LOVE trademark for jewellery held to be invalid
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In 2007 Love & Co Pte Ltd and its related Malaysian company, Love & Co Sdn Bhd, opened jewellery stores in Singapore and Malaysia under the name Love & Co. Subsequently, Love & Co Sdn Bhd received a demand letter from The Carat Club’s Malaysian sister company alleging trademark infringement, among other things. The demand letter was based on The Carat Club’s Malaysian registration for the trademark THE LOVE DIAMOND for goods in Class 14 of the Nice Classification.
After conducting searches on the Singapore Trademark Register, Love & Co sought to:
- invalidate the LOVE mark under Sections 7(1)(a), (b), (c) and (d) of the Singapore Trademarks Act; and/or
- revoke the mark.
Section 7(1) of the act reads as follows:
"The following shall not be registered:(a) signs which do not satisfy the definition of a 'trademark' in Section 2(1);(b) trademarks which are devoid of any distinctive character;(c) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the […] intended purpose […] of goods […] or other characteristics of goods; and(d) trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade."
Section 2(1) defines a 'trademark' as “any sign capable of being represented graphically and which is capable of distinguishing goods […] dealt with or provided in the course of trade”.
The High Court held that the LOVE mark was devoid of distinctive character as 'love' was a simple word with commonly understood meanings. The word 'love' was shown to have been commonly used in the jewellery industry before the date of the application for the registration of the LOVE mark. In light of the common use of the word 'love', the court concluded that the mark could not serve as a trademark without first educating the public that The Carat Club was using it as a badge of origin to distinguish its goods from those of others.
The court also held that the mark had been registered in breach of Section 7(1)(c), as one of the intended purposes of jewellery was to be given as a "gift of love". The trademark LOVE thus designated one of the intended purposes of the goods.
In addition, The Carat Club was unable to avail itself of Section 23(2) of the act, which provides that a mark that has been registered in breach of Section 7 will not be declared invalid if it has acquired distinctiveness through use. The Carat Club’s evidence only showed use of the figurative marks LOVE DIAMOND and LOVE (in which the letter 'O' had been replaced by the image of a diamond). There was no evidence of use of the word mark LOVE alone.
For similar reasons, the court ordered the revocation of the mark on grounds of non-use. The court held that use of the figurative mark LOVE did not amount to use of the word mark LOVE. The court concluded that the figurative LOVE mark was more attractive and eye-catching than the word mark and had substantially altered the latter’s distinctive character.
Paul Teo and Eileen Chong, Drew & Napier LLC, Singapore
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