ALOYSIUS CHANG (Associate Editor) & JEREMY LUA (Associate Editor)

Ever had a MacTea or MacCoffee, or maybe MacNoodles?

Find yourself wondering if these are new McDonald’s products? Why did you even think of McDonald’s in the first place?

The answer lies in trademarks, a method to distinguish goods and services through graphic displays. Defined by section 2(1) of the Trade Marks Act 2005 (Cap. 332) as “any sign capable of being represented graphically and capable of distinguishing goods and services dealt with or provided in course of trade”,  recognizable trademarks come in a variety of forms. They range from letters and words, to shape and color, and any combination in between.

Trademarks result in reputation and goodwill, valuable assets for the trader. For these valuable assets to be protected, the trademarks which produce them must be registered. Registration is administered by the Intellectual Property Office of Singapore (IPOS).

Registration of trademarks

Applicants for trademarks should research existing trademarks to ensure that no identical or similar trademarks have been registered. This can be done at IPOS or online at eTradeMarks.

IPOS will conduct a review to ensure that the completed application form complies with provisions of the Trade Marks Act. If it complies, IPOS will issue a trade mark application number and date of filing to the applicant. If there are grounds for objection, the applicant will be informed of the necessary corrections to be completed within a specified time frame; the applicant’s failure to do so will result in the withdrawal of the application.

The Registry Office will then mount an extensive search for similar or conflicting trademarks. Besides the conflict test, there are still a couple more hoops to jump through. The mark will be examined under the provisions of Singapore trade mark laws, which prohibits certain marks, such as those lacking distinguishing characteristics. Again, if objections arise, corrections must be done within a specific time frame. A notification will be given when the mark is accepted for registration before it is published in the Trade Marks Journal.

Publishing the mark for public consumption is the final stage. Within two months of publication, members of the public may object if they believe the mark too similar to a mark already registered or pending. The applicant must resolve any objections. If two months pass without objections arising, the applicant may register his trade mark and will be issued a registration certificate. This signifies the ability to use the trade mark freely in corporate paraphernalia.

How do the courts deal with infringement?

There are several grounds for objection. For example, a Singapore company could object to a foreign company’s registering its trade mark if it reasonably believes that it would be an infringement of its own trade mark. Very often, objections are raised at the final stage.

If you thought that MacCoffee really sounded like a McDonald’s product, so too did McDonald’s. In McDonald’s Corp v Future Enterprises Pte Ltd, [2005] 1 Sing. L.R. 177, everybody’s favourite fast-food chain opposed the application for registration of the three trademarks “MacTea”, “MacCoffee” and “MacNoodles” on the grounds that they were confusingly similar to its own trademarks. McDonald’s lost. How do courts decide such matters?

To help decide whether there are any reasonable grounds, the courts employ a simple test, looking at their purported similarities and whether the public may possibly be confused. Two recent cases will permit us to better understand the functioning of this test.

In Valentino Globe BV v Pacific Rim Industries Inc, [2009] SGHC 150 [“Valentino”], a merchant who owned several trademarks with the name “Valentino” sued the defendant who attempted to register “Emilio Valentino”. The High Court, using a test based on the visual, aural and conceptual similarity, held that objected similarities in the marks would not likely confuse the public.

Admittedly, cases of similar products with similar marks like Valentino are far more straightforward. In contrast, the test used by the High Court would be inadequate when dealing with dissimilar products with similar marks.

An example is found in Mobil Petroleum Company, Inc v Hyundai Mobis, [2009] SGCA 38 [“Mobis”]. The well-known oil giant, Mobil, objected to Hyundai’s use of “Mobis”, a mark used in Korea since November 2000, in its automobile parts business in Singapore, even though Mobil was not involved in such business. Mobil contended that the similarity to its own “Mobil” trademark would confuse the Singapore public.

In Mobis, the Court of Appeal (CA) reiterated the test to determine whether real grounds for such objection existed. First, the visual, aural, and conceptual similarity is really a threshold requirement to establish a prima facie case. The court must consider whether the disputed mark would confuse the public and affect the proprietor’s interests based on provisions laid out in sections 8(2) and (3) of the Trade Marks Act 2005 (Cap. 332):

• Connection: A business connection between the registered mark and the objected mark, which might suggest the former’s involvement at the source, like in production or design, e.g. in a licensing or franchise agreement.
• Possibility of confusion by the public for such use: The CA acknowledged such similarity between the marks would really only confuse if the products in question are similar.
• Possible damage to the interests of the proprietor: The CA laid down three possible categories of damage—(1) damage to goodwill, (2) risk of litigation and not actual litigation per se, and (3) restriction of expansion of use, i.e., preventing the proprietor from expanding into related businesses where it is likely to do so.

Therefore, the CA’s establishment of clear rules defining the test and its considerations in Mobis means that future cases will likely rely on this precedent, whether it concern similar or dissimilar products.