Facts

Bridgestone Corporation and Bridgestone Licensing Services, Inc. (the "Opponents"), are the registered owners of the " " and " " marks in Class 12 respectively, covering a number of goods including tires and vehicle wheels. Bridgestone Licensing Services, Inc. is a wholly-owned subsidiary of Bridgestone Corporation.

Deestone Limited (the "Applicant") subsequently applied to register " " and " " as a series of two marks in Class 12, covering goods that included automobile and motorcycle tires. The Opponents applied to oppose the Applicant's registration on four separate grounds, namely sections 8(2)(b) (similar marks and goods), 8(4)(b)(i) (mark well known in Singapore), 8(4)(b)(ii)(B) (mark well known to the public at large), and 8(7)(a) (passing off) of the Trade Marks Act (Cap 332) ("TMA").

In particular, the Opponents argued that " " and " " constituted a family of "STONE marks" under the family of marks doctrine. In such a case, the registration of any mark incorporating the common characteristics of that family, covering identical or related goods, would confuse or deceive the public into thinking that the new mark originated from the Opponents as an addition to the family of marks.

Decision

The Principal Assistant Registrar (the "PAR") found that the opposition failed on all four grounds on the basis that the marks were dissimilar. The PAR found that the distinctiveness of both the Opponents' marks lay in the marks as wholes (i.e. as "BRIDGESTONE" and "FIRESTONE" respectively). Overall, the impression of Opponent's marks would not be materially dominated by its components and the distinctiveness rests in the combination of "BRIDGE" and "STONE", and "FIRE", and "STONE" and the same applies for the Applicant's mark "DEE" and "STONE". In addition, the PAR found that the Opponents' and Applicant's marks were aurally, visually, and conceptually dissimilar.

In relation to the family of marks doctrine, the PAR held that the marks owned by two separate legal entities was not necessarily detrimental to the Opponents' case. This is because corporate family members could be regarded as a single source to consumers and the lack of common ownership by a single entity should not stand as a barrier to the protection over a family of marks. However, the evidence tendered by the Opponents was insufficient to show that the two brands "BRIDGESTONE" and "FIRESTONE" come from the same corporate family.

Comments

This case confirms that corporate groups holding trade mark registrations in different legal entities may rely on the family of marks doctrine for the purposes of protecting their trade marks and brands. However, companies seeking to rely on this doctrine will be required to show that the relevant public recognises these marks as being a part of a single family. Therefore, marks forming part of such a family should be used and promoted together, and not only as separate and independent brands.