Confusion likely between CAREFREE and CAREREE marks

In Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corporation), the Singapore High Court has overturned an earlier decision and has allowed Johnson & Johnson's (J&J) opposition against the registration of the mark CAREREE for incontinence products.

J&J is the owner of the prior registered trademark CAREFREE in Singapore and several other countries for "catamenial products, sanitary tampons, napkins and napkin belts for hygiene". In January 2000 Uni-Charm Kabushiki Kaisha (Uni-Charm) applied to register in Singapore the mark CAREREE for "napkins and pads for wear by person prone to incontinence". The application was accepted and advertised in the Trademarks Journal in April 2002. In August 2002 J&J opposed the application on the basis of Sections 8(2)(b) and 8(4)(a) of the Trademarks Act 1998. The registry dismissed the opposition.

J&J appealed to the High Court, which overturned the earlier decision. With respect to Section 8(2)(b), the court held that J&J's registered mark CAREFREE and Uni-Charm's CAREREE mark were visually, aurally and conceptually similar.

Visually, the court found that only a missing 'f' distinguished one mark from the other. The court found it pertinent that, in multilingual Singapore, it is assumed as a general rule that non-English-speaking audiences pay more attention to visual as opposed to verbal or textual references. The two marks were also held to be aurally similar bearing in mind that "there was a tendency for English speakers to slur the termination of words". In finding the marks conceptually similar, the court held that there was no rule that an invented word (in this case, 'Careree') was necessarily conceptually different from an earlier mark that was an ordinary English word.

With respect to the similarity of the goods, the court held that the specifications of goods under CAREFREE were similar to those under CAREREE since both sets were used for the purposes of hygiene.

The court was of the view that the public was likely to be confused if the respective goods were sold under the CAREFREE and CAREREE marks because of the similarity of the marks and the goods.

Under Section 8(4)(a), the court found that there would be passing off if Uni-Charm's CAREREE products were sold in the marketplace. The court held that J&J's CAREFREE mark had acquired goodwill by reason of J&J's extensive sales and advertising. In view of the similarity of the marks and goods, the court concluded that there would be a misrepresentation among the public, and J&J would inevitably suffer loss since some trade and profit would be diverted to Uni-Charm.

Dedar Singh Gill and Paul Teo, Drew & Napier LLC, Singapore