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Singapore – Time Inc loses Trademark Case.

2 January, 2015

 

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

 

In a recent Intellectual Property Office of Singapore (IPOS) case, US publishing giant Time Inc and proprietor of well known magazines Time and Fortune, failed to invalidate the Singapore trade mark Li San Zhong, the proprietor of the Subject Mark and Chinese bi-monthly financial magazine Fortune Times, had failed to adduce evidence in support of his trade mark registration in the invalidation proceedings and was deemed to have admitted to the facts alleged by Time Inc in its invalidation application. Yet, Time Inc was unable to succeed on any of the grounds of its invalidation application.

 

Amongst other things, Time Inc claimed its trade mark was “well-known” under the Singapore Trade Marks Act (the “Act”) and that the Subject Mark contained two of its most famous registered trade marks, “FORTUNE” and “TIME”, and was therefore confusingly similar to the said marks and was registered in bad faith.

 

The approach to comparing marks in Singapore is a mark-for-a mark and does not permit a comparison of the totality of Time Inc’s “FORTUNE” and “TIME” marks on the one hand with the Subject Mark on the other. The IPOS hearing officer found that in comparing “FORTUNE” with the Subject Mark and comparing “TIME” with the Subject Mark, the respective pairs of marks were not similar on the whole. She further found that there was no confusing connection between the Subject Mark and Time Inc and consequently, use of the Subject Mark was not likely to damage Time Inc’s interest. In addition, the IPOS hearing officer found that even if it were assumed that the competing marks were similar there was no likelihood of confusion. The IPOS hearing officer found that the consumer was thought to be likely to exercise a sufficient degree of care in selecting reading content of interest to him.

 

Though the IPOS hearing officer found that for the purposes of Section 7(6) of the Act, Time Inc enjoyed goodwill in Singapore, she found that Time Inc failed on this ground of invalidation because there was no marks-similarity, no reasonable likelihood of confusion between the Subject Mark and Time Inc’s marks, no misrepresentation by Li San Zhong and thereby no damage caused.

 

The IPOS hearing officer reiterated that there is a high threshold for a claim of bad faith. Time Inc’s assertion that Li San Zhong chose to confuse customers into thinking that there is an association between the Subject Mark and the Time Inc’s marks was unsupported by evidence and did not pass the high threshold required.

 

As the IPOS decision was only released earlier this month, it remains to be seen whether Time Inc will appeal the decision to the Singapore High Court. If appealed, the appeal will be a total re-hearing and the High Court will have the power to require that further evidence be given. In the meantime, the Subject Mark remains on the register and it will continue to co-exist with Time Inc’s marks in Singapore.

 

It worth noting that this is the second time in recent months that Time Inc has suffered a trade mark defeat. In November, the publisher lost a claim in the UK that its ‘Ideal Home’ trademark was infringed by Media 10’s use of the trade mark on its website for its annual Ideal Home Show in London.

 

ATMD Bird & Bird

 

For further information, please contact:

 

Tan Lijun, ATMD Bird & Bird

lijun.tan@twobirds.com

 

ATMD Bird & Bird Intellectual Property Practice Profile in Singapore

 

Homegrown Intellectual Property Law Firms in Singapore 

 
 

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