In Time Inc v. Li San Zhong, the Intellectual Property Office of Singapore (IPOS) dismissed an application for trademark invalidation and further clarified the position to be taken if the registered proprietor failed to file evidence in support of the registration.
Time Inc (Applicant) sought to invalidate registration No. T1100008G for the mark FORTUNE TIMES on the grounds that the said registration is confusingly similar to its earlier TIME trademarks as well as its earlier FORTUNE trademarks. The Applicant further claimed that Li San Zhong (the Registered Proprietor) registered the subject mark in bad faith.
In determining the issue of similarity, the Registrar looked at the visual, aural and conceptual similarities of the marks. With respect to similarity between the Applicant’s and the Registered Proprietor’s marks, the Registrar found that by adhering to the principle of comparing mark-for-mark, i.e. by comparing FORTUNE TIMES with FORTUNE or with TIME, the contending marks were not similar in their entirety.
With respect to the Applicant’s claim that the subject mark is similar to their earlier well-known marks, the Registrar took the view that while the Applicant’s marks were well-known, since there was no similarity between the Applicant’s mark and the subject mark, this ground of invalidation also failed. The Registrar took the view that visually the marks were not similar owing to the large Chinese characters arranged in a square device form. The Registrar found this to be the distinctive element of the Registered Proprietor’s mark. In addition, the Registrar found that the marks in question had very different visual impacts.
The Registrar found the marks in question to be aurally dissimilar on the basis that the distinctive and dominant aural element of the Registered Proprietor’s mark was the Chinese characters. In the same vein, the Registrar found the Registered Proprietor’s mark was conceptually dissimilar to the Applicant’s TIME marks. With respect to the Applicant’s FORTUNE marks, on the question of similarity of marks, the Registrar took the view that marks were dissimilar rather than similar and the action failed on this ground. The Registrar did, however, find that the goods covered by the marks in question were similar.
In considering whether there was a likelihood of confusion, the Registrar determined that the Applicant failed to establish the same. The Registrar found that the goods in question were such that consumers were bound to exercise care while choosing the reading content of interest to them.
The Registrar further held that the Applicant failed to establish any likelihood of confusion, even if it were assumed that the marks in question are similar. The invalidation therefore failed on this ground.
The Registrar found that the Applicant failed to discharge the burden of proof of establishing that the subject mark had been filed by the Registered Proprietor in bad faith. The Applicant claimed that the assignment of the mark from Fortune Times Pte Ltd to the Registered Proprietor was in bad faith. In this respect, the Registrar opined that the enquiry under the relevant provision pertains to the actual application and not to the assignment.
Click here to view image.
On a preliminary issue, the Registrar clarified that by failing to file evidence in support of the subject registration, the Registered Proprietor can only be deemed to have admitted statements of a factual nature made by the Applicant. The Registered Proprietor would not have been deemed to have admitted that the subject mark is similar to the Applicant’s marks.
To date, no appeal has been filed in respect of the aforesaid judgment.
This article was first published in Asia IP on January 31, 2015. For further information, please visit http://www.asiaiplaw.com/ .