SINGAPORE: THE ELECTRIFIED STORM WAR BETWEEN SEIKO AND SEIKI

August 19th, 2014

 

A recent case decided by Intellectual Property of Singapore (IPOS) in relation to dispute concerning a trade mark application filed by Choice Fortune Holdings Limited and opposition by Seiko Holdings Kabushiki Kaisha(trading as Seiko Holdings Corporation).

Choice Fortune Holdings Limited (hereinafter referred to as ‘‘the Applicant’’) applied to register a trade mark for ‘‘SEIKI’’ on 6 January 2011 in Singapore in Class 9 (hereinafter referred to the ‘‘the Applicant’s Mark). The application was subsequently accepted and published on 19 August 2011 for opposition purposes.

On 16 December 2011, Seiko Holdings Kabushiki Kaisha (trading as Seiko Holdings Corporation) [hereinafter referred to the ‘‘the Opponent’’] filed a Notice of Opposition to oppose the application on grounds of the Applicant’s Mark is similar to their mark ‘‘SEIKO’’ (hereinafter referred to ‘‘the Opponent’s Mark’’).

After both parties had submitted all supporting arguments, and following two occasions where their agents were unavailable, a hearing eventually took place on 16 April 2014.

In the proceedings of this opposition, the Opponent relied on six different classes of registered trade marks but of utmost relevance was ‘‘SEIKO’’ alone in Class 9 and only relied on grounds under Section 8(2)(b) and 8(4)(ii)(A) of the Trade Mark Act (Cap 332, 2005 Rev Ed) [hereinafter referred to ‘‘the Act’’] although Section 7(6), 8(4)(i), 8(ii)(B) and 8(7)(a) were included in their initial Notice of Opposition.

During the hearing, IPOS held that under Section 8(2)(b) of the Act, the Applicant’s Mark was visually similar and on ‘‘first impression’’, aurally similar to the Opponent’s Mark to a low degree. Besides, IPOS also agreed with the Applicant’s grounds of argument that the Applicant’s Mark and the Opponent’s Mark were neutral therefore not conceptually similar. IPOS therefore concluded that considering the totality of the marks, both the ‘‘SEIKO’’ and ‘‘SEIKI’’ mark were marginally similar.

In relation to the similarity of goods, IPOS nonetheless held the one of the Opponent’s earlier trade mark was broad to the extent that overlapped with the Applicant’s goods. Thus Section 8(2)(b) of the Act has been satisfied where the goods were similar.

Furthermore, IPOS also took into account the Applicant’s submission on extraneous factors which involved the normal way or any circumstances under which consumer would purchase the goods and held that there was no likelihood of confusion between the goods of the Applicant and the Opponent. Therefore IPOS concluded and decided the ground of opposition under Section 8(2)(b) failed.

With regards to Section 8(4)(ii)(A), IPOS decided that the Opponent’s Mark was a well-known mark to a high degree and recognised by large segment of the market as well as public in Singapore. The Opponent however did not satisfy the mental element which associated with dilution whereby in this case, blurring the potential purchaser and public in an unfair manner of the distinctive character of this mark. The ground of opposition under this Section consequently failed.

As a final conclusion, IPOS held all grounds of opposition to be invalid and allowed the Applicant’s Mark to proceed to registration.