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Singapore – A Rose By Any Other Name.

30 April, 2013

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

 

The Singapore Court of Appeal’s decision in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another [2013] SGCA 26 [“Hai Tong”] provides guidance for what brand creators should look out for when devising brand identity.

 
Introduction 

 

Traders, entrepreneurs and established companies (collectively “brand creators”) looking to build a successful brand realise the importance of brand identity. Strong brand identity – created through logos, labels, shapes and words – can help generate customer loyalty and set your goods and services apart from competing offerings in the market. 


But other than a keen eye for aesthetics, brand creators should also realize that brand identity is shaped by trade mark laws. Apart from trade mark registration difficulties, choosing a brand identity which is (unknowingly or otherwise) similar to an existing trade mark may result in infringement proceedings by proprietor(s) of a prior similar mark(s). 


As a consequence, brand creators may be forced to alter the brand identity after an expensive advertisement and publicity campaign or abandon the brand identity altogether, thereby loosing customers and dollars along the way. Such risks can be mitigated at the brand inception stage by following the “clues” from the Singapore Court of Appeal’s (“CA”) recent decision of March 2013 in Hai Tong. 

 

Summary of facts in Hai Tong 


Hai Tong sold a range of cosmetic products that were marketed under the brand “Lady Rose”. Hai Tong was also the proprietor of the registered “Lady Rose” mark. The mark consisted of the words "Lady Rose" and a flower device. 


Hai Tong alleged trade mark infringement against the Defendants, Ventree Singapore Pte Ltd (“Ventree”), an importer of cosmetics sold under the brand name “Rose Lady”, as well as Sky, a department store which retailed the “Rose Lady” cosmetics. The Defendant’s products were sold in peach-coloured packaging printed with the product name, which included the words “Rose Lady” accompanied by sketches of flowers in the background. The Defendant's products also bore the registered trade mark "VOV", which was the name of the manufacturer of these products. 


With regard to the trade mark infringement claim, the CA found that the Defendants had infringed Hai Tong’s “Lady Rose” mark (the passing off claim is not discussed in this article). 


The “Lady Rose” mark and the “Rose Lady” sign can viewed on page 1 of the pdf here.

 

In bringing an action for trade mark infringement under Section 27(2)(b) of 
the Trade Marks Act, one of the elements which a plaintiff would have to show is that that the sign used by the defendant in the course of trade is similar to his registered trade mark. In considering whether the "Rose Lady" sign was used in the course of trade and whether there was similarity between the “Lady Rose" mark and the “Rose Lady” sign, the CA provided guidance which may be useful for brand owners to determine how to brand their products and services. 


Sign language 


If a product is applied with several signs, any of those signs may infringe a trade mark, not just the product’s brand name. 

 

In Hai Tong, the Defendants argued that words “Rose Lady” was not used in the course of trade and that it was just decorative. Instead, the Defendants said the real “brand” on the cosmetic products was a registered trade mark, “VOV”. 

 

However, the CA said that the “Rose Lady” sign could also function as a badge of origin alongside the “VOV” mark. Secondary product identifiers which “are used to distinguish between different product lines of the same manufacturer can function as signs if they indicate to the consumer that the product in question originates from a particular undertaking” [Hai Tong at [19]]. 

 

Therefore, brand owners should be aware of what they place on packaging or marketing collaterals of a product. Other than the brand name, secondary identifiers which distinguish between different product lines, for instance, may be scrutinized. 


Size matters 


The prominence of a sign will also be a factor in whether the sign was used in the course of trade. In Hai Tong, the Defendants tried to argue that the words “Rose” and “Lady” were not used in the course of trade but were merely descriptive in that they were used to describe the rosa canina ingredient used in the cosmetics. 

 

The CA stated that when used on a product, the question of whether words which are essentially descriptive are used merely descriptively or in the trade mark sense would depend very much on the way in which they are presented on the product. 


The intention of the manufacturer and the way which the words are presented on the packaging are important factors. For instance, if words are presented prominently or bigger in dimension that any other words on the packaging, it might indicate that the sign is being used in the course of trade and not just to describe a product. 


Traders should therefore be conscious of the dimensions and prominence of words or other signs on products. If a sign is prominently displayed, if may be considered to be used in the course of trade. 


The fancier the better 


The more distinctive a mark, the easier it is for its proprietor to establish that an alleged infringer's sign is similar. Conversely, a descriptive mark affords the owner of the sign greater latitude to employ words or ideas, even if that sign contains some similarity to the registered mark. 


Where the words in a mark are purely inventive or fancy, the mark will be 
regarded as inherently distinctive (e.g. “Volvo” or “Nutella”). Non-invented 
words may also be distinctive if they are used in a way which is completely 
arbitrary in relation to the goods or services in question (e.g. "North Pole" 
for bananas). 


If marks are not obviously distinctive, they may become distinctive by use, taking into account factors such as market share, whether the use was intensive, widespread and longstanding and the amount invested in promotion. [see Doctor’s Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) [2012] 3 SLR 193 at [21]] 


In Hai Tong, the CA said that even though the words “Lady” and “Rose” used separately are not inventive, the juxtaposition of words can also engender distinctiveness. When paired together, the two words do not have a sensible meaning and are capable of distinguishing the goods of Hai Tong from those of others. 

 

Conclusion 


Drawing from the CA's findings in this case, brand creators should think about whether their proposed logos and brand names are distinctive and if not, how to make them so. Rather than using words or symbols that merely describe the goods or services to be offered, brand creators should be encouraged to come up with logos and brand names which are innovative and not easily associated with those goods or services. 

 

 

 

For further information, please contact:

 

Jinesh Lalwani, ATMD Bird & Bird
Jinesh.Lalwani@twobirds.com
 

 

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