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IP Updates from Singapore: Wines and Watches

By Caroline Berube and Christina Molino
HJM Asia Law & Co LLC

Bad Faith in Trademark Registration

Would you think that a bottle of wine containing the trademark champengwine originated from the Champagne Region of France? Please get your wine glass and pour some champagne, grab a seat, and let us discuss this intoxicatingly interesting case.

In Comité Interprofessionnel du Vin de Champagne and Institut National de l’Origine et de la Qualité v Keep Waddling International Pte. Ltd. [2020] SGIPOS 10, the applicant Keep Waddling International Pte. Ltd. sought to register the trademark champengwine in Class 33 for “Sparkling wines, all originating from Chile”. The Opponents Comité Interprofessionnel du Vin de Champagne and Institut National de l’Origine et de la Qualité are French trade associations charged to represent the interests of operators of the “CHAMPAGNE” geographical indication and to protect the geographical indication around the world.

The Hearing Officer  (the “Hearing Officer”) held that there is no “real tangible danger” that the Application Mark (the “Application Mark”) will deceive the relevant consumers who drink and purchase sparkling wines into thinking that the wines bearing the Application Mark originated from Champagne in France.

The relevant portion of the Application Mark, which is champeng, is not identical to the geographical indication “CHAMPAGNE”. Therefore, there is no violation of the Geographical Indications Act as the Application Mark does not contain or consist of the geographical indication.

The Hearing Officer also ruled that the use of the Application Mark will not constitute passing off because of the finding that there is no deception of the relevant public. This means that there is no misrepresentation which is required for a passing off claim.

The Opposition, however, succeeded on the ground that the Application Mark was applied for in bad faith. The Hearing Officer held that the “evidence clearly establishes that champeng was indisputably selected because of its similarity to ‘champagne’”, and “that the word ‘CHAMPENG’ in the Application Mark was copied from the ‘Champagne’ geographical indication.”

Surely, this decision was a cause for celebration in the Champagne Region. Cheers to that! Santé!

Watch Your Back: Trademark Opposition

Are you planning to buy a luxury watch soon? Reading the following case will hopefully make your experience more meaningful, as you navigate the specifications of the watches with your sales associates. This is a trademark opposition case involving watches, wings and a girl named Annie.

In Compagnie Des Montres Longines, Francillon S.A. (Longines Watch Co., Francillon Ltd.) v POINT tec Products Electronic GmbH [2020] SGIPOS 9, the Application Mark was opposed by the opponent (the “Opponent”) on the ground of likelihood of confusion as the Application Mark is similar to the Opponent’s earlier marks (the “Earlier Marks”) and is registered for goods identical or similar to those of the Opponent’s Earlier Marks. The comparison of the marks are as follows:

table-apac

In assessing the likelihood of confusion, the Hearing Officer applied the 3-step test approach. Under this approach, the following elements are taken into consideration systematically and sequentially: first, whether the subject marks are visually, aurally and conceptually similar; second, whether the goods or services are similar or identical; and third (and only after the first two threshold requirements are met), whether there exists a likelihood of confusion with regard to the relevant segment of the public.

The Hearing Officer found that the Application Mark and the Opponent’s Earlier Marks are visually dissimilar because “the visual impression of the Application Mark is dominated by two elements, namely, the words, ‘IRON ANNIE’ and the ‘winged device with the geometric centre device’”. Also, the devices in the subject marks are similar to a low extent only considering the possibility of imperfect recollection.

With regard to aural similarity, the Hearing Officer held that no aural comparison can be made in this case because the Opponent’s Earlier Marks are devices without any aural component. Therefore, they cannot be verbalized.

The Application Mark was also held to be conceptually more dissimilar than similar in comparison to the Opponent’s Earlier Marks because the former is a composite mark made up of the equally dominant, if not more dominant words, “IRON ANNIE” and the extended wing device; whereas the latter is only a device. The textual element “IRON ANNIE” featured prominently in the Application Mark makes the subject marks conceptually dissimilar.

As to similarity of goods or services, the Hearing Officer confirmed that this element is present since “watches and chronometric instruments” appears on both specifications. However, the Hearing Officer still concluded that there is no likelihood of confusion because the Application Mark is overall more dissimilar than similar in comparison to the Opponent’s Earlier Marks. Also, the consumers are likely to exercise a certain degree of care when purchasing watches because of the price, as well as the fact that watches are highly personal items which consumers tend to blend with their style. Finally, the Hearing Officer ruled that when buying watches, consumers would first conduct a visual inspection of the watch before asking the sales assistant for help to have a closer look at the watch and then deciding whether he/she will proceed with the purchase. As stated above, there is no visual similarities for the consumers to be confused.

Considering the above pronouncements, the opposition fails. Iron Annie wins and the Application Mark could proceed with registration.

As you could read above, trademark opposition and trademark registration are challenged, and Singapore courts are pro-active in applying the laws related to passing off and other concepts.

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