SINGAPORE: THE FACESHOP CO LTD V CONSOLIDATED ARTISTS BV

September 7th, 2017

 

The mark “MANGO” by Consolidated Artists BV (Opponent) has been registered in various classes and it is considered as a well-known mark among the public in Singapore. However, their effort to maintain the exclusivity of the word “MANGO” in any mark in relevance to facial and skin preparations, cosmetics, soaps and fragrances in class 3 was unsuccessful.

In this case, THE FACESHOP CO LTD (Plaintiff) had applied for a trademark registration for the mark “MANGO SEED THEFACESHOP” and the word “MANGO” was not disclaimed by the Opponent’s trademark registrations (due to the fact the disclaimer entry is optional since 15 January 1999, but in this case, the Registrar saw that the Opponent’s mark is not distinctive and is considered as to be descriptive of the character of the goods i.e. mango flavoured or scented products). It was later argued that the word “THEFACESHOP” was long and regarded as non-descriptive as it did not directly describe the goods despite having the words “MANGO” in the first line and “SEED” in the second line as a part of the mark. Therefore, the mark “MANGO SEED
THEFACESHOP” was visually, aurally conceptually different than the Opponent’s mark.

Marks-similarity may cause a huge impact on the consumer’s point of view especially to the products that overlap with each other i.e. health-care products and cosmetics and it is important for a mark to be distinctive of each other. In this case, the Opponent had argued that there would be a likelihood of confusion among consumers, in which they might have believed that
the goods bearing both marks were economically linked due the word “MANGO” depicted on both marks. However, the Registrar found there to be no likelihood of confusion between the parties.

In the view of the impact of good-similarity between the parties, the goods from “MANGO SEED THEFACESHOP” were off-the- shelves products and could be considered as affordable among consumers. The goods were also considered as personal products to be applied onto the face and body in and regarding the appearance of the goods to the consumers, it would be subject to
the smallest detail such as the suitability and quality of the goods. Therefore, it could be concluded that there were several factors that prove the likelihood of confusion among consumers.

In relevance to the well-known status as a ground raised by the Opponent, the Registrar had decided that the marks were dissimilar for the same reasons mentioned above despite the Opponent pleaded rights that their mark is “well known to the public at large in Singapore”. On top of that, the Registrar considered that the evidence provided by the Opponent was
insufficient to support that the Opponent’s “MANGO” mark is entitled the “extensive level of protection” granted to “a rare and exclusive class”.