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22nd May, 2014

In a trade mark case of Lacoste v Carolina Herrera, Ltd, the hearings and mediation group of the Intellectual Property Office of Singapore ruled in favour of Lacoste.

Lacoste (hereinafter referred to as “the Applicant”) filed a trade mark application for the mark “L.12.12” on 2 December 2010 under International Registration No. 1061750 in Classes 3, 18 and 25 and the corresponding Singapore application was assigned application no. T1100417A (hereinafter referred to “the Opposed Mark”).

Carolina Herrera Ltd (hereinafter referred to as “the Opponent”), is a fashion and lifestyle company headquartered in New York involving six flagships boutiques had filed an opposition against the Singapore application. In the opposition proceedings, the Opponent had submitted details of their own registered trade marks and pending trade mark applications which contain the numerals “212” in Class 3 from various countries such as Singapore, Brazil, Canada, Switzerland and China (hereinafter referred to as “the 212 Marks”).

The Opponent has argued that Opposed Mark is a similar to 212 Marks due to the common and dominant element of the marks and this may confuse the consumer with the similar idea/concept of the numerals 212 contained in both marks.

The Opponent argued based on McDonalds Corp v Future Enterprises Pte Ltd [2003] SGIPOS 3 (“McDonalds IPOS”), where the cited case of Beck, Koller (1947) 64 RPC 76 held that “ there are a series of marks having  common feature or a common syllable for goods dealt with in a particular trade…this is generally a circumstance adverse to an applicant for a mark containing the common feature, since the public might think that such a mark indicated goods coming from the same source as the goods covered by the other marks”. The Opponent also relied on the decision of Court of Appeal in McDonalds Corp v Future Enterprises [2005] 1 SLR(R) 177 (“McDonalds CA”) held that “a series of marks, registered or unregistered, but in use, having a common feature or a common syllable and where all the marks in such a series belong to an opponent”. This means the public will consider that the mark is from the same source.

The Applicant submit the letter “L” and the numbers “12” and “12” is not 212 (two one and two) and it is visible and there is no similarity to “212”. The court argued there is no similarity between the both marks.

In the decision as delivered by IPOS on 25 March 2014, the IPOS has concluded that the opposition is rejected because there is no visual, aural or conceptual similarity between “212” and L. 12. 12 and that the Opposed Mark and the 212 Marks are different number of syllables and each syllables is pronounced differently.