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30th July, 2014

A recent case decided by the Intellectual Property Office of Singapore (IPOS) that relates to a dispute concerning trade mark registration by Barcardi & Company Limited and application for revocation and invalidation by G3 Enterprises. Inc.

G3 Enterprises, Inc. (hereinafter referred as “the ‘Applicant’’) had applied to register a multi-class trade mark application for the mark LOUIS.M.MARTINI (a stylized mark) in Class 33 in Singapore on 3 March 2010 (hereinafter referred as ‘‘Application Mark’’).

Bacardi & Company Limited (hereinafter referred to as ‘‘the Respondent”) had filed a trade mark application for the mark MARTINI (a device mark) in Class 33 in Singapore on 18 May 2005 and the trade mark was registered on 21 December 2005 (hereinafter referred as ‘‘the Registered Mark’’).

On 31 August 2011, the Respondent had filed an opposition against the Application Mark on grounds of the Respondent’s prior registration which includes the Registered Mark. On 6 March 2012, the Applicant then filed an action to revoke the Respondent Mark and had requested for a declaration of invalidity of the Respondent Mark.

Both parties subsequently provided evidence to support their arguments which eventually resulted in a hearing which took place on 13 February 2014. Both the Applicant and Respondent had submitted various sets of supporting arguments.

During the hearing, the Intellectual Property Office of Singapore (IPOS) held that when reading Sections 7(1)(b)-(d) with Section 23 in the local context as set out in the case of Love & Co Pte Ltd v The Carat Club Pte Ltd [2008], the assessment for “inherent distinctiveness” in relation to Sections 7(1)(b), 7(1)(c) and 7(1)(d) is to determine whether a trade mark has intrinsic or inherent features or characteristics that are sufficiently unique to render the intended mark to immediately function (and not including potential function through subsequent use by the promoter of the mark in the future) as a reliable symbol of origin in the eyes of the average consumer when it is used vis–à–vis to the particular trader’s goods or services to differentiate that trader’s goods or services from other traders, who operate in the same market field and environment in which that trade mark functions. The IPOS re-emphasized that the assessment is made by examining the trade mark and its meaning, absent of the consideration element of its use, promotion or marketing by the promoter of the trade mark, whereby average discerning consumer of that category of goods or services will reasonably perceived and understood at the relevant date.

IPOS held that the objection under Section 22(1)(c) has partially concluded that the Registered Mark has become a common name in the trade for “alcoholic cocktails served in a ‘martini’ glass”, but not in relation to the other goods in the specification. However, it will not be relevant if such genericism is the result of inactivity of the Respondent. Therefore, this ground of objection failed.

IPOS held that the revocation action failed. However, IPOS also held that the invalidation action had partially succeeded because the Registered Mark had acquired distinctiveness for vermouth and sparkling wine. Therefore, the Registered Mark was partially invalidated with respect of other goods.