When a strong reputation does not guarantee distinctiveness

IPKat thanks Kat friends Jennifer Lim Wei Zhen and Claudia Borghini for the discussion below on a recent decision in Singapore regarding trademark distinctiveness.

A global giant pitted against a relatively smaller company - who would win in a trademark opposition challenge? The decision in Singapore by Principal Assistant Registrar of Trade Marks, Anne Loo (“PAR”), in Discovery Communications, LLC v A-Star-Education Discovery Camps Pte. Ltd. [2020] SGIPOS 4 (“Decision”) shows that it is possible to register a trademark even if it contains the same word as a pre-existing trademark, when the similar word or component has a low level of distinctiveness.

This case concerns the opposition brought by Discovery Communications, LLC (“Opponent”) against the application by Star Education Discovery Camps Pte. Ltd. (“Applicant”) to register the mark (“Application Mark”). 

The Opponent, who owns the Discovery Channel and another 130 television networks worldwide, is one of the world’s largest mass media companies. It has over 3 billion subscribers in over 220 countries and territories, including in Singapore. Incorporated in Singapore, the Applicant is an education company with operations in Asia Pacific, Europe, the US and the UK. The Applicant had sought to register the Application Mark for its camps aimed at children between the ages of 3 and 14.

The Opponent objected to Applicant’s registration on the basis that the Opponent had previously registered nine trademarks containing the word “Discovery” in Singapore, including Discovery Education and Discovery Adventures as follows:





The PAR dismissed the Opponents’ arguments that the Application Mark would be confusingly similar, despite her findings that the competing marks were conceptually and aurally more similar than dissimilar. The PAR pointed to the following: 

(1) The word “DISCOVERY” has some nexus to the goods and services concerned; and

(2) The word is a descriptive English word that traders will likely use to describe their goods and services.

                                                                   "Discovery"?  Who said "discovery"? 

As such, the Court—

will be wary of granting a monopoly over components which other traders may legitimately wish to use as part of their own trademarks.

Moreover, the similar component – the word “DISCOVERY” - was not found by the PAR to be the dominant and distinctive component of the Opponent’s registered trademarks. Even for the trademark, which features the word “Discovery” in large font, the PAR found that—

the prominent component is not the plain word “DISCOVERY” but “DISCOVERY” with the distinctive D-plus-globe device feature.

Furthermore, the PAR dismissed the Opponent’s argument that they own a family of 13 registered trademarks whereby, for each, the “DISCOVERY” prefix is followed by a more descriptive component (““DISCOVERY” family of marks”). As such, it was claimed that the public may assume that the Applicant’s marks that follow a similar naming structure will be part of the same family of marks and, therefore, will be confused or deceived.

In rejecting this argument, the PAR highlighted that mere registration of a number of marks bearing a same common element does not automatically give rise to the presumption that they are a family of marks. The PAR found that there was insufficient evidence that consumers would recognise the Opponent’s alleged “DISCOVERY” family of marks.

This is so, she opined, because it could not be established that consumers will be aware that the marks are owned by a single proprietor simply because the marks have a naming structure where the “DISCOVERY” prefix is followed by a more descriptive component. Thus, it cannot be considered a family of marks.

Moreover, in response to the Opponent’s argument that its strong reputation and brand recognition worldwide would lead to a higher likelihood of confusion, the PAR found that it would have the opposite effect –

In my view, the Opponent’s strong reputation in this area will have an effect contrary to the likelihood of confusion for consumers will be cognisant of its reputation, which reduces the likelihood of confusion between the competing marks.

The PAR opined that by virtue of such widespread and constant exposure, consumers would inevitably recognize the distinctive feature of the Opponent’s marks as being its D-plus-globe device () rather than the word “DISCOVERY”, thus lessening the likelihood of confusion between the marks.

The PAR also rejected the claim that its mark was well-known. Although the Opponent had exhibited 188 pages of registrations of the DISCOVERY and DISCOVERY-formative marks in Singapore and internationally, it had failed to show how these numerous overseas registrations had led to the marks being well-known in Singapore. 

Conclusion

The Decision highlights how the “distinctiveness” assessment of the similar components between competing marks is considered in determining the “likelihood of confusion” under the Singapore Trade Marks Act. Here, the Opposition failed due to the low level of distinctiveness of the similar component of the competing marks.

Applicants are encouraged not to be deterred simply by the presence of a similar component in their application marks and competing marks, especially if that similar component is a descriptive word with a low level of distinctiveness.

The authors note that the decision is being appealed.

Picture is by Marshall, H. E. (Henrietta Elizabeth) and is in the public domain.