Singapore: There is no confusion between “Park Regis” and “St. Regis”

October 29th, 2012

 

In the case of Staywell Hospitality Group Pty. Ltd. v Starwood Hotels & Resorts Worldwide, Inc. and another, the High Court of Singapore allowed Staywell's appeal and rejected Starwood's cross appeal in relation to a trademark application filed by Staywell.

Staywell Hospitality Group Pty. Ltd. (hereinafter referred to as "the Applicant") is an Australian hotel operator which had operated the brand Park Regis since 1972. The Applicant opened a 4-star hotel in Singapore in 2010 called Park Regis. Starwood Hotels & Resorts Worldwide, Inc. and its subsidiary, Sheraton International Inc. (hereinafter referred collectively as "the Opponents") operate 17 hotels throughout the world under the hotel brand – St. Regis. The first St. Regis hotel was opened in 1902 and The St. Regis Singapore opened in April 2008.

In March 2008, the Applicant had applied to register the "Park Regis" trade mark (hereinafter referred to as "the Application Mark") in Singapore in Classes 35 and 43. The Opponents filed a notice of opposition to oppose the registration of the Application Mark in September 2008. The Opponents was already the registered proprietor of the St. Regis trademark (hereinafter referred to as "the Opponents' Mark") in Classes 41, 42, 36 and 37.

The Singapore Principal Assistant Registrar of Trade Marks (hereinafter referred to as "the PAR"), in her decision on 19 July 2011, allowed the opposition under Sections 8(2)(b) and 8(4)(a) read with (b)(i) but at the same time rejecting the grounds of opposition under Sections 8(7)(a), 8(4)(a) read with (b)(ii) and Sections 7(6) and 7(4). The Applicant appealed against the decision of the PAR on Sections 8(2)(b) and 8(4) while the Opponents lodged a cross appeal in respect of the PAR's decision to reject the opposition under Section 8(7)(a).

In relation to Section 8(2)(b), the High Court concluded that the for the registration of the Application Mark to be denied, it must be established that the Application Mark is similar to the Opponents' Mark, that the Application Mark is to be registered for services identical or similar to those for which the Opponents' Mark is protected and that there exists a likelihood of confusion on the part of the public because of the above.

The PAR, in her decision, found out that the Application Mark and the Opponents' Mark were not similar visually, but were similar aurally and conceptually. In the High Court, the Applicant argued that both the Application and Opponents' Marks are conceptually dissimilar as "Park Regis" denotes a wide open space while "St. Regis" denotes a person and that they are also aurally dissimilar because the first word of each mark is different and is pronounced quite differently from the other. The Opponents' case was that both the Application and Opponents' Marks are aurally and conceptually similar as the dominant feature in the Opponents' Mark is "Regis" and not "St. Regis" and that Regis is a distinctive word unlike Park or Saint and therefore the Application Mark has wholly incorporated the distinctive component of the Opponents' Mark.

The Opponents contended that the word "Regis" is inventive and fanciful when used for hotel services as it is in no way descriptive of the hotel on offer while the Applicant argued that that "Regis" is a common name and "Saint Regis" may be a historical person who had been elevated to sainthood. Although the High Court adjudged that the word "Regis" was not descriptive of and did not connote the hospitality industry or hotel services in any way, the High Court maintained that both the Application and Opponents' Marks must be looked at as a whole i.e. St. Regis and Park Regis. In such case, the High Court found out that the mark "St. Regis" when applied to a hotel was as fanciful as "Regis" on its own since a saint is not generally associated with a hotel of any sort; hence, addition of "St." did not change the mark's place on the scale of distinctiveness.

The PAR had found that the marks were similar aurally because general public were likely to hear "Regis" as the dominant word when either mark was read out. The Applicant argued that the words "Park" and "Regis" would be read and pronounced as two separate and distinct words and similarly, the words "St." and "Regis" would be read as two separate and distinct words. The High Court refuted the PAR's finding that the prefix "St." would not be striking as there were many other place names which contained the prefix "St.", such as "St. James Power Station". The High Court conveyed that the name "Regis" is an unusual name in the context of Singapore; therefore, people enunciating both the Application and Opponents' Marks may pay more attention to the second distinctive word in each mark rather than to the more common first word even though they do give that first word its due pronunciation. Hence, the Application Mark and the Opponents' Mark were found to share only a slight degree of aural similarity.

On the issue of conceptual similarity between the Application Mark and the Opponents' Mark, the Applicant argued that both the Application and Opponents' Marks were conceptually dissimilar as the name "St. Regis" conjures up the picture of the historical figure, St. John Regis, while the word "Park Regis" brings to mind the idea of an open space or park. The High Court refuted this argument pointing out that St. John Regis was not a well-known saint or personage in Singapore. The Opponents submitted that since "St." and "Park" are very common words, persons who come across them in conjunction with the word "Regis" are more likely to be struck by "Regis" and remember it rather than the common prefixes "St." and "Park". The High Court agreed that the word "Regis" could be associated with royalty and the Applicant and the Opponents had tried to emphasize a connection with royalty/royal treatment while advertising for their respective hotel brands. Based on such findings, the High Court concluded that the Application Mark and Opponents' Mark are similar as their conceptual and aural similarity offset the visual dissimilarity.

Refuting the Applicant's argument that as Park Regis was a 4-star hotel and St. Regis was a 6-star hotel, the High Court sided with the PAR decision that the services offered by the Applicant and the Opponents were similar.

While assessing if there was any likelihood of confusion, the High Court addressed various considerations required to prove the likelihood. The High Court maintained that The St. Regis Singapore offered qualitatively similar services as those offered by Park Regis. The High Court also pointed that as both the Application and Opponents' Marks underline the concept of royal and luxurious hotel treatment, the impressions given by both was likely to be mixed. However, the High Court acknowledged that the there is little likelihood of confusion when customers or potential customers book a room in either of these hotels and that sufficient steps were taken by the Applicant (including marketing and advertisement) to differentiate its services from those of the Opponents. Considering such factors, the High Court adjudged that in spite of the Application and Opponents' Marks being similar, they are not likely to be confused; thereby, reversing the PAR's findings on Section 8(2)(b).

Under Section 8(4), the PAR had found that as the Opponents' Mark was well known in Singapore as of 3 March 2008 when the Applicant sought to register the Application Mark, there was a real likelihood that the use of the Application Mark would damage the interests of the Opponents. The High Court rebutted this finding stating that although the St. Regis brand was a well-known brand in Singapore, there is no likelihood of confusion between the Application and Opponents' Marks, as established earlier.

In relation to Section 8(7)(a) i.e. rejection of a trademark application by virtue of the law of passing off, the High Court set out to establish three factors; whether the Opponents' Mark had accrued goodwill when the Application Mark was applied for, whether there was any misrepresentation and whether there was any likelihood of damage to the St. Regis brand as a result of the misrepresentation.

The PAR had decided that St. Regis brand did not have any goodwill in March 2008 i.e. the application date for the Applicant Mark, as The St. Regis Singapore opened in April 2008. The High Court rejected the Opponents' claim that St. Regis brand's international reputation and total global revenue amounted to goodwill in Singapore, stating that goodwill is territorial. The High Court also rejected the Opponents' argument that the advertising and promotion of the St. Regis marks had fetched the Opponents' goodwill. Therefore, the High Court rejected the Opponents' notion that the St. Regis brand had acquired the requisite goodwill in Singapore prior to March 2008.

Lastly, the High Court concluded that the Application and Opponents' Marks, although similar, were not likely to be confused with each other and that there is no likelihood of damage to the St. Regis brand arising from the use of the Park Regis brand. Consequently, the High Court allowed the Applicant's appeal and dismissed the cross appeal from the Opponents.