Jurisdiction - Singapore
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Singapore – Distinctiveness Of A Mark Within A Mark: “TAYLOR’S” And “TAYLORS WAKEFIELD”.

7 November, 2014

 

Taylors Wines Pty Ltd (“Applicant“) applied to register the word mark 

 

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(“TAYLORS WAKEFIELD“) in Class 33 for wines, excluding fortified wines. Taylor, Fladgate & Yeatman Limited (“Opponent“), the registered proprietor of the word mark

 

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(“TAYLOR’S“) in Class 33 for wines opposed the registration. The Opponent submitted that the common denominator between the two marks, “TAYLORS” was distinctive and dominant, such that the Applicant’s mark was similar to their earlier registered word mark. One of the questions that arose was whether it is possible for a registered trade mark that is wholly (or nearly wholly) contained within a composite application mark to have “an independent distinctive role” such that the competing marks are found to be similar.

 
The approach taken by our local courts thus far is to consider whether the earlier trade mark is distinctive and whether the other elements in the later application mark erode the distinctiveness of the earlier mark within it.

 
Earlier this year, the Assistant Registrar had found that the later application mark

 
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was visually and aurally similar to a small extent but not conceptually similar to the earlier registered mark

 
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This was partly due to the evidence of other live businesses in Singapore using variations of “Kenzo” in their titles which confirmed the indistinctive nature of “Kenzo” as a common Japanese name. 

 
A few years ago, the High Court had also held that

 

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(“SUBWAY NICHE“) was similar to the registered

 

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(“SUBWAY“) mark. This was because the “SUBWAY” mark had acquired distinctiveness through widespread and long-standing use in Singapore and the registered proprietors of “SUBWAY” had invested significant sums in promoting the mark to the Singapore public. Due to this distinctiveness, the addition of the word “niche” to the “SUBWAY NICHE” mark did not offset this similarity.

 
Following the above, the Assistant Registrar found that “TAYLOR’S” was not particularly distinctive as there is evidence that it is used as the trading name of a number of live business entities in Singapore. Furthermore, there was no evidence of marketing or promotion of the “TAYLOR’S” mark in Singapore to show that it had acquired distinctiveness. Overall, “TAYLORS WAKEFIELD” was found to be dissimilar to “TAYLOR’S”.

 
It is well-settled that in order to be accepted for registration, trade marks have to be inherently distinctive or have acquired distinctiveness through use made of the trade mark. It also appears from case law that the distinctiveness of the earlier registered trade mark will play a significant role in the determination of whether competing marks are eventually found to be similar.

 
Therefore, businesses should enhance the distinctiveness of their marks through marketing and promotion of their mark to the Singapore market so as to bolster the protection of their marks post- registration. This is especially important for marks that tend towards a low level of distinctiveness as these efforts assist the mark to acquire distinctiveness so that applicants of a subsequent mark containing the earlier registered trade mark would have to demonstrate to a more compelling degree that their marks are dissimilar.

 

ATMD Bird & Bird

 

For further information, please contact:

 

Yi Jia Kwee, ATMD Bird & Bird

yijia.kwee@twobirds.com

 

ATMD Bird & Bird Intellectual Property Practice Profile in Singapore

 

Homegrown Intellectual Property Law Firms in Singapore 

 
 

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