in the Applicant’s mark bore no meaning and formed a significant portion (at least a third) of the mark as a whole, the combination of the Chinese characters with the other elements of the mark rendered the Applicant’s mark as a whole distinctive. Accordingly, the Opposition also failed under Section 7 of the TMA.