GLAMOUR mark held not to have acquired distinctiveness through use

In Ozone Community Corp v Advance Magazine Publishers Inc ([2010] SGHC 16, January 15 2010), the High Court of Singapore has allowed an appeal by Ozone Community Corp against the decision of the principal assistant registrar of trademarks ([2009] SGIPOS 4) to refuse Ozone’s application to register the mark HYSTERIC GLAMOUR in Class 16 of the Nice Classification.

Ozone’s application was opposed by Advance Magazine Publishers Inc, the registered proprietor of the GLAMOUR mark in Classes 9, 16, 35, 41 and 42, on the basis of Sections 8(2)(b), 8(3) and 8(4) of the Trademarks Act (Cap 332, 1999 Rev Ed). Advance Magazine’s opposition under Sections 8(3) and 8(4) of the act failed, but its opposition under Section 8(2)(b) succeeded.
Section 8(2)(b) provides as follows:
"8. (2) A trademark shall not be registered if because –
(b) it is similar to an earlier trademark and is to be registered for goods or services identical with, or similar to, those for which the earlier trademark is protected,

there exists a likelihood of confusion on the part of the public."
Ozone appealed to the High Court, which overturned the assistant registrar’s decision with regard to Section 8(2)(b). 
Although the court found that the marks were conceptually similar, it held that there were no visual and aural similarities. In addition, it stated that:

  • conceptual similarity, on its own, would not necessarily render the marks as a whole similar; and
  • “the relative importance of each type of similarity must necessarily vary with the circumstances at hand, in particular the goods and the types of marks compared”. 
The court also held that, in assessing the similarity of marks, the distinctiveness of the registered mark must be evaluated. In the present case, it found that the GLAMOUR mark was not inherently distinctive, and that it had not acquired distinctiveness through use in Singapore.
The court thus held that, under Section 8(2)(b) of the act, Ozone’s HYSTERIC GLAMOUR mark was, on the whole, not similar to Advance Magazine’s GLAMOUR mark. 
In addition, the court stated that, although some of the goods covered by Ozone’s mark (“printed matter”) were similar to Advance Magazine’s goods (magazines, books and publications), Ozone’s other goods (eg, stationery, writing and drawing instruments, and instruction manuals) were dissimilar. Therefore, the goods were similar only to a certain extent.
The court concluded that there was no likelihood of confusion on the part of the public, as the average consumer who would buy both Advance Magazine's and Ozone’s goods would “exercise some care and good sense in making his purchases”, and would have little difficulty understanding that goods bearing the HYSTERIC GLAMOUR mark did not have the same commercial origin as Advance Magazine’s goods. 
Ozone’s HYSTERIC GLAMOUR mark was thus allowed to proceed to registration. The costs of both the appeal and the hearing before the assistant registrar were awarded to Ozone. 
Advance Magazine has appealed the decision.
Paul Teo and Michelle Chiang, Drew & Napier LLC, Singapore

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