The a2 Milk Company Limited v Société des Produits Nestlé S.A. concerned an opposition by the New Zealand based dairy producer The a2 Milk Company Limited (“Opponent”) against global food and beverage manufacturer Société des Produits Nestlé S.A. (“Applicant”).
The marks in question are:
Do these marks have a common element? How would consumers perceive the “Atwo” element in the Applicant’s Mark? These were the key issues discussed by the Registrar before ultimately deciding that the marks are not confusingly similar.
Ground 1: Earlier registered rights
Firstly, the Opponent pleaded that registration of the Applicant’s Mark would lead to a likelihood of confusion in relation to the earlier registered Opponent’s Mark.
The Registrar characterised the Applicant’s Mark as a composite mark containing three elements, namely the ellipse, the “S-26” combination and the word “Pro-Atwo”.
Of the three elements in the Applicant’s Mark, “S-26” stood out visually due to its size and representation in solid black font, as compared to “Pro-Atwo” which is smaller and only appears in outline, making it harder to discern.
Further, the Registrar held that the two marks do not share a common element. She considered that “Atwo” may not necessarily be perceived by consumers as “A2” or even “A Two”, but as a meaningless, invented word.
In her view, the Applicant’s Mark did not incorporate the Opponent’s Mark “A2”, and the marks are visually dissimilar on the whole.
Aurally, the marks are differentiated by both the “S-26” component and “Pro” prefix in the Applicant’s Mark. In particular, the Registrar held that “S-26” was not descriptive and “at least equally significant” in relation to the “Atwo” component. The Applicant’s Mark also has seven syllables whereas the Opponent’s Mark only has two.
Accordingly, the Registrar decided that marks are aurally more dissimilar than similar.
The Registrar held that the marks are conceptually neutral. She disagreed with the Opponent’s arguments that the Applicant’s Mark conveys the idea that “S-26 Pro-Atwo” is another type of “A2”.
Instead, the Registrar held that even if some consumers are aware that “A2” refers to a protein in milk, others may not possess such knowledge. For the latter group of consumers, the Opponent’s Mark would not carry any meaning.
Noting also that consumers do not dissect marks and conceptualise them based on separate components, she held that the Applicant’s Mark (being a composite mark) did not convey any particular idea.
Overall, the marks were considered more dissimilar than similar. The Registrar dismissed this ground of opposition without needing to assess the similarities in the goods.
Ground 2: Passing off
Secondly, the Opponent pleaded the ground of passing off.
Given the Registrar’s earlier conclusion that the marks are more dissimilar than similar, she held that there is “no realistic possibility of deception”. Accordingly, the requirement for misrepresentation was not established and this ground of opposition was swiftly dismissed.
A number of recent decisions in Singapore have shown that marks with a common element may be confusingly similar despite the presence of a distinctive additional element.
However, “Atwo” and “A2” did not constitute a common element. This decision also reiterates that competing marks must be compared as a whole, bearing in mind that the idea conveyed by each component may differ from the impression evoked by the mark as a whole.
This article first appeared in WTR Daily, part of World Trademark Review, in August 2022. For further information, please go to www.worldtrademarkreview.com.