The vexing issue of partial trademark oppositions: the view from Singapore

The question of whether a partial opposition is possible seems to differ across jurisdictions. Kat friend Lim Tianjun provides an illustrative account of how the issue was recently considered under Singapore law.

“Can the registration of a trade mark be opposed for only some of the goods or services within the same class? The issue of whether the Singapore Trade Marks Act (the “Act”) permits such partial opposition was recently considered by the Intellectual property Office of Singapore (“IPOS”) in Tencent Holdings Limited v Monster Energy Company 2018 [SGIPOS] 9. While not strictly required for the disposal of the opposition, the Registrar considered the parties’ submissions and opined that partial oppositions are not permitted under Sections 8(2) and 8(4) of the Act.

Decision

This case concerns Monster Castle in stylized form in Classes 9, 41, and 42 (the “Mark”). The Opponent relied on numerous earlier trade mark registrations, although it identified a number of registered trade marks for “MONSTER ENERGY” as being the most similar to the Mark. The Registrar decided that the Opponent’s “MONSTER ENERGY” trade marks were dissimilar to Tencent’s Mark and dismissed the opposition under Sections 8(2)(b) and 8(4) of the Act. The Registrar also dismissed the opposition under Section 8(7) of the Act as the element of deceptive misrepresentation that is required to establish passing off was not made out given the said dissimilarity. Even though the Registrar’s decision on the above is sufficient to dismiss the opposition, he made some observations on whether partial oppositions are permitted under the Act.

Partial Oppositions

The issue of partial opposition concerns the Registrar’s power to refuse the registration of certain goods or services in a particular class, while allowing the registration to proceed for other goods or services within the same class. This issue, the Registrar observed, was not yet decided by the Singapore courts, although it was previously considered in another IPOS decision (Christie Manson & Woods Limited v Chritrs Auction Pte. Limited [2016] SGIPOS 1).

The Registrar was inclined to the view that he did not have the power to order partial opposition under both Section 8(2) and Section 8(4) of the Act. This is so as the wording of Sections 8(2) and 8(4) of the Act does not expressly provide for such power. The absence of such express provisions must be contrasted with the express provisions in the Act that specifically provide for partial revocation (Section 22(6) of the Act) and partial invalidation (Section 23(8) of the Act). Given this contrast, Sections 8(2) and 8(4) of the Act should not allow for partial oppositions.

The Registrar also noted that decisions from the UK in this regard were of limited persuasive value. In the UK, partial oppositions appear to have been permitted even in the absence of an express provision. This was, however, attributed to the effect of Article 13 of Council Directive 89/104, which expressly provides for partial opposition. Even though the words of Article 13 are not expressly reflected in the English Trade Marks Act, the UK’s registrar of Trade Mark, whose task is to implement Article 13 on behalf of the State in Registry proceedings in the UK, must give effect to the binding provisions of Article 13. This is unlike the case in Singapore. Singapore is not a member state of the European Union and is not bound by Article 13 of the said Council Directive. Consequently, UK cases which held that partial oppositions were permitted are not persuasive in Singapore.

The Registrar also observed that the previous IPOS decision in Nike International Ltd v Campomar SL [2001] SGIPOS 4 (“Nike”) must be viewed in the context of the pre-1999 version of the Trade Marks Act, which applied to that case. Even though the Nike decision was sometimes viewed as a case which allowed partial opposition, the Registrar noted that the applicant in Nike was technically ordered to amend the specification by adding an exclusion to its specification. Such an order was given in Nike pursuant to Section 12(2) of the former Trade Marks Act – a provision with no equivalent in the present-day Act.

Finally, it was noted in passing that the wording in Section 8(7) may possibly allow partial opposition. Section 8(7) states that a “trade mark shall not be registered if, or to the extent that, its use in Singapore is liable to be prevented by” virtue of any rule of law or an earlier right, such as those under the law of passing off or copyright. The words “or to the extent that” might arguably be interpreted as allowing partial oppositions. However, the Registrar did not make any further comments as this was not argued before him.

Comments

To be clear, it is the partial opposition of goods or services within the same class that is of issue. It is uncontroversial in Singapore that the Registrar can refuse the registration for the specification of a trade mark in one class of goods or services, but yet allow it in another class. It remains to be seen how the Singapore courts would decide on the permissibility of partial oppositions under the Act since, to date, this issue was discussed only in two IPOS decisions. Even then, the discussion was merely ancillary to the decisions as the oppositions were decided on other grounds.

Meanwhile, there may be a procedural work-around that the applicant of a national trade mark registration can avail itself of. To avoid having a trade mark application being opposed to in its entirety, the applicant may consider dividing an application into two or more separate trade mark applications. This is provided for by Rule 17 of the Trade Marks Rules, which allows such a division upon the request of the applicant made any time before the trade mark is registered. Goods or services that are dissimilar to the opponent’s marks goods or services can be divided from goods that may be sufficiently similar. In this way, the applicant may be able to retain the benefit of having an earlier priority date for goods or services that are dissimilar to those registered under an earlier trade mark."

Photo on middle left by Vsion and is licensed under Creative Commons Attribution Alike 3.0 license.

Photo on lower right by Augustus Bino and is licensed under Creative Commons Attribution Alike 4.0 International license.