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Singapore: Application For Amendment of Notice of Opposition

24th December, 2013

This is a trade mark opposition involving J.-E. Borie SA (hereinafter referred to as the “Applicant”) and MHCS (hereinafter referred to as the “Opponent”).

The Applicant had filed international trade mark application number 1058310 on 18 October 2010 for the mark “THE YELLOW LABEL” in Class 33 claiming AOC (Appellation d’originine controlee) wines (wines with protected appellation of origin) and the international application was extended to Singapore (hereinafter referred to as “The Applicant’s Mark”).

On the other hand, the Opponent had filed international trade mark number 1080267 on 18 April 2011 for the mark “YELLOW LABEL” in Class 33 claiming Wines, wines of French origin namely Champagne and sparkling wines and the application was then extended to Singapore (hereinafter referred to as “The Opponent’s Mark”).

The Opponent then filed their notice of opposition to oppose the registration of the Applicant’s Mark on 1 August 2011.

Next, a twist of events takes a turn. The Opponent had received a Provisional Refusal of Protection to their mark, citing a number of prior existing marks (hereinafter referred to as “the Cited Marks”).

This prompted the Opponent to write to the Intellectual Property Office of Singapore (IPOS) requesting for the acceptance of the Applicant Mark to be revoked on grounds of “divergence and material inconsistency in the examination process. After that, the Opponent wrote to IPOS and to the Applicant to request for an amendment to the Opponent’s notice of opposition to rely on most (but not all) of the Cited Marks that were registered in the name of Diageo Brands B.V. (hereinafter referred to as “Diageo“; marks referred to collectively as the “Diageo Marks“), to support the grounds of their opposition.

Diageo, though, was not party to the opposition proceedings. It was submitted by the Opponent that it was not known whether if Diageo wanted to pursue these proceedings and they were not notified by the Opponent of the same.

However, the Applicant had refused to give consent to the proposed amendments requested by the Opponents. A request for hearing was then requested by the Opponent.

According to the Singaporean Trade Marks Act, a person may file a notice opposing the registration of a trade mark by filing a notice of opposition based on relevant grounds.

An interesting fact of this case is that it was the first time IPOS is addressing the question of whether it should allow an amendment made by an opponent to rely on trade marks which belong to a third party who is not a party to the opposition proceedings. As it presently stands, the Act does not contain any specific provision on the amendment of a notice of opposition, although in practice, amendments are sometimes sought and made by way of filing an amended notice of opposition.

Since the Applicant’s Mark and the Opponent’s Mark are “virtually indistinguishable,” the Opponent find it relevant and appropriate to amend their notice of opposition to include the Diageo Marks. Hence, the Applicant’s Mark should also face opposition from Diageo Marks.

The Opponent also clarified that there is no such restriction against an opponent relying on a third party trade mark when initiating a proceeding in an opposition in accordance to the Act.

The Applicant reasoned that if the IPOS concludes that it cannot decide whether or not it is just to allow the amendment, then it must not simply be allowed. The main issue was whether the amendment would cause injustice to the other party and such principles of justice are of general application, regardless of the fact that the case pertained to an application to amend to include a time-barred cause of action.

Further, the Applicant also submitted that the dispute is between the Opponent and the Applicant only, and not between the Applicant and Diageo. Accordingly, the Applicant argued that the Diageo Marks would not assist in determining the issues of the dispute, which the Applicants submit are:

  • whether the Opponent’s Mark is an earlier mark in Singapore for identical goods in relation to the Applicant’s Mark;
  • whether the Opponent’s Mark is identical or similar to the Applicant’s Mark in respect of similar goods such that there exists a likelihood of confusion as a result of the registration of the Applicant’s Mark;
  • whether the Opponent’s Mark is a well-known mark such that the use and/or proposed use of the Applicant’s Mark is likely to damage the Opponent’s interests; and
  • whether the application to register the Applicant’s Mark is liable to be prevented by the law of passing off.

The IPOS held in favour of the Opponent allowing their request to amend their notice of opposition to rely on the Diageo’s Marks and has ordered the Opponent to file their amended notice of opposition within two weeks from the date of this decision and the Applicant to file its amended counter-statement two months from the date on which the Opponent files it amended notice of opposition.