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Singapore – Starwood ST. REGIS Prevails Over PARK REGIS Trade Mark.

6 January, 2014

 

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

 

In a recent CA decision, Starwood successfully opposed the trade mark application for PARK REGISby a rival hotel group Staywell Hospitality Group. The CA reversed the High Courts’ decision and found that the PARK REGIS mark was too confusingly similar with Starwood’s ST. REGIS mark which is associated with a premium hotel chain managed by the Starwood group.


The CA affirmed its earlier holding in Polo case with regard to the “step-by-step” approach in determining similarity of the marks: each stage is to be assessed systematically. They also rejected the Opponent’s arguments that similarity of markswas a low threshold requirement. TheCA reasoned at [17] that


“The three aspects of similarity are meant to guide the court’s inquiry but it is not helpful to convert this into a checkbox exercise in which a tick, however faint it might be, in any one box must compel the court to find that the marks are similar when a sensible appraisal of the marks as a whole would show otherwise.”


The CA also noted that adopting a low threshold requirement would essentially backlog the court’s assessment to the confusion inquiry stage and would neither be faithful to the statutory scheme nor be productive. Lastly, the CA also clarified that the assessment of mark similarity in opposition cases would purely be a mark-for-mark exercise without consideration of external matter to ensure conceptual clarity.


The CA also dealt with the issue of whether pre trading activities could constitute goodwill in the business. The CA took the view that the securing of restaurant tenants and hiring of hotel staff did not create demand in ST. REGIS as a hotel per se and their $300 million advertising efforts was not helpful as the court was unable to tell how much of it related to the ST. REGIS Singapore as opposed to the ST. REGIS brand in general.


The pre-launch advertisements specifically relating to ST. REGIS Singapore were more relevant, but fell significantly short of other precedents (CDL Hotels, BBC, WH Allen) as they only spanned one calendar month and only three were published in the local newspapers.


The CA also discussed the approaches laid out in England, Australia and Hong Kong, and further noted that international travellers coupled with Internet-based booking services were widespread and prevalent in Singapore. However, the CA declined to make a determination on this point,holding that it was not necessary for the issues present and chose to leave it for another day.

 

ATMD Bird & Bird

 

For further information, please contact:

 

Alban Kang, Partner, ATMD Bird & Bird

[email protected]

 

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