A Valentino by any other name

Kat friends Gretchen Su and Lee in Hae report on a recent case in Singapore dealing with the question that has vexed trademark practitioners for years (centuries?)—to what extent can personal names be used and protected? 

A recent opposition case, Valentino S.p.A. v. Matsuda & Co., heard by the IP Adjudicator David Llewelyn, reaffirmed the uncertainties in seeking to assert trademark rights when using a common personal name for your brand. 
On 12 October 2017, Matsuda & Co applied to register "" under Trade Mark Application No. 40201719905R in Classes 18 and 25. On 24 January 2018, Valentino S.p.A. opposed registration of the applicant's mark on five grounds: (1) the likelihood of confusion because the applicant's mark is similar to the opponent's earlier registered marks for "VALENTINO" or its variants; (2) three other grounds on the basis that the opponent's marks are well-known marks; and (3) the use of the applicant's mark is liable to be prevented by virtue of the law of passing off. 

Despite citing 33 earlier registered trade marks in the notice of opposition, the opponent in its written submissions relied primarily on the following four trade mark registrations: 

- Trade Mark No. T081500F for "" (the Logo Mark) in Classes 3, 8, 9, 11, 14, 16, 18, 19, 20, 21, 23, 24, 25, 27, 35, 36, and 43; 
- Trade Mark No. T1315374C for "VALENTINO" (the Plain Word Mark) in Classes 3, 9, 14, 18, 25, and 35; 
- Trade Mark No. T8907702I for "" (the Composite Mark) in Class 18; and 
- Trade Mark No. T8907704E for the Composite Mark in Class 25. 

At the hearing, counsel for the opponent accepted that the Composite Mark (T89077021) is its best case, and it became the focus for comparison with the applicant's mark. On that basis, the IP Adjudicator issued a decision on 30 July 2020, denying the opposition. 

Background 

The opponent, an Italian high end fashion company, owns numerous trade mark registrations in Singapore for "VALENTINO" or its variants. The applicant appears to be a Japanese fashion company offering their wares for sale under the "Valentino Rudy" brand. 

This is not the first time that the opponent has opposed the applicant's mark in Singapore. In 2012, the opponent unsuccessfully opposed the applicant's Trade Mark No. T0623268D, for the same mark in Class 3 (the 2012 Case). 

Also, in an earlier, unrelated case adjudicated in Singapore (which was noted by the adjudicator, see below), the opponent's Italian affiliate company, Valentino Globe BV, unsuccessfully opposed the registration of "" (the Emilio Valentino mark) filed by Pacific Rim Industries Inc. This case was appealed twice to the Court of Appeal, which each time did not find any confusing similarity between the parties' marks, despite the presence of the common word "Valentino" (the 2010 Case). 

Confusing similarity 

Singapore law adopts a three-step approach for determining confusing similarity. First, similarity of marks is assessed; second, there is a comparison of the respective goods and services; and third, likelihood of confusion arising from these two similarities is determined. 

Applying the three-step approach, the adjudicator decided that the parties' marks are on the whole dissimilar. He therefore concluded that the opposition already failed at the first step. 

In reaching this conclusion, the adjudicator rejected the opponent's submission that "VALENTINO" is the dominant element in either the applicant's mark or the opponent's Composite Mark. Instead, he held that the two marks should be viewed as a whole. In both marks, the word "VALENTINO" is written in the same font and size as the word that follows, namely, "Rudy" for the applicant's mark and "GARAVANI" for the opponent's Composite Mark. Both marks also had the device element above the words. 

As such, the applicant's mark and the opponent's Composite Mark were visually and conceptually dissimilar. "VALENTINO RUDY" written in cursive script, as compared to "valentino garavani" in lower case letters, combined with the different devices employed in by each of the respective marks, were found to leave different impressions in the mind of the average consumer. 

While each mark could conceivably be perceived as a person's name with a device above it, this was not sufficient to support a finding of similarity. Doing so would effectively give the opponent a monopoly over the use of any "V" device above text that includes the relatively common Italian name "VALENTINO". 

Following from the above, the adjudicator held that the applicant's mark was also not similar to the opponent's Logo Mark or Plain Word Mark "VALENTINO". In this connection, the adjudicator referred to the 2012 Case, where the Emilio Valentino mark was found to be dissimilar to the opponent's marks, and to the lower court's decision in the 2010 Case, which found that no one had a monopoly over the word "Valentino". The same finding of dissimilarity was made for the rest of the opponent's earlier registered marks. 

Having decided that the parties' marks were dissimilar, the adjudicator found that the basic requirement for arguing similarity with opponent's well-known marks, namely, that the whole or an essential part of the applicant's mark is identical or similar to the earlier trade marks, was not made out. 

The opposition therefore failed on these grounds. 

Ground of Passing Off 

Having found no similarity between the applicant’s mark and the opponent’s marks under the first ground, the adjudicator then found no misrepresentation by the applicant leading to deception, which is one of the three elements of passing off. In view of this, the adjudicator concluded that use of the applicant's mark was not liable to be prevented by the law of passing off. 

Accordingly, the opposition also failed on this ground. 

Sure, the temptation to use one’s name as your brand is strong. But when doing so, be aware that the scope of protection may be limited, depending upon the circumstances.