When a tiger loses its teeth: applying the step-by-step approach on a word mark and a mark containing a device representation thereof

Kat friend Jolena Ang from Singapore reports on an interesting trademark opposition involving both word mark and device mark elements.

In Tiger Coatings GMBH & Co. KG v Seng Fong Paints Pte Ltd [2019] SGIPOS 10, the Applicant, Seng Fong Paints Pte Ltd, applied to register the following marks (“the Application Marks”)

Mark Specification (Class 2)
Paints, coatings [paints].

Tiger Coatings GMBH & Co. KG (“the Opponent”) filed an opposition against the Application Marks based on its earlier registered trade marks and on the basis of passing off.

The Opponent’s earlier marks are as follows (“the Opponent’s Marks”):

Mark Specifications (Class 2)
       Paints and varnishes.
Powder coatings, deposited or applied as powders,
for industrial application on metal, glass,
ceramic and clay substrates, on medium density
fibreboard and on wood and on plastic, provided
that such powder coating products are not offered
for sale through retail outlets or otherwise at
the retail level.
         Lacquers; powder lacquers; colors (paints); coatings;
distempers; wood coatings (paints); primers.
(Collectively, the “Non-Pictorial Marks”)
    Paints, lacquers.
(Individually, the “Cartoon Tiger Mark”)

The Adjudicator dismissed the opposition on both grounds. 

Much of the decision focused on the application of the step-by-step approach in assessing the similarities between the marks. In Singapore, the applicable test for assessing whether there is a likelihood of confusion between two marks is the step-by-step approach. 

Under the step-by-step approach, the following elements should be determined sequentially: 

(a) Whether the compared marks are similar (by comparing the visual, aural and conceptual similarities between the marks); 
(b) Whether the compared goods are similar; and 
(c) If steps (a) and (b) are fulfilled, whether there exists a likelihood of confusion on the part of the relevant public.

Under stages (a) and (b), the assessment is made mark-for-mark, without consideration of any external factors, such as consumer perception of the marks and the trade channels used to market the goods. External factors are only to be considered at stage (c). 

Visual Similarity 
Some of the arguments raised by the Opponent in relation to the comparison of the Application Marks with the Non-Pictorial Marks are as follows: 

(i) Since “TIGER” is an arbitrary term with no connection with the Class 2 goods, the Opponent’s Marks enjoy a high degree of technical distinctiveness. Accordingly, there is a high threshold to meet before a competing mark will be considered dissimilar to the Opponent’s Marks. In the Application Marks, the tiger device stands alone as a distinctive element and it is not subordinated to the term “LNK”. Therefore, there is some similarity between the Application Marks and the Opponent’s Non-Pictorial Marks. 
(ii) The compared marks share a common distinctive denominator of a tiger. Even though the Application Marks contain additional textual elements (i.e. the term “LNK”), there should be at least a moderate degree of similarity given that the tiger device is at least one of the dominant components of the Application Marks.

The Adjudicator rejected both arguments respectively on the following grounds: 

(i) “TIGER” is a common English word and is not an invented term. Hence, the Non-Pictorial Marks do not possess a great degree of inherent distinctiveness. The term “LNK” is a highly distinctive element in the Application Marks. As a whole, the marks are visually dissimilar. 
(ii) There was no overlap in the textual components of the Application Mark (“LNK Brand” and “LNK Coatings”) and the textual component of the Opponent’s Marks (“TIGER”).

In relation to the Cartoon Tiger Mark, the Adjudicator found that it was strikingly different from the tiger device in the Application Marks. The Cartoon Tiger Mark was presented in a very cartoonish manner while the tiger device in the Application Marks was in a realistic style. 

Aural Similarity 
The Opponent’s main arguments in relation to aural similarity of the marks may be summarised as follows: 

(i) It would be natural for consumers to verbalise a device when asking for the product bearing the device, as opposed to merely gesturing or pointing to the product. 
(ii) Consumers who are not familiar with the Applicant’s Marks would have a high tendency of referring to it as “TIGER” brand, as they are not familiar with the term “LNK” and would have difficulty pronouncing it. Further, consumers would be generally more familiar with tigers.
(iii) The Application Marks would be verbalised as “TIGER”, especially since they contain a “manifestly straightforward and direct device”, such that consumers would likely refer to it as a “TIGER” mark. Since the Opponent’s Marks contain the overlapping word for “TIGER”, there is some degree of aural similarity between the marks.

The Adjudicator rejected the Opponent’s arguments and held that one cannot apply an overly technical or mechanistic approach to determine whether consumers would rely more on the textual or device components to verbalise a mark. Rather, this should also be assessed on the basis of what would strike a consumer, looking at the marks fairly and having regard to their imperfect recollection thereof, as being the most distinctive elements of the marks, what these elements might connote, and whether these elements would be used by consumers in referencing the mark aurally. The Adjudicator found that the Opponent’s Marks would be aurally referred to as “TIGER” marks, while the Application Marks would more likely be verbalized as “LNK”, given the prominence of the terms “LNK BRAND” and “LNK COATINGS”. The marks are therefore aurally different.

Conceptual Similarity 
The Opponent argued that the concept conveyed by the Application Marks, and the Opponent’s Marks, respectively, is that of a tiger. The Opponent relied on various cases in support of its argument on conceptual similarity. However, the Adjudicator held that the presence of the elements “LNK BRAND” and “LNK COATINGS” in the Application Marks played a significant role in rendering the marks conceptually dissimilar. In relation to the Cartoon Tiger Mark, whilst it incorporates a tiger device, it is depicted in a cartoonish manner, which in turn conveys a very different idea from the Application Marks. 

Similarity of Goods and Likelihood of Confusion 
The Applicant did not contest the Opponent’s claim that the competing goods were identical and/or similar. However, the Adjudicator found no reasonable likelihood of confusion as over and above the dissimilarity of the marks. The evidence showed that the Opponent’s products were used primarily in specialist operations, whilst the Applicant’s products appeared to target both the retail and professional consumer segments.

The decision brings to light the different considerations when comparing a word mark with a device mark. In such a case, it will often be difficult to find any visual similarities. It is the author’s view that much of the marks-similarity analysis would turn on the conceptual and aural similarities between the compared marks.

Indeed, had the Application Marks only comprised a tiger device, the arguments raised by the Opponent might have had more “teeth”, especially in relation to the conceptual comparison.

The decision also brings to light issues in the step-by-step approach when determining the aural similarities between a word mark with a device mark thereof. While assessing the aural similarities in this case, the Adjudicator held that one should bear in mind “… the most prominent and distinctive elements of the marks, what these elements might connote, and whether these elements would be used by consumers in referencing the mark aurally” (emphasis added). However, these considerations may sometimes cause the aural and conceptual analyses to be conflated, and/or require one to consider external factors such as consumer perception on the elements of a mark, which would go against the current step-by-step approach applied in Singapore.

Photo by ucumari and is licensed under the Creative Commons Attribution-Share Alike 2.0 Generic license.
When a tiger loses its teeth: applying the step-by-step approach on a word mark and a mark containing a device representation thereof When a tiger loses its teeth: applying the step-by-step approach on a word mark and a mark containing a device representation thereof Reviewed by Neil Wilkof on Sunday, August 18, 2019 Rating: 5

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