Lower degree of protection for trademarks consisting of common names

Singapore

In Taylor, Fladgate & Yeatman Limited v Taylors Wines Pty Ltd ([2014] SGIPOS 11), the Intellectual Property Office of Singapore has dismissed an opposition against the registration of two marks including the name Taylor. 

The applicant had filed applications for the word mark TAYLORS WAKEFIELD and the stylised version of the mark, as follows, for wines in Class 33 of the Nice Classification:

The applications were opposed by Taylor, Fladgate & Yeatman, which owns a trademark registration for TAYLOR'S in Class 33 for wines. The opponent claimed, among other things, that the marks applied for were confusingly similar to its registered trademark and should be denied registration under Section 8(2)(b) of the Trademarks Act.

In assessing the similarities between the marks applied for and the opponent's trademark, the assistant registrar noted that the distinctiveness of earlier registered trademarks plays a significant role in the Singapore court's decisions as to whether competing marks are eventually found to be similar. The more fancy or arbitrary a mark, the greater the scope of protection it will receive, in the sense that the defendant would have to demonstrate to a more compelling degree that its mark or sign is dissimilar from, and thus does not infringe, a registered trademark.

The assistant registrar further noted, in the context of the usage of names as trademarks, that a more common name should be given greater latitude in its use. Therefore, the applicant of a later trademark has a lower threshold to cross in proving the dissimilarity of its mark to earlier registered marks if its mark encompasses a common name which intrinsically has a low level of distinctiveness.

On the facts, the assistant registrar opined that the name Taylor is a personal name that is not uncommonly used in Singapore. As it has been used as the trading name of a number of live business entities in Singapore, the assistant registrar did not find the opponent's trademark to be particularly distinctive. It was also not shown that the mark had acquired factual distinctiveness. In particular, the opponent had not indicated in its statutory declaration whether its mark had been used on the goods sold, even though the sales invoices submitted indicated that the goods sold were "Taylor's".

The registrar was also of the view that a document referring to the export of "Taylor's port wine" to Singapore did not indicate whether this referred to the opponent's mark, nor did it indicate sales in Singapore. Therefore, the applicant did not have to demonstrate to a more compelling degree that the marks applied for were dissimilar to the opponent's registered trademark.

On the facts, the assistant registrar found the marks applied for to be visually and aurally dissimilar to the opponent's registered trademark. The conceptual similarities between the marks were also not sufficient to overcome the visual and aural dissimilarities between them. Even though the goods claimed by the marks applied for and the opponent's registered trademark were identical, the average Singaporean wine consumer is reasonably knowledgeable about wines and would consider the label(s) on the relevant bottle(s) before committing to a purchase in a supermarket or restaurant, thus greatly lessening any impact of goods similarity. There would thus be no likelihood of confusion.

This decision reiterates the principle that trademarks consisting of common names and/or words of low distinctiveness are conferred a lower degree of protection, even though they have met the level of inherent distinctiveness required to be registered with the Singapore Registry. Slight differences in a later trademark may be sufficient to render the mark distinguishable.

Angeline Lee, Baker & McKenzie. Wong & Leow LLC, Singapore

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