The trademark question that never stops giving: when is there a material difference between the registered form and the form of actual use?

Kat friend Shawn Poon from Singapore discusses a recent decision there that tackles one of the perennially vexing issues of trademark law, namely when does a variant form of a registered mark not count as use.

In The Patissier LLP v Aalst Chocolate Pte Ltd [2019] SGIPOS 10, the Applicant (The Patissier LLP) sought to revoke the mark(“Subject Mark”) registered in the name Aalst Chocolate Pte Ltd, on the ground of non-use under S 22(1)(a) and (b) of Singapore’s Trade Marks Act (“TMA”). In such a revocation proceeding, the registered proprietor had the burden to show that he had made genuine use of the Subject Mark (under S 105).

S 22(1)(a) and (b) are the relevant provisions as follows:

(a) Under S 22(1)(a), a trade mark registration may be revoked if, “within the period of 5 years following the date of completion of the registration procedure, it has not been put to genuine use in the course of trade in Singapore, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use”;

(b) Under S 22(1)(b), a trade mark registration may be revoked if “such use [as stated in S22(1)(a) TMA] has been suspended for an uninterrupted period of 5 years, and there are no proper reasons for non-use”.

S 22(2) further states that the use of a registered mark (for defending against revocation) includes use “in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered”.

Accordingly, the registered proprietor may successfully defend a revocation action even if he had not used the mark in the exact form in which it was registered, so long as his use of the registered mark was accordance with the requirements of S22 (2).

Indeed, the main part of the decision centered on the application of S 22 (2), since the registered proprietor was unable to adduce any evidence of use of the Subject Mark in the exact form in which it had been registered. Instead, the closest examples of use by the registered proprietor were the following: 

                                      

The hearing officer observed from previous decisions that no clear legal test on the interpretation and application of S 22(2) has been articulated. Accordingly, he proposed the following approach:

(a) Identification Stage: Considering the form in which the mark was registered as a whole, what should be regarded as the “distinctive character” (i.e. what is outstanding and memorable about the mark and would stand out to the average consumer) of the registered mark taking the viewpoint of the average consumer?

(b) Comparison Stage: What are the differences between the form of the marks actually used and the form of the registered mark?

(c) Evaluation Stage: Looking at the differences between these two forms, has there been an alteration of the “distinctive character” of the form of the registered mark?

The hearing officer then proceeded to apply the above proposed legal test to the present dispute.

Identification Stage

In the Identification Stage, the hearing officer found that the “distinctive character” of the Subject Mark resided in the combination of the following two distinctive components within a single composite mark:

(a) The component “” (“Patissier-Hat Device”), due to the following reasons:

(i) it occupies about three-fourths of the area of the Subject Mark;

(ii) it is likely to be read by the average consumer before reading the words “by Aalst Chocolate”; and

(iii) it has visual appeal because of the graphical element (the drawing of the chef’s toque); and

(b) The component “” (“Aalst Chocolate Word Element”), noting that “Aalst” is a town in Belgium that most Singaporeans are not likely to be familiar with, making it both less common than “Patissier” as well as “unusual”.

Comparison Stage

In the Comparison Stage, the hearing officer compared the Subject Mark to the marks used by the registered proprietor i.e. the Patissier-Hat Device and the mark “” (“Aalst House Mark”). These marks were used simultaneously on many of its products.

The hearing officer found that the Patissier-Hat Device bore the closest resemblance to the Subject Mark, and therefore he undertook a comparison of the two, with the difference between the Patissier-Hat Device and the Subject Mark being that the Aalst Chocolate Word Element was omitted from the Patissier-Hat Device.

Evaluation Stage

In the Evaluation Stage, the hearing officer had to consider whether the Patissier-Hat Device differs from the Subject Mark only “in elements which do not alter the distinctive character of the mark in the form in which it was registered”.

The hearing officer held that the difference between the two forms (i.e. the Aalst Chocolate Word Element) was one that would catch the eye of the average consumer viewing the Subject Mark. Therefore, it was a distinctive element of the Subject Mark, since the average consumer’s attention would likely be drawn to any sign on the packaging that conveys information about the source or origin of the ingredients used by the manufacturer.

Accordingly, the hearing officer held that the excision of the Aalst Chocolate Word Element in the Patissier-Hat Device meant that it was a form which differs in elements which has altered the distinctive character of the Subject Mark. He therefore held that the use of the Patissier-Hat Device was not considered validating use under S22(2).

Author’s Opinion

In this author’s view, the decision (in particular the three stages identified) provides a useful step-by-step approach to determine whether a variant of a registered mark can be considered validating use of the registered mark.

The decision also clarifies that the reference to “distinctive character” under S22(2) refers to what is “outstanding and memorable about the mark” that would “tend to draw the consumer’s attention”, and it does not refer simply to the element of the mark that gives it the ability to function as a badge of origin.

It also provides a useful caution that the Registrar should not conflate the statutory test under S22(2) with other tests in trade mark law such as the marks-similarity test (where one considers the dominant or distinctive elements of the senior mark and whether the alterations present in the other mark were substantial or not). However, missing from the decision was a consideration of the argument that the individual components of the Subject Mark were actually used in close proximity with each other.

For example, in this case, one of the marks used by the registered proprietor was the following:

In this author’s view, it could also be said that the above is a composite mark containing the Patissier-Hat Device, the Aalst House Mark (rotated 90 degrees), as well as the Aalst Chocolate Word Element (minus the word “by”), i.e., that the Patissier-Hat Device and the Aalst Chocolate Word Element were actually used together. Accordingly, the difference between the above composite mark and the Subject Mark would be the following:

(a) The words “Aalst Chocolate” being rotated 90 degrees;

(b) The different positioning of the words “Aalst Chocolate” relative to the Patissier-Hat Device;

(c) The inclusion of the “” logo to the right of the words “Aalst Chocolate”;

(d) The removal of the word “By”.

If the hearing officer had held that the mark used by the registered proprietor was the above composite mark, then, in this author’s view, the result of the S 22(2) analysis would likely be different.

However, the hearing officer made the analysis only on the basis of the Patissier-Hat Device, thereby disregarding the presence of the words “Aalst Chocolate” in close proximity to the Patissier-Hat Device, but little explanation was given for this. Once that decision was made, it was almost an inevitable decision that S22(2) would not be satisfied.