31 July, 2012

 

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

 

The Opponent, Victoria’s Secret Stores Brand Management, Inc., is the holder of the VICTORIA’S SECRET brands and sub-brands. The Opponent supplies its products through specialty stores in the United States of America and to customers all over the world via its website and catalogue. 
 
The Applicant, Eclectic Edge Inc., operates a fashion boutique named “Valentine’s Secret” in Indonesia. 
 
The relevant marks to these opposition proceedings are: –
 
The Applicant’s Marks
Mark:  (see page 2 here)
Application No.: T0803761G
Date of Application: 24 March 2008
Class No.: 25
(“the Valentine’s Secret Mark”)
 
The Opponent’s Marks
Mark: “VICTORIA’S SECRET” 
Date of Registration: 12 March 1991
Class No.: 25
(“the Victoria’s Secret Mark”)

 

The Applicant’s Mark
Mark:   (see page 2 here)
Application No.: T0803762E
Date of Application: 24 March 2008
Class No.: 25
(“the VS Mark and Slogan”)
 
The Opponent’s Marks
Mark: “VS SPORT”
Registration No.: T9809412G
Date of Registration: 17 September 1998
Class No.: 25
(“the VS SPORT Mark”)

 

The Opponent raised several grounds of opposition. The main grounds were that the Applicant’s Marks should not be registered because: –
 
  • Sections 8(2) – the Applicant’s Marksare similar to the Opponent’s Marks, and is to be registered for similar goods, such that there exists a likelihood of confusion on the part of the public.
  • Section 8(4)(b)(i) – the Applicant’sMarks are similar to the Opponent’s Marks, which are well known in Singapore, and use of the Opposed Marks will indicate a connection between the Applicant’s goods and the Opponent; and is likely to damage the interests of the Opponent. 
  • 8(7)(a) – the use of the OpposedMarks are liable to be prevented by the law of passing off. 
 
On the issue of similarity of marks, the hearing officer, PAR Loo found that there was conceptual similarity between Valentine’s Secret Mark and the Victoria’s Secret Marks. Both marks evoked the idea of a secret which either belongs to a person or attaches to an event. However, even then, she felt that the relevant customers were not likely to be confused. The substantial business transacted via the Opponent’s mail order business model in early 2000 (when online shopping had not yet caught on) indicates that the Opponent’s customers are sophisticated shoppers who know what they want. These shoppers were probably astute individuals who preferred exclusive and specialized goods available to the exclusive few on the Opponent’s mailing list.
 
As for the VS Mark and Slogan and the VS SPORT Mark, she held that there was no similarity between these marks, and as such, there was no need to consider the remaining requirements of Section 8(2). 
 
For the reasons stated above, the Opponent did not succeed under this 
ground.  
 
As for the Valentine’s Secret Mark, whilst there was no confusion under section 8(2), PAR Loo went on to consider whether the remaining elements under Section 8(4)(b)(i) were established i.e.: –
 
a.that the Opponents’ Victoria’s Secret Mark is well known in Singapore, 
b.that the Applicants’ use of the Valentine’s Secret Mark in relation to Class 25 goods would indicate a connection between the Applicants’ products and the Opponent; and    
c. is likely to damage the interests of the Opponent.
 
Although the Opponent did not have a physical shop front in Singapore, PAR Loo was impressed by the Opponent’s volume and amount of sales in Singapore and the number of catalogues mailed to Singapore. In light of these figures, PAR Loo found that the Opponent’s Victoria’s Secret Mark was well known in Singapore. 
 
However, as for the third requirement of “connection”, PAR Loo held that this term does not mean a mere connection, but a connection which is likely to give rise to confusion. Under the Section 8(2) ground of opposition, PAR Loo had earlier found that there was no likelihood of confusion in respect of the Valentine’s Secret Mark and the Victoria’s Secret Mark. Applying the same reasoning, PAR Loo concluded that there was no confusing connection between the Applicant’s goods applied with the Valentine’s Secret Mark and the Opponent. Therefore, the Opponent failed under Section 8(4)(b)(i) as well. 
 
It is to be noted that the Opponent did attempt to rely on Section 8(4)(b)(ii) as well. This ground of opposition would have been favourable to the Opponent as it did not require proof of confusion. However, what was required was that the Opponent prove that the Opponent’s Marks were well known to the public at large in Singapore and that the use of the Applicant’s Marks caused dilution or took unfair advantage of the Opponent’s Marks. Given the Opponent’s sales and fame in Singapore, the Opponent would be likely to succeed in proving that its marks were well known to the public at large in Singapore. Unfortunately, such evidence was not included in the Opponent’s evidence, and the Opponent did not succeed under Section 8(4)(b)(ii). 
 
Under the third ground of opposition, the Opponent had to prove that the use of the Opposed Marks was liable to be prevented by the law of passing off. The three elements in the test for passing off are: goodwill, misrepresentation and damage. 
 
The Opponent was not able to prove that it had goodwill in Singapore. Since the Opponent had no physical presence in Singapore, and the Opponent operated on a mail-order business model, PAR Loo held that there was no goodwill in the “VICTORIA’S SECRET” mark in Singapore. 
 
For this reason, the Opponent’s ground of opposition under Section 8(7) failed. 
 
As the Opponent failed on all its grounds of opposition, PAR Loo allowed the Applicant’s Marks to proceed to registration.  
 
To this end, this author wonders if PAR Loo applied an unduly restrictive approach to determine whether the Opponent had goodwill in Singapore. Given the roliferation of e-commerce, physical shopfronts are no longer necessary to draw in customers. This decision reinforces the existing judicial authorities in Singapore which have held that where a mark is only well known in Singapore (as opposed to well known 
to the public at large), it would still be necessary to establish confusion as an element of the opposition under the relevant provision (i.e. section 8(4)(b)(i).

 

 
For further information, please contact:
 
Deryne Sim, ATMD Bird & Bird

 

 

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