It has happened before and it will happen again, but it's always a surprise when it does. Sometimes a mark is almost too well known for its own good. The worst case scenario is when it's so well-known that it becomes synonymous with the goods or services for which it's registered and ends up being generic. A less bad case, but definitely a frustrating one, is where it's sufficiently well known that consumers are not considered likely to be confused between it and an uncomfortably similar mark. In the European Union we have seen something like this, for example when the owner of the PICASSO Community trade mark came up against a later PICARO mark (see Case C-361/04, here). In this guest post Ng Qi Ting (Kass International, Kuala Lumpur) writes about a similar instance in Singapore which occurred last year:
You can read the decision in full here.While the Japanese company Seiko may be a pioneer in “exquisite workmanship” when it comes to timepieces, establishing itself as a famous brand to half the world, it certainly did not enjoy much success in its battle in opposing the trade mark SEIKI from securing a place in the trade mark registry of Singapore.Choice Fortune Holdings Limited applied to register SEIKI for electronic goods such as television sets and disc players. In a natural course of events, Seiko Holdings Corporation, with its SEIKO trade mark also covering goods such as gramophones and metronomes in the same class, brought an opposition against the registration of SEIKI at the Intellectual Property Office of Singapore (IPOS). Said Seiko, Choice Holdings’ mark was confusingly similar to its own and the use of SEIKI would dilute its goodwill in SEIKO.Regarding confusion, Seiko had to satisfy the familiar “step-by-step” approach, establishing that (i) the marks were similar; (ii) the goods were identical or similar; and, as such, and (iii) part of the public is likely to be confused.The Registrar took the view that there are no strict formulae to adhere to when comparing the marks. It is the “first impression” created by a mark that matters. As the Registrar said:“the assessment of mark-similarity is more an art than a science, more of feel than of formula, though guided by principles.” In this instance, the Registrar found that SEIKI was visually and aurally similar to SEIKO, albeit to a low degree. In terms of conceptual similarity, the Registrar was of the view that, as Japanese is not a common language in Singapore, SEIKO and SEIKI -- the latter being a word meaning "century" or "regular" in Japanese and also being a given name -- would simply be viewed as invented words with “Japanese-like characteristics” by the Singaporean public. Although the Registrar did not rule out the possibility of finding conceptual similarities between two marks that shared the same national characteristic, here the fact that both words sounded Japanese was too vague a concept for the Registrar to find conceptual similarity. It was also found that there was similarity in the goods represented, in that the goods covered by Seiko's mark overlapped with those of Choice Fortune.Despite these findings of similarity, the Registrar held that the likelihood of confusion was minimal. Although visual, aural and conceptual similarities are to be taken into consideration when deciding whether the marks are similar, these aspects are not to be taken as a pre-definitive yardstick to make a finding of confusion. Other factors are to be taken into account and the finding of confusion should always be based on the facts in each case. Here the Registrar felt that the likelihood of confusion was low because the products represented by the marks were relatively expensive, and their consumers were unlikely to purchase them on a whim. On the contrary, their consumers would have made the necessary enquiries before purchasing them and, even at the point of purchase, those consumers would pay more attention.As for dilution, SEIKO was recognised for timepieces by the majority of the Singaporean public, and the Registrar was not convinced that consumers would draw a mental connection between SEIKO and SEIKI was it is unlikely that any rational consumer would assume that Choice Fortune's electronic goods such as television sets and disc players emanated from Seiko. It was deemed implausible that the SEIKI mark would cause dilution in an unfair manner towards the goodwill in Seiko's mark. Seiko had thus failed to conciliate the elements under all the grounds raised, so SEIKI was allowed to proceed to registration.What was significant here was that the existence of a long and established reputation could actually act against being able to establish likelihood of confusion.The more strongly a trade mark is ingrained in the mind of consumers, the less likely it is that confusion would arise. This was not a decision to give heart to owners of well-known brands.