ESPRIT opposition highlights persuasiveness of EU law in Singapore

The Singapore registrar of trademarks has upheld Esprit International's opposition to the registration of two SPA ESPRIT marks and a SPA ESPRIT WHERE MIND IS BODY mark (Registrations T00/07987 and T00/07988, January 22 2005).

Esprit International, the owner of the ESPRIT mark for, among other things, clothes, accessories and health and beauty spa services, opposed Singapore company Spa Esprit's (Spa) application to register the three marks for "health care; massage; baths (Turkish); beauty salons (beauty)".

Interestingly, the registrar applied the test for confusing similarity set out in the European Court of Justice (ECJ) cases of SABEL BV v Puma AG, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc and Lloyd Schuhfabrik Meyer GmbH v Klijsen Handel BV, and upheld Esprit International's opposition. The registrar held that confusion was likely because Spa's marks were similar to the ESPRIT mark and covered similar services. Further, the registrar considered that the placement of the words WHERE MIND IS BODY in a smaller size below SPA ESPRIT meant that they would "not be perceived as a distinctive and dominant component of the mark" and hence did not add sufficient distinctive character to the mark.

Spa argued that it had made honest concurrent use of the marks, however, the registrar found that since Esprit International had not used its mark in relation to the specific services the question to ask was: "what would happen if [Esprit International] use[s] [its] mark for which [it has] already secured registration?" The registrar accordingly assessed the likelihood of confusion on the assumption that the earlier registered trademark was used in a normal and fair manner in relation to the goods for which it was registered.

Spa also maintained that it had prior rights on the basis that it was first to use the marks for the services covered by the application. The registrar was not swayed and stated that Spa should have either (i) opposed Esprit International's application for the ESPRIT mark at the time of registration, or (ii) applied for the registration of its marks when it first used them so as to be earlier in time than Esprit International.

The decision is of particular importance because the registrar expressed that decisions of the ECJ are persuasive in Singapore, in effect on a par with cases from the courts of England and Wales.

Significantly for Esprit International, the registrar also found that the ESPRIT mark is well known in Singapore.

Cindy Quek and Peter Lo, Shook Lin & Bok, Singapore