Guess guesses wrong regarding a common inverted triangle device

Kat friend Alvin Tan of Ravindran Associates in Singapore offers his thoughts on a recent case where a common visual element in the respective marks was not sufficient to prevail in an opposition.

Can you claim a monopoly over an inverted triangle? "Guess not"-- if the textual element in a composite mark is the dominant element of the mark, as the Singapore Intellectual Property Office of Singapore held in Guess?, Inc v Jen, Chi [2019] SGIPOS 3. The case involved the opposition filed by Guess?, Inc (“Guess”) against Jen Chi’s application for the markin Class 25 (the “Hater Mark”).

Guess relied on two of its earlier registered marks (the “Registered Marks”):and. It submitted that the inverted triangle device was the dominant and distinctive component of these marks as the device had no relation to the claimed goods. Guess thus proposed that the Registered Marks had a high level of technical distinctiveness and enjoyed a high threshold before a competing sign will be considered dissimilar.

Technical distinctiveness refers to the capacity of a mark to function as a badge of origin; e.g. invented words have a high level of technical distinctiveness. See here for a previous report on technical distinctiveness under Singapore law.

The Hearing Officer disagreed and cautioned that while some device marks that say nothing about the goods may be distinctive, the device could instead be seen as a decorative element rather than a badge of origin. The Hearing Officer applied the Court of Appeal’s guidelines in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] SGCA 26 at [62] when comparing the composite trademarks.

In the instant case, the Hearing Officer held that the dominant component of the Hater Mark was the textual component (i.e. the word HATER) as it was large and located in a more prominent location of the mark. The Hearing Officer further found that the inverted triangle device was likely to be perceived as decorative “rather than as an element indicating commercial origin”.

Hence, given the use of a dissimilar HATER component, the Hearing Officer concluded that the both of the Registered Marks were more dissimilar than similar to the Hater Mark. Accordingly, the opposition under Section 8(2)(b) of the Trade Marks Act (“TMA”) failed.

Guess also sought to rely on its marks being well-known in Singapore as an additional ground of opposition. Although the Hearing Officer was prepared to conclude that the  mark was well-known in Singapore, this was not sufficient. Under Section 8(4)(b)(i) of the TMA, Guess also needed to show that either the whole, or an essential part of the Hater Mark, was identical with or similar to itsmark. Given the Hearing Officer’s earlier finding that the marks were dissimilar, Guess was unsuccessful on this ground as well.

This author notes that Guess also sought to rely on an unregistered mark  as a well-known trademark in Singapore. However, the evidence showed that Guess had commonly used a composite form of the mark. Hence, the Hearing Officer could not conclude that this unregistered mark, on its own, was well-known in Singapore.

Guess further argued that itsmark was well-known to the public at large, and thus enjoyed a broader scope of protection. However, the major obstacle Guess faced was the quality of evidence that it had provided. The Hearing Officer found that Guess’s evidence was insufficient because of the following:

1) There were overlaps in the revenue figures given. For example, Guess’s figures for women’s apparel overlapped with the figures provided for denim products;

2) The extent of sales arising from the Singapore market was not clear; and

3) Providing approximations of revenue was unsatisfactory as unequivocal evidence is required to justify the broad scope of protection sought.

Furthermore, the Hearing Officer found that Guess’s approximate sales figures, expenditures on marketing and exposure via physical sales outlets, fell short of the data and information provided in cases where the marks were found to be well-known to the public at large. As the Hearing Officer noted,

“The onus is on parties to provide quality evidence to support their case. Otherwise, they will have to be prepared to bear the consequences of such evidence being disregarded.”

Trademark proprietors hoping to show that their mark is well-known to the public at large should be mindful of the above guidance when presenting their evidence.