What makes a family? Bridgestone opposition fell flat

The application of the notion of a family of marks is a challenging aspect of trademark practice. Teo Xuan Lang of Drew and Napier discusses a particularly interesting result recently reached in Singapore.

There is no shortage of trade mark opposition cases involving proprietors who lay claim to families of marks. However, traders must be reminded that families of marks and/or their familial traits are not self-evident, and mere evidence of entries in the trade marks register is insufficient. What, then, is required as proof of a family? The issue recently arose for consideration in Bridgestone Corporation and Bridgestone Licensing Services, Inc. v Deestone Limited [2018] SGIPOS 5.

Background

Opposition proceedings were filed in the Registry against Thai tyre manufacturer Deestone Limited’s application for “ ” in Class 12 for “Automobile tires; Motorcycle tires; Bicycle tires” and other goods (the “Application Mark”).

The first opponent, Japanese tyre manufacturer Bridgestone Corporation, was the registered proprietor of the “” mark in Singapore in relation to various goods and services, including “Tires and tubes, vehicle wheels, bicycles and their parts” in Class 12 (the “Bridgestone Mark”). The second opponent was Bridgestone Licensing Services, Inc., a wholly owned subsidiary of the first opponent and the registered proprietor of the “” mark in Singapore in relation to “Tyres included in Class 12” (the “Firestone Mark”). (The registered marks shall be collectively referred to as the “Registered Marks”.)

The opponents argued, inter alia, that the Application Mark was similar to the earlier Registered Marks and was for identical or similar goods or services, such as to give rise to a likelihood of confusion. In so doing, they sought to argue that the Registered Marks constituted a family of marks by virtue of the common “STONE” suffix, which the applicant had incorporated into the Application Mark. However, the opposition was unsuccessful.

No family of “STONE” marks

The Hearing Officer first rejected the applicant's argument that the Registered Marks were not owned by the same legal entity and therefore did not qualify as a family of marks. She ruled that corporate family members could be regarded as a single source to consumers.To support the assertion of a family of marks, the opponents adduced evidence showing decades of use of the Registered Marks in Singapore. However, such use alone was insufficient to establish a family. The Hearing Officer held that—

“[u]ltimately the issue is not just whether the marks have been in use but whether consumers associate the marks which bear a common element as originating from a single source such that if there is another mark in the marketplace bearing that common element, the consumer is likely to be confused”.

This was not shown on the opponents’ evidence for the following reasons:

(a) There were separate and independent websites for the Bridgestone and Firestone undertakings, with but merely cursory references to each other.

(b) Tyres under the Bridgestone Mark and the Firestone Mark were distributed and sold through separate distribution channels in Singapore.

(c) There was no reference in invoices or advertising and promotional materials showing that the two undertakings came from the same family.

(d) Even if consumers knew of the corporate family, it was not clear to what extent they could conclude that the opponents had a family of “STONE” marks.

It was also held that if only two marks are in use, it is less likely that consumers will detect a common element between them and recognise them as a family. In such a case, the evidence required to show a family would need to be substantial.

No similarity of marks

Regarding the issue of marks-similarity, the Hearing Officer held that the Application Mark was “more dissimilar than similar” to each of the Registered Marks. She reasoned as follows:

(a) For each of the competing marks, the “STONE” suffix did not dominate the overall impression. Rather, distinctiveness lay in the marks as wholes.

(b) Visually, the marks have very different beginnings, which consumers will likely notice.

(c) Aurally, the marks have striking phonetic differences at the beginning, which are simple to pronounce and consist of sounds that are familiar to the public in Singapore.

(d) Conceptually, “BRIDGESTONE” and “DEESTONE” are invented words with no specific meanings. “FIRESTONE”, which has a dictionary meaning, bears no similarity to “DEESTONE”.

As marks-similarity is a necessary ingredient for all the grounds of opposition, the opposition failed in its entirety.

Conclusion

In respect of families of marks, the Bridgestone decision tells us that mere evidence of use is insufficient. First, use must be made of trade marks sharing common elements, which consumers may regard as belonging to a family. On the facts of this case, the evidence of use – where there were only two marks – was insufficient to substantiate the existence of a family. Second, over and above demonstrating use, the evidence must show that the common elements take consumers home to the same source. The opponents in this case had failed to identify themselves to consumers as constituting a single source. At the end of the day, it is the average consumer who will decide whether there exists a family of marks in the marketplace, and steps should be taken to educate the public of such matters.

Photo on lower left by LittleJerry and is licensed under the Creative Commons Attribution-Share Alike 4.0 International license.