IPOS decision provides guidance on how to establish well-known status
In Formula One Licensing BV v Idea Marketing SA, the Intellectual Property Office of Singapore (IPOS) has held that F1 was not a well-known mark for motor racing in Singapore as of January 11 2007. The global promoter for the F1 Powerboat World Championship, Idea Marketing SA, has thus successfully retained its rights to the F1H2O mark in all the jurisdictions where a dispute with the trademark managers of the Federation Internationale de l'Automobile Formula One World Championship, Formula One Licensing BV, has taken place - except the Russian Federation where the decision is pending.
IPOS found that F1 was used as a descriptive term for a particular class or standard of sport in both motor racing and powerboat racing, and was not distinctive of Formula One Licensing's motor racing.
The decision turned in part on whether the F1 word mark, which Formula One Licensing relied on for confusion, and which was unregistered at the priority date of Idea Marketing's application, was well known in Singapore at that time.
IPOS held that the most crucial factor in determining whether a trademark is well known is whether the mark is "well known to the relevant sector of the public in Singapore". Other factors would be disregarded if this threshold requirement is met.
The following guidance was laid down in the decision regarding the evidence of use to be submitted to prove well-known status:
- Evidence of use which post-dates the priority date (if any) or application date is irrelevant.
- It must be shown clearly that it is the opponent that uses the mark if there is use by the group of companies to which the opponent belongs, or if the mark is licensed.
- The 'relevant sector of the public' should be appropriately defined, bearing in mind the available evidence of use to support recognition by such sector of the public. In some cases, recognition by a smaller group of persons may be easier to establish by evidence.
- General and unsubstantiated claims such as 'global' or 'worldwide' use, without particulars as to the specific countries in which use occurred, or without showing how those activities contributed to the mark being well known in Singapore, or without specific figures (eg, circulation, sales, number of Singapore customers and documentary evidence showing licences) are not helpful.
- Registrations of marks obtained worldwide and the duration of those registrations without any evidence of use or recognition of such marks in Singapore do not assist in proving that a mark is well known.
- Surveys carried out in countries outside Singapore which may show an outstanding level of consumer awareness and a high reputation are irrelevant if they concern an entirely different audience that has no connection to the relevant sector of the public in Singapore, unless there is evidence of a connection between those surveyed and Singaporeans.
- Publications or articles are merely hearsay statements of the author's opinion if they are not supported by documentary evidence which establishes the facts to which they refer.
IPOS' decision reiterates that providing specific evidence is crucial to proving the well-known status of a mark successfully. Mere general assertions of use or fame are of no value.
Angeline Lee, Baker & McKenzie.Wong & Leow, Singapore
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