Back to News


19th August, 2014

A recent case of Tao, Hsiu-Chih v Pirelli & C. S.P.A, involved a dispute between two parties whereby Tao, Hsiu-Chih filed an application for trade mark registration and opposition thereto by Pirelli & C. S.P.A.

Tao, Hsiu-Chih (hereinafter referred to as ‘‘the Applicant’’) applied to register a trade mark device ‘‘Ts.Project’’ in Classes 20 and 24 in Singapore on 25 November 2010 (hereinafter referred to ‘‘the Applicant’s Mark’’). On 29 April 2011, the Applicant’s Mark was accepted and gazetted for opposition purpose.

Pirelli & C. S.P.A. (hereinafter referred to ‘‘the Opponent’’) filed a Notice of Opposition to the Applicant’s Mark on 28 June 2011 on Section 8(2), 8(7)(a) and 7(6) of the Trade Mark Act (Cap 332, 2005 Rev Ed) [hereinafter referred to ‘‘the Act’’] because of the similarity to its four registered trade marks namely, ‘‘Pirelli’’, ‘‘(Elongated P Mark)’’, ‘‘(Elongated P Mark with a dot)’’ and ‘‘(Curved P Mark)’’ owned by the Opponent (hereinafter referred to ‘‘the Opponent’s Mark).

The Applicant filed a written submission highlighted the fact that Opponent did not particularize which branch of Section 8(2) of the Act they were relying on. IPOS dismissed Section 8(2)(a) as a result of the submission made by the Opponent only involved arguments in relation to Section 8(2)(b). Subsequently on 9 September 2011, the Applicant submitted their Counter Statement.

The opposition procedure was dealt solely based on written submission only due to reluctance of both parties to attend the hearing.

With regards to Section 8(2)(b), Intellectual Property of Singapore (IPOS) held that all four of the Opponent’s Marks were dissimilar to the Applicant’s Mark in terms of visual, aural and concept. Therefore the grounds for opposition under Section 8(2)(b) failed.

In relation to grounds of opposition under Section 8(7)(a), IPOS found no goodwill of the Opponent in Singapore thereby rejected the opposition under Section 8(7)(a).

Since the Opponent failed to establish the first element of tort of passing off, IPOS decided not to further consider the elements of misrepresentation and damage. Besides, the scope of business in which the Opponent and the Applicant operated was different.

With regards to Section 7(6), IPOS was of the view that the Opponents failed to meet the requisite standard of proof in bad faith thus dismissed this ground of opposition.

IPOS concluded that the opposition failed on all grounds and therefore held that the Applicant’s Mark may proceed to registration.