Court of Appeal upholds decision to invalidate MANCHESTER cigarette mark
In Global Tobacco Manufacturers (International) Sdn Bhd v Al Mahamid ( SGCA 51), the Court of Appeal has issued a short judgment dismissing the appeal against the order of the High Court to invalidate the figurative mark MANCHESTER (depicted below on the left), of which the appellant was the registered proprietor, upon the application of the respondent, who was the registered proprietor of the figurative mark MANCHESTER (depicted below on the right).
Both the appellant's mark and the respondent's mark were registered in respect of Class 34 goods, comprising cigarettes and related products. At the High Court, the judge found that both marks were visually, aurally and conceptually similar, and had been applied in respect of identical goods. On the issue of likelihood of confusion, the judge held that the relevant consumer of cigarettes would be confused, since the two marks covered identical goods, and there was a high degree of similarity between the marks.
At the Court of Appeal, it was clear that the case turned on the question of likelihood of confusion. In this regard, the court made two observations. Firstly, the greater the degree of similarity between the goods and the marks, the more readily a likelihood of confusion will be found. Secondly, evidence of actual confusion is not necessary, but is helpful to the action.
The appellant argued that, since the respondent was seeking to invalidate a mark that had been duly registered, it bore the burden of showing to a convincing degree the likelihood of confusion. In doing so, the appellant relied on the fact that the respondent had not provided evidence of actual confusion in the proceedings below.
The court reiterated that evidence of actual confusion is not a necessary element of the cause of action. On the facts, the court was satisfied that there was sufficient material on which the High Court judge could fairly infer the existence of a sufficient likelihood of confusion. Accordingly, it dismissed the appeal.
After noting that no local decision had addressed this issue, the question of the approach to be taken in respect of the burden of proof in invalidation proceedings was left open by the court. It remains to be seen whether an applicant in an invalidation action would be held to a higher standard than an opponent in opposition proceedings.
Angeline Lee, Baker & McKenzie. Wong & Leow, Singapore
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