MediaCorp fails to prevent registration of red 'A' logo on appeal

Singapore
In MediaCorp News Pte Ltd v Astro All Asia Networks PLC, the High Court of Singapore has dismissed MediaCorp News Pte Ltd’s appeal against a decision of the principal assistant registrar in which the latter had dismissed MediaCorp's opposition against the registration of Astro All Asia Networks PLC's logo.
 
MediaCorp has owned an English news channel in Singapore since 1999. In 2000 MediaCorp launched Channel News Asia. It registered the mark CHANNEL NEWS ASIA (and red 'A' design) for services in Classes 35, 36, 38, 41 and 42 of the Nice Classification in Singapore, as well as in many Asian countries, the United States and the United Kingdom.
 
Astro provides direct-to-home satellite television services in Malaysia and Brunei, and also manages a considerable number of radio stations in Malaysia. It has been listed in the Malaysian Stock Exchange since 2003 and owns registrations for the mark ASTRO ALL ASIA NETWORKS PLC (and red 'A' design) in Malaysia, Brunei, Indonesia and the United Kingdom.
 
In 2003 Astro applied to register its mark in Singapore for goods and services in Classes 16, 25, 35, 36, 38 and 41.
 
In June 2004 MediaCorp opposed the registration of Astro’s mark in Classes 16 and 35 on the grounds that:
  • it was confusingly similar to MediaCorp’s CHANNEL NEWS ASIA mark; and/or
  • MediaCorp’s mark was well known in Singapore.
The principal assistant registrar dismissed the opposition. The registrar considered that there was no likelihood of confusion between the marks, even though they were visually and conceptually similar. According to the registrar, the fact that the CHANNEL NEWS ASIA mark was generally used in conjunction with the terms 'MediaCorp news' or 'MediaCorp' reduced the similarity between the marks. Therefore, the average consumer would not be confused into thinking that goods and/or services covered by the marks emanated from the same source. The opposition was dismissed and Astro’s application was allowed to proceed to registration.
 
MediaCorp appealed, arguing that the registrar had:
  • erred in finding that there was no likelihood of confusion between the marks; and
  • misapplied the law governing the well-known status of the CHANNEL NEWS ASIA mark in Singapore.
The appeal concerned the services in Class 35, and was based on Section 8(2)(b) (likelihood of confusion) and 8(3) (protection of well-known marks) of the Trademarks Act.
 
With regard to the Section 8(2)(b) claim, the High Court had to decide whether:
  • Astro’s mark was similar to MediaCorp’s;
  • Astro’s Class 35 services were similar to those covered by MediaCorp’s mark;
  • there was a likelihood of confusion on the part of the relevant public.
The court found that both marks incorporated a red triangle or 'A' device placed above a word element. The court acknowledged that the main difference between the marks is the "blue and yellow swirls" in Astro’s mark and the "hook" in MediaCorp’s mark. However, a consumer with imperfect recollection was unlikely to remember those differences. The court thus concluded that the marks were similar.
 
The court also found that the services covered by both marks in Class 35 were similar.
 
Turning to the likelihood of confusion between the marks, the court took the perspective of "ordinary, sensible members of the public" - as opposed to the general public - and considered whether they would be confused as to the origin of the goods. The court held that the relevant public was able to choose carefully between service providers offering a similar range of services. Therefore, the court found that there was no likelihood of confusion among the relevant public. The grounds of opposition under Section 8(2)(b) thus failed. 
 
With regard to Section 8(3) of the act, the court overturned the registrar’s finding and held that MediaCorp’s mark is well known in Singapore. However, because there was no likelihood of confusion between the marks, this grounds of opposition also failed.
 
The decision seems to confirm that even where the marks and the goods/services are similar, this will not necessarily lead to the conclusion that there is a likelihood of confusion. This reiterates the principles set forth under Section 8(2)(b) of the act that a third element - namely, whether the average consumer in the relevant sector of the public is likely to be confused - must also be satisfied.
 
Kevin Wong and Mary Thomas, Ella Cheong Spruson & Ferguson, Singapore

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