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Monday, 26 February 2018

GUCCI as a well-known mark, with special attention to evidence, surveys, and unfair advantage

Katfriend Melvin Pang of Amica Law in Singapore reports on a decision in Singapore regarding several fascinating aspects of the treatment of well-known marks.

Disputes involving luxury brands and the issue of well-known marks seem ubiquitous. Most often, two questions are asked: Is the mark at issue “well-known” and, if so, has there been dilution or an unfair advantage taken of the distinctive character of the well-known mark? A particularly interesting instance occurred recently before the Intellectual Property Office of Singapore involving the “GUCCI” mark, with particular attention to whether survey evidence was necessary and the need to prove that dilution or unfair advantage had occurred.

The case at issue concerned trade mark opposition proceedings brought by the luxury brand Gucci (the “Opponent”), based on its registration of the “GUCCI” mark in Singapore in Classes 21 and 35 against the mark in Class 11, applied for by Guccitech Industries (Private Ltd) (“Guccitech”).

Whether the GUCCI mark is well-known to the public at large in Singapore

Under Section 8(4) of the Singapore Trade Marks Act, a mark which is “well known to the public at large in Singapore” belongs to a “rare and exclusive class”, and receives a greater degree of protection as there is no need to prove a likelihood of confusion. More extensive proof is needed to be deemed a well-known mark (Novelty Pte Ltd v Amanresorts Ltd and another [2009] 3 SLR(R) 216 (“Amanresorts”) at [233]). Against this background, the IP Adjudicator found that the GUCCI mark was well-known to the public at large in Singapore, based on a review of the following evidence:
1. Local use of the mark since 1979;

2. “[M]ore than tens of millions” SGD in revenue from local sales of Gucci products;

3. Wide range of products on which the mark is used;

4. Local marketing expenditure of “hundreds of thousands of euros”;

5. Google searches of the term “guccitech” in various permutations, resulting “overwhelmingly in a search result showing sites offering for sale [Gucci products]”;

6. Extensive advertising and editorial coverage of Gucci products in more than 31 local newspapers, magazines, Chinese language publications and online websites; and

7. Advertising and promotion on leading social media platforms. The IP Adjudicator noted the “vast majority of these followers and subscribers are…outside Singapore, but the overall numbers do at least attest to how well known the GUCCI trade mark is globally”.
Interestingly, the Opponent succeeded in establishing that the mark is well-known without adducing any survey evidence, the IP Adjudicator noting that the commissioning of such a survey would have been a “waste of money”. This stance appears to be in line with the cautionary attitude of the Singapore Courts in relying on surveys, especially when they are poorly planned and conducted (see Ferrero SPA v Sarika Connoisseur Café Pte Ltd [2011] SGHC 176 (“Ferrero”) at [103], albeit in the context of a likelihood of confusion query).

Even where survey evidence is relied on, it is seldom determinative on its own. For example, in Clinique Laboratories, LLC v Clinique Suisse Pte Ltd and another [2010] 4 SLR 510, the High Court accepted the survey evidence which was adduced. However, the Court expressly referred to other evidence in holding that the Clinique brand was well known to the public at large in Singapore including: the brand’s long history in Singapore, extensive advertising in a wide variety of media, large advertising expenditure, presence in local and worldwide departmental stores, and high local sales figures. These are the same factors on which the IP Adjudicator relied.

Whether the registration would cause dilution in an unfair manner of the distinctive character of the GUCCI mark

The IP Adjudicator further found that the registration and notional use of the GUCCITECH mark would dilute the distinctiveness of the GUCCI mark “by depriving the Opponent of the exclusivity it currently has in the registration and use of the word GUCCI as an indication of origin of goods and services”. However, the IP Adjudicator did not discuss whether this dilution was “in an unfair manner”, which is enshrined in the statutory language and could be viewed as a further requirement. Indeed, there has been academic commentary that neglecting to consider whether the dilution was “unfair” and finding that this ground is satisfied simply by a finding that there has been dilution by blurring or tarnishment is unsatisfactory and renders the “unfair manner” requirement otiose (Tan Tee Jim, "Law of Trade Marks and Passing Off in Singapore" (Sweet & Maxwell, 3rd Edition, 2014) at [4.113]).

Still, in the view of this blogger, the approach of the IP Adjudicator is arguably consistent with the Court of Appeal’s decision in Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2013] 1 SLR 531. There, the Court of Appeal appeared to reject that such an “additional factor” is necessary, holding that all that needs to be shown is a real or serious probability of damage to the well-known trade mark’s advertising quality or symbolic function in order to establish a dilution claim.

Whether the registration would take unfair advantage of the distinctive character of the GUCCI mark

The IP Adjudicator also found in favour of the Opponent on the basis that he had earlier held that there was a likelihood of confusion. Consequently, there would be an unfair advantage as consumers viewing the GUCCITECH mark would “assum[e]…there is some trade connection with the owner of the well-known GUCCI trade mark”.

There was again no consideration of the “unfair” element, with the approach of the IP Adjudicator appearing to echo the EU position, which merely requires “clear exploitation on the coat-tails of the [well known] mark” and “relates not to the detriment caused to the mark”. (L’Oreal SA v Bellure NV [2010] RPC 1 at [41]). This was lamented by Jacobs LJ in L’Oreal SA v Bellure NV [2010] EWCA Civ 535 at [49] as making the “unfair” qualifier meaningless whilst serving to curtail legitimate competition. It will be interesting to see how this area of the law continues to develop within Singapore and where the boundaries are drawn for parties to compete in the marketplace.

Picture on lower left made available under Creative Commons CC0 1.0 Univeral Public Domain Dedication; file donated by the Metropolitan Museum of Art, accession number 2006.457

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