JWEST opposition upheld on bad faith grounds only

The High Court of Singapore has overturned in part a decision of the principal assistant registrar in relation to an opposition against the registration of the mark JWEST (Case [2006] SGHC 239, December 27 2006).

Nautical Concept Pte Ltd applied to register the mark for clothing, footwear and headgear in Class 25 of the Nice Classification. Mark Richard Jeffery and Guy Anthony (the opponents) opposed the application on the basis of their mark JEFFERY-WEST also registered for goods in Class 25.

One of the main grounds of opposition was that Nautical Concept Pte Ltd applied to register the mark JWEST in bad faith. This stemmed from the fact that Nautical had past dealings with the opponents by virtue of having sold and/or distributed the opponents' shoes in Singapore. The opponents felt that Nautical had "copied the essential or prominent features of their mark". Nautical, on the other hand, argued that the mark JWEST was invented on the basis of its purported significance in relation to, among other things, the faith, family, business aspirations and place of residence of its managing director (who also set up the company).

Nautical further argued that it had applied to register the mark JWEST after discovering that the opponents had not filed for the mark JW or JEFFERY-WEST in Singapore. Nautical claimed that it thought the opponents were no longer in business. This argument was rejected by the registrar who explained that all Nautical had to do was make a call or send an email to the opponents confirming whether they had indeed gone out of business and to seek their consent to use the mark JWEST in Singapore.

In deciding whether there was bad faith, the registrar applied the test of "the honest reasonable man". She felt that an honest reasonable man would have asked for the opponents' consent to use the mark JWEST, which would have showed that Nautical acted in good faith. Nautical's argument that the marks were not confusingly similar, and hence there could be no misappropriation of the mark, did not carry much weight with the registrar having regard to the past dealings between the parties and Nautical's knowledge of the opponents' mark.

The registrar also rejected Nautical's various explanations on the derivation of the mark JWEST and the reasons given for not having applied to register the mark much earlier than the opponents when it could have done so, especially since the mark JWEST apparently meant so much to the managing director.

The opponents also argued that the respective marks JEFFERY-WEST and JWEST (the latter appearing to be an abbreviation of the former) were confusingly similar. Further, the goods claimed in both applications were very similar, namely shoes/footwear. In its defence, Nautical claimed that as it was selling only women's shoes, unlike the opponents, who were selling only men's shoes (a claim which was denied by the opponents), there was unlikely to be confusion in the marketplace.

Nonetheless, the registrar's overall assessment was that the marks were visually, phonetically and conceptually more similar than dissimilar, and it did not matter that the parties were selling shoes to different markets as both of their applications covered men's and women's footwear. Taking into account the Singaporean customer and the fact that the marks and goods were similar, the registrar concluded that, if the opposed mark did proceed to registration, it was likely that the relevant shoe consumers would be confused.

Nautical appealed to the High Court against the registrar's decision.

On the issue of bad faith, the court agreed with the registrar's finding for the following reasons:

• Nautical had a long list of dealings with the opponents and their goods, and when the business relationship between the parties ended, Nautical attempted to file the marks JEFFERY-WEST and JW in Singapore, without the opponents' consent.
  
  
• The attempt to register JWEST may be regarded as another instance of Nautical's "unacceptable business tactics", even though it is noted that the term 'West' is commonly used in the shoe industry.
  
  
• Nautical's reasons for choosing the mark JWEST were too far-fetched to be believed. The court felt that Nautical "tried to distance itself from truth" and that its choice of the mark JWEST was nonetheless linked to JEFFERY-WEST.
  
  
• Nautical's claim that it had created the mark JWEST as early as 1997 did not explain why it had not applied to register that mark earlier, for example, in 1999 and 2000 when it applied to register a number of other marks.
  
  
• Overall, Nautical's actions were not of the standards of "acceptable commercial behaviour observed by reasonable and experienced men".

Turning to the issue of a likelihood of confusion, the court first agreed with the registrar that the mark JWEST is "visually different" from JEFFERY-WEST. However, it disagreed with the registrar in respect of the aural similarity of the two marks. In this regard, the court found that the marks were not confusingly similar to each other and there was no credible evidence to show otherwise.

It went on to add that the average Singaporean was not likely to be confused between the two marks as there were enough differences between JEFFERY-WEST and JWEST, including the price of the respective shoes, which are sold through separate channels.

Accordingly, the court overturned the registrar's finding on this issue.

At the time of writing, no further appeal had been filed by either party.

Kevin Wong and Kiran Dharsan, Ella Cheong Spruson & Ferguson (Singapore), Singapore