This decision clarifies the distinctiveness requirements for registrability of slogans under the Trade Marks Act and reiterates that slogans are registrable, and should be assessed in the same manner as any other mark.
The Applicant, Schweiger, Martin Rainer Gabriel, sought to register the word mark "STRONG BY CHOICE" ("Mark") in Class 25 of the Nice Classification in respect of "Shorts; T-shirts" ("Application").
The Application was refused by an Assistant Registrar at first instance ("Examiner"). The Examiner was of the view that the Mark was devoid of any distinctive character, as the Mark conveyed a straightforward message that the goods applied for (i.e., shorts and T-shirts) are durable and able to withstand wear. In response, the Applicant requested for a hearing to make submissions on the inherent distinctiveness of the Mark.
At the hearing made before the IP Adjudicator, the Adjudicator reiterated that the test and assessment for the distinctiveness of a mark is to be determined from the perception of the local average consumer of the goods, in the local marketplace.
There are three main takeaways from this decision.
First, the test for distinctiveness is whether other traders would want to use the same or similar mark for their own goods without any improper motive or, in other words, whether registration of the mark would result in an unfair monopoly over the use of such mark.
Second, the assessment of distinctiveness is a context-specific one that must be applied by reference to: (i) the goods and services for which the registration is sought; and (ii) an average consumer's understanding and interpretation of the mark in the local context.
Third, this decision is particularly significant given the increasingly strict interpretation approach on distinctiveness applied by the Intellectual Property Office of Singapore, and that applications for slogans and taglines are often rejected for lack of distinctiveness. This decision provides further guidance as to the proper assessment for such marks, and factors to consider as to when an applicant should contest an examiner's decision.
In further detail
The Application was refused by an Assistant Registrar at first instance. The Examiner was of the view that the Mark is devoid of any distinctive character for the following reasons:
- The Mark was merely a "promotional slogan which conveys a laudatory connotation".
- The Mark conveyed a straightforward message, i.e., "the Applicant is committed to providing shorts and T-shirts which are able to withstand wear".
- The mere fact that "no one else uses the mark or the mark is not one that other traders would typically wish to use, does not make the mark automatically distinctive".
- A mark will not be registered if at least one of the possible meanings of the mark is capable of designating a characteristic of the relevant goods or services.
Issues for determination
The IP Adjudicator, in its decision, found the Mark to be sufficiently distinctive based on the following:
- The Mark is not the typical way in which a Singapore consumer would describe or make reference to T-shirts or shorts.
- The Mark is a phrase, which is ambiguous, in that it can be interpreted to have different meanings by different people. The presence of such characteristics is likely to endow the Mark with distinctive character.
- There is no evidence that the expression has crept into the clothing apparel trade lexicon and become customary in the current language of the clothing apparel trade.
- There is no evidence of common usage of the Mark in the clothing apparel industry in Singapore, or of any trader professing a genuine intention to use the Mark in the clothing apparel trade.
- Therefore, the Mark calls for some interpretive and cognitive effort on the part of the relevant consumers in discerning its appropriate meaning.
Accordingly, the Tribunal waived the Examiner's objection and accepted the Application.