The Patissier LLP, a Singapore based company, is the Registered Proprietor (the "Proprietor") of the mark (the "Subject Mark"). The Proprietor registered the Subject Mark on 27 September 2005 in Classes 30 and 35 in respect of a range of goods and services relating to bakery products.
The Subject Mark comprises two words in cursive font: the first word, "The", in English language, and the second word "Patissier", derived from the French word "Pâtissier” (with the accent over the letter "a") meaning "pastry chef".
Aalst Chocolate Pte Ltd (the "Applicant") is also a Singapore company in the business of the manufacture and sale of chocolate and chocolate-related products. The Applicant applied for declarations of invalidity on the basis that the Subject Mark:
(i) Was devoid of any distinctive character (under section 7(1)(b) of the Trade Marks Act (the "TMA");
(ii) Was descriptive of the goods and services (under section 7(1)(c) of the TMA); and
(iii) Accordingly, was invalid for being in breach of section 7 of the TMA (under section 23(1) of the TMA).
The application for declarations of invalidity failed on all grounds. We highlight several pertinent points from the decision below.
The Average Consumer
In reaching her decision, the Principal Assistant Registrar (the "Registrar") first had to consider who the “average consumer” of the goods and services claimed under the Subject Mark was.
The Applicant argued that the relevant consumers were people in the "high end" space based on the Proprietor's statutory declaration, which demonstrated that the Proprietor targets "high end" clients with "high end" products and pricing.
The Proprietor, on the other hand, argued that the average consumer should be identified as the "hypothetical average consumer of the category of goods or services in question". One should look at the category of goods and services, and not limit the goods and services to "high end" ones because this is not mentioned in the specification of goods and services.
The Registrar opined that in determining the nature of the “average consumer”, one should have regard to the notional specifications of goods and services in respect of which the Subject Mark is registered. In this case, the goods and services described included bakery products and related retail services, and nothing in the Class 30 or Class 35 specifications qualifies the goods and services as being pitched at the high end of the market, and that the goods and services covered are generic. For example, "cakes" and not "upmarket cakes".
As such, the average consumer was identified as the general public, which would be the ordinary consumer of the specified goods and services.
Descriptiveness and Non-distinctiveness
The Applicant also claimed that the Subject Mark was descriptive of the goods and services to which it relates, and therefore devoid of any distinctive character. The Registrar questioned if (a) the average consumer in Singapore, being a member of the general public, would understand the Subject Mark to have a meaning, and (b) even so, whether such an average consumer would attribute “The Pastry Chef” as the meaning of the Subject Mark. Therefore, even if the average consumer perceived the Subject Mark as "the Pastry Chef", the question is whether it would be understood by the consumer as a descriptor of a characteristic of the goods and services claimed, or as a badge of origin.
The Registrar considered the parties' evidence, which included:
- Media features of the Proprietor in lifestyle newspaper and magazine articles, where the Subject Mark consistently appeared in plain word form (as opposed to its stylized form) as references to the name of the Proprietor's cake shop, and websites, blogs or online forums where the words in the Subject Mark appeared as references to the Proprietor’s cake shop or cakes. However, there was no indication that the online public perceived the words "The Patissier" other than as a badge of origin.
- Results for searches of the term "PATISSIER" on Bizfile and printouts from the Singapore Business Directory. These results showed that the Proprietor's predecessor, The Patissier, was the first registered business entity to use the word "Patissier" in its name in Singapore in 2000. It was not until five years later in 2005 that another entity also used the word "Patissier" in its name. While the Registrar was of the view that this factor had corroborative value, it could not determine how the average consumer in Singapore perceived the Subject Mark in 2005. The Registrar commented that hypothetically a trader could be the first to adopt a descriptive sign in Singapore and the average consumer could still have perceived that it was descriptive of the relevant goods or services, rather than as a badge of origin.
- Two English dictionary extracts of "pâtisserie/patisserie" from around 2005. The additional comment of these definitions indicated the word as being derived from the French word "pâtissier" and from the Latin word "pasta". The dictionary entries did not establish that "patissier" was part of the English language in 2005 and did not reflect the state of mind of the average consumer in Singapore at that time.
Given the above, the Registrar concluded that the Applicant had failed to established that the average consumer in Singapore, being a member of the general public, would understand the Subject Mark (especially the French word element "Patissier") to have a meaning as at the registration date. As such, the Subject Mark was not likely to be understood by the consumer as a descriptor of a characteristic of the goods and services claimed.
Therefore, the grounds of invalidation alleging non-distinctiveness and descriptiveness failed under sections 7(1)(b) and (7)(1)(c) of the TMA.
This decision is important in deciphering marks that are in the non-English language and how the average consumer in Singapore would perceive the mark. A non-English language mark may not always automatically be translated as the English meaning, or understood by the relevant average consumer to have that meaning. In fact, a mark bearing certain non-English language words may sometimes have stronger attributes to the goods and services to which it relates, as compared to its English translation.
This case demonstrates the difficulties in proving the average consumer perceptions of the mark as at the date of trade mark application. It also serves as a good reminder to parties of the standard of proof and evidence required to establish a case for a declaration of invalidity.