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30th July, 2014

The case of Sin Fatt Industrial Co. Sdn. Bhd. v Star Industrial Company Limited [2013] had illustrated some important dictum to be appreciated in Singapore in the future.

Sin Fatt Industrial Co. Sdn. Bhd., a Malaysian company (hereinafter referred to as ‘‘the Applicant’’) had file two applications to register the two sided stylized mark A ACE in Class 21 specifically toothbrush on 31 July 2009 (hereinafter referred to ‘‘the Application Mark’’). The two applications subsequently published in the Singapore Trade Mark Journal on 20 August 2010 and 17 September 2010, respectively. Besides that, the Applicant is also the registered proprietor of the stylized mark A ACE for toothbrush in Class 21 which was filed on 2 October 2008 (hereinafter referred to ‘‘the Registered Mark’’).

Star Industrial Company Limited, a Singapore company (hereinafter referred to as ‘‘the Opponent’’) filed a Notice of Opposition against the Application Mark and also applied to invalidate the Registered Mark on 20 December 2010 based on the grounds of the Application Mark and Registered Mark pass off the Opponent’s mark, similarities between the Application Mark and Registered Mark with its own mark. The Applicant filed its counter statements to both the opposition and invalidation on 19 April 2011.

During the proceedings, the Intellectual Property Office of Singapore (IPOS) had referred to Norman Kark Publications Ltd v Odhams Press Ltd [1962] 1 WLR 380 whereby a mere intention to notice the A logo is insufficient; the question is one of reputation and thereby accepted that the Applicant had used the Application Mark in Malaysia in 1966 and from 1980 in Singapore. As the Opponent had not satisfied the requisite goodwill element in Singapore at the relevant time, the first element of the tort of passing off was not established. The opposition and invalidation by the Opponent were rejected.

With regards to the similarities between the Application Mark and Registered Mark with its own mark, IPOS had adopted a three-step assessment: firstly, an assessment of whether the marks are similar, secondly, whether the goods and/or services are similar and last, but most importantly, whether there exists a likelihood of confusion on the part of the public. IPOS took into account the aspect of distinctiveness of the prior mark, visual, aural, conceptual similarity of the mark, as well as similarity of the goods and lastly the likelihood of confusion and held the opposition and invalidation by the Opponent failed.

IPOS held that the opposition and the invalidation actions failed on all grounds and therefore held that the Application Mark can proceed to registration and the Registered Mark to remain in Register of Trade Marks.