Court clarifies meaning and application of Singapore's distinctive judicial understanding of “Distinctiveness”

The courts of Singapore have seen a series of interesting developments in connection with distinctiveness under trade mark law. Kat friends Gillian Tan and Mark Teng discuss a recent decision that may provide some welcomed clarity on the issue.

In November 2022, Twitter Inc. (“Twitter”) won a publicised trade mark opposition action against a Singapore-founded tech start-up, V V Technology Pte Ltd (“V V”). V V sought to register the following trade mark in Singapore (the “V V Mark”):

However, its application was opposed by Twitter, which relied on its prior registration for the following mark (the “Twitter Mark”).

As well, Twitter pointed to several prior unregistered marks:

Principal Assistant Registrar Mark Lim (the “PAR”) of the Intellectual Property Office of Singapore (“IPOS”) heard the case at first instance, He refused registration of the V V Mark based on confusing similarity under Section 8(2)(b) of the Trade Marks Act (the “TMA”) and passing off under Section 8(7)(a) of the TMA. V V lodged an appeal in the High Court, which was heard by Judicial Commissioner Goh Yi Han (“Goh JC”).

Ultimately, the appeal was dismissed and the V V Mark was refused registration. The importance of the High Court decision lies in Goh JC’s pronouncement of much-needed clarification on the meaning of “distinctiveness” in Singapore trade mark law, and the role of acquired distinctiveness in the “step-by-step” approach endorsed by the Court of Appeal in the seminal case of Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911 (“Staywell”).

Under the Staywell approach, the three elements, namely, similarity of marks, similarity of goods or services, and likelihood of confusion arising from the two similarities, are to be assessed systematically.

The first two elements are assessed individually before the final element, which is assessed taking into account all relevant extraneous factors, to the extent that they inform the court as to how the similarity of marks and goods or services will likely affect the consumer’s perception as to the source of the goods or services.

Clarification on the meaning of “distinctiveness”

In Singapore law, the concept of “technical distinctiveness” was introduced in Staywell. The Court of Appeal in that case made the distinction between “non-technical distinctiveness”, referring to what is outstanding and memorable about the mark, and “technical distinctiveness”, which refers to the ability of a mark to distinguish the goods or services of one particular trader from those of another.

Goh JC opined that this “Staywell distinction” has resulted in taxonomic uncertainty, since the taxonomy used to refer to these two well-accepted concepts in trade mark law had been rather consistent before Staywell.

The taxonomic uncertainty arising from Staywell extended in cases after Staywell, where, against the Court of Appeal’s guidance, “technical distinctiveness” would be commonly regarded as synonymous with “inherent distinctiveness”, or in some cases, the concept of “non-technical distinctiveness” was not referenced at all. This uncertainty was further compounded by the introduction of new terms, such as “distinctive character” and “general distinctiveness” in more recent case law.

Having considered the relevant authorities and academic literature, Goh JC proposed that there be consistent use of the relevant terms with the understanding that “distinctiveness” has the following meanings: (a) inherent technical distinctiveness, (b) acquired technical distinctiveness; and (c) non-technical distinctiveness. 

Further, Goh JC clarified that “inherent” technical distinctiveness and “acquired” technical distinctiveness are distinctions that are to apply only to technical distinctiveness, and not to non-technical distinctiveness.

Clarification on the application of ”distinctiveness”

The Court of Appeal’s decision in Staywell made clear that distinctiveness is a factor integrated into the marks-similarity inquiry, and is not to be treated as a separate step. Yet, as Goh JC observed, many cases after Staywell, both at the Registry and High Court levels, have consistently treated distinctiveness as a threshold enquiry.

It is with this in mind that Goh JC clarified that distinctiveness cannot be treated as a separate step within the marks-similarity inquiry, lest the conceptual clarity emphasised in Staywell be marred. He stressed that—

… reasons of “convenience” and “practicality” are not good enough for courts and tribunals to unilaterally decide to depart from what is clearly a binding authority emanating from the Court of Appeal.

Clarification on the role of acquired distinctiveness at the marks-similarity inquiry

Before PAR Lim, Twitter had argued that the Twitter Mark has acquired distinctiveness and therefore that the Twitter Mark should enjoy a high threshold before a competing sign will be considered dissimilar to it. Recognising the uncertainty arising from the issue of whether acquired distinctiveness may be considered at the mark-similarity inquiry, PAR Lim “decline[d] to wade into the controversy”.

Both Twitter and V V submitted extensive arguments on appeal and Goh JC considered this issue at length. Eventually, he held that acquired distinctiveness should not be taken into account at the marks-similarity stage of the Staywell approach, but rather, at the likelihood of confusion stage. He based his judgement on 3 factors: (1) precedent; (2) principle; and (3) policy.

Regarding precedent, after extensively analysing past cases and academic commentary, Goh JC held that he was bound by the holding in Staywell that the assessment of mark-similarity means the mark comparison is undertaken mark-for-mark. This is so, without consideration of any external factors, including those that would necessarily have to be considered in determining acquired distinctiveness.

Regarding principle, Goh JC found that considering evidence of acquired distinctiveness with evidence of reputation in the confusion inquiry had ”the benefit of avoiding the evaluation of the same kind of evidence twice over at different stages”.

From a policy perspective, Goh JC found that not considering acquired distinctiveness at the marks-similarity stage would “stop the adducing of much irrelevant evidence with the attendant cost consequences on all parties”.

Conclusion

The impact of Goh JC’s decision on Singapore trade mark jurisprudence cannot be overstated. It has shed long-awaited light on the controversial issue of whether acquired distinctiveness may be considered at the marks-similarity inquiry as established in Staywell. 

Goh JC’s exhortations for consistent use of relevant terms as such “technical distinctiveness” and “non-technical distinctiveness” are also timely, given that much taxonomic uncertainty and confusion has arisen at both the Registry and High Court levels since Staywell.

The authors think that Goh JC’s views are sound, and hope to see them endorsed in the future. In fact, Goh JC himself has invited the Court of Appeal to assess the correctness of his views. As he stated--

At the very least, if my views can result in an opportunity for the Court of Appeal to clarify the issues, even if entirely contrary to my views, then this would have been all worthwhile.