MADE IN SINGAPORE AUTHENTIC ASIAN CUISINE is not distinctive
The Administrative Court has refused to register the service mark MADE IN SINGAPORE AUTHENTIC ASIAN CUISINE for restaurant services in Class 43 of the Nice Classification on the grounds that it was descriptive and lacked distinctiveness (Resolution 1454-2007/TPI-INDECOPI, August 26 2007).
Millenium & Copthorne International Limited (Singapore) applied for the registration of the service mark MADE IN SINGAPORE AUTHENTIC ASIAN CUISINE (and design) in October 2006.
The Trademark Office refused to register the mark on the following grounds:
- The mark is a descriptive designation that refers to the geographical origin of the services;
- The words that make up the mark come from the English language and will be understood by the users of the services in question; and
- Even though the mark includes a particular combination of colours and a specific letter type, it is incapable of distinguishing the services in question from identical or similar services on the market.
On appeal, Millenium submitted the following arguments:
- Even though the designation MADE IN SINGAPORE AUTHENTIC ASIAN CUISINE itself is descriptive, the mark applied for contains other elements (eg, particular characters and colour);
- As the phrase 'made in Singapore authentic Asian cuisine' is in a foreign language, it must be considered as a 'fantasy' sign;
- The mark does not directly describe the characteristics of the services in question, as consumers will not believe that such services originate from Singapore; and
- The mark is registered in several other jurisdictions, including Argentina, Brazil, Chile, Colombia, France, Spain and Oman.
The Administrative Court upheld the resolution of the Trademark Office. The court indicated that, in principle, it is possible to grant an exclusive right over a geographical name; the court must evaluate whether the geographical origin is typical of the products or services at issue and whether use of the mark would cause confusion among consumers. In this case, the court found that the word 'Singapore' is understood by consumers as the name of a particular country. Although the phrase 'made in Singapore' is in English, it will be understood as designating the geographical origin of the products. Therefore, the phrase is descriptive of the services in question. Moreover, the phrase 'authentic Asian cuisine' contributes to reinforce the descriptiveness of the mark.
Consequently, the court found that the mark MADE IN SINGAPORE AUTHENTIC ASIAN CUISINE could not be registered pursuant to Articles 135(b) and (e) of Andean Community Decision 486 on a Common Industrial Property Regime.
Gonzalo Ferrero, Lema Solari & Santiváñez, Lima
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