LOLANE is not confusingly similar to ORLANE
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The registrar of trademarks has dismissed an opposition filed by Orlane SA, the owner of the trademark ORLANE for cosmetic products, against the application to register the mark LOLANE.
Seri Somboonsakdikul sought to register the mark LOLANE for various cosmetic products (Application T03/19458G). Orlane opposed the application under Sections 8(2)(b), 8(3) and 7(6) of the Trademarks Act.
Section 8(2)(b) reads as follows:
“a trademark shall not be registered if, because 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."
Under Section 8(3), a trademark will not be registered if it is identical with or similar to a well-known earlier mark, and use of the later mark would indicate a connection between both proprietors and damage the interests of the proprietor of the earlier mark.
Section 7(6) provides that “a trademark shall not be registered if or to the extent that the application is made in bad faith”.
In considering the objection under Section 8(2)(b), the registrar found that it was undisputed that the goods covered by both marks overlap. Therefore, the main factor under consideration was whether the marks were similar. The registrar found that marks should be compared as a whole and not dissected into parts, with consideration of visual and aural similarities.
In considering the visual similarity between the marks, the registrar found that the marks were only slightly similar. However, the registrar placed greater emphasis on the aural similarity between the marks. He had serious doubts as to the persuasiveness of the decision in London Lubricants (1920) Ltd’s Application ((1925) 42 RPC 264), in which it was held that persons using the English language had the tendency to slur the termination of words. The registrar disregarded the decision on the basis that it was decided in the 1920s and that “we are now in the 21st century, where those circumstances and surroundings have changed”.
On the basis of these comments, the registrar considered himself “freed from the shackles” of the London Lubricants Case, and no mention was made of the subsequent cases which followed the principle established in London Lubricants. Arguably, a departure from this well-established principle of comparison of marks would deserve a closer review of the authorities that have been established since the 1920s. Moreover, questions may be asked as to whether the speech patterns of consumers have changed so much over the years.
The registrar went on to find that the first syllables of both marks were sufficiently different to serve as a distinguishing factor. Because words are pronounced from left to right, the distinctive element was thus pronounced first. As a consequence, the registrar dismissed the opposition under Section 8(2) on the grounds that the marks were not similar.
The registrar then turned to the issue of likelihood of confusion. He made a finding of fact that the general public will be slightly more observant when buying beauty and cosmetic products, as "buying the wrong product would have significant direct consequences that may severely impact one’s appearance". The registrar also found that the goods covered by both marks were "self-serve goods, with the consumer coming into direct contact with the goods", such that the marks can be viewed at close range.
In considering the grounds under Section 8(3), the registrar found that there was insufficient evidence to show that the ORLANE mark is well-known and dismissed this claim accordingly. In doing so, the registrar held that evidence of extensive and substantial use was required to establish that a mark is well known, citing the E! Entertainment and MOBIS decisions of the registry.
Finally, the registrar dismissed the opposition under Section 7(6), as there was no evidence to support an allegation of bad faith. There is a growing body of decisions by the Intellectual Property Office of Singapore showing that:
- the office will not simply infer bad faith from the mere presence of similarities between the marks; and
- a party must take further steps to establish bad faith.
Jim Lim and Peter Lo, Stamford Law Corporation, Singapore
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