In Mobil Petroleum Company Inc v Hyundai Mobis ( SGHC 104, June 30 2008), the Singapore High Court has affirmed a decision of the principal assistant registrar of the Intellectual Property Office of Singapore in which the latter had dismissed Mobil Petroleum Company Inc’s opposition to the application for the registration of the mark MOBIS.
South Korean automotive parts company Hyundai Mobis
applied to register the mark MOBIS in Singapore for the following goods in Class 12 of the Nice Classification
“automobile apparatus and equipment, automobile mechanisms, engines, automobile bodies, sections, devices including safety and anti-theft devices, automobile component segments, parts, fittings and accessories for automobiles.”
“industrial oils and greases (other than edible oils and fats and essential oils); lubricants, dust laying and absorbing compositions, fuels (including motor spirit) and illuminants; candles, tapers, night-lights and wicks.”
The MOBIL mark is listed as one of the world’s 100 top brands. However, Mobil unsuccessfully opposed the application for the registration of MOBIS before the Intellectual Property Office. It appealed to the High Court on the following grounds under the Singapore Trademarks Act
- Section 8(2) - the marks MOBIS and MOBIL are similar and cover similar goods, resulting in a likelihood of confusion;
- Section 8(3) - MOBIL is a well-known trademark and use of the MOBIS mark would indicate a connection between the respective goods;
- Section 8(4) - the registration of MOBIS was liable to be prevented by the law of passing off; and
- Section 7(6) - the registration was made in bad faith.
First, Mobil argued that the marks MOBIL and MOBIS were similar, and that the goods Hyundai Mobis sought to protect under the MOBIS mark in Class 12 were similar to the goods covered by the MOBIL mark in Class 4. The court considered the manner in which the marks MOBIL and MOBIS were represented graphically, together with the dissimilarities in font, capitalization and colours. The court accepted the finding of the registrar that although the marks were aurally and visually similar, they were conceptually dissimilar. The court further agreed that the relevant goods were not physically similar in nature, because they were different in physical terms and type of application.
The opposition failed under Section 8(2) of the act. The question was whether consumers would consider the goods to be similar. In this instance, the court took the view that consumers would not perceive the goods (oil lubricants and fuels on the one hand, and automotive parts and equipment on the other) to be similar, and therefore came to the conclusion that the goods were not similar. Mobil's argument that the respective goods were similar because they were ultimately for the purposes of maintenance and servicing of automobiles was dismissed because it would encompass too broad a range of goods. Having held that the marks were conceptually distinct and that the goods were dissimilar, the court agreed with Hyundai Mobis that it was not necessary to consider the issue of likelihood of confusion.
Under Section 8(3) of the act, a trademark application filed before July 1 2004 (as was the case here) shall not be registered if it is similar to an earlier trademark, provided that:
- the earlier mark is well known in Singapore;
- use of the later trademark in relation to the goods for which the later trademark is sought to be registered would indicate a connection between those goods and the proprietor of the earlier mark;
- there is a likelihood of confusion on the part of the public because of such use; and
- the interests of the proprietor of the earlier mark are likely to be damaged by such use.
The court accepted that the MOBIL mark is a well-known trademark. Therefore, the issue was whether use of the MOBIS mark in relation to the goods in question would indicate a connection between such goods and Mobil. The court accepted that the term ‘connection’ was to be construed widely, but emphasized that the determination of connection had to be made by reference to, and after a juxtaposition of, the similarities of the marks. Where two marks are visually very close, the likelihood of connection and confusion are higher. The court agreed with the registrar that use of the MOBIS mark would not indicate a connection between the goods at issue and Mobil, because the resemblance between the marks was limited by the differences in their font, capitalization and colours.
The opposition under Section 8(3) of the act therefore failed as the requirement of a connection was not established. The court did not find it necessary to determine whether the other factors under Section 8(3) had been established. However, it proceeded to provide its views on a working test for establishing a likelihood of confusion. In this regard, it held that the question of a likelihood of confusion was to be measured against whether a substantial portion of the relevant public would be confused. This means that, in every case, the segment of the public which is in the market for the goods in question would be the point of reference.
Similarly, Mobil’s opposition under Section 8(4) of the act (which provides that a trademark shall not be registered if its use in Singapore is liable to be prevented by virtue of the law of passing off) was unsuccessful, as the court had already decided that there was a limited degree of resemblance between the marks, and no connection between the goods covered by the MOBIS mark and Mobil. There was thus no basis on which the court could establish an actionable misrepresentation.
Mobil’s opposition under Section 7(6) of the act was also unsuccessful. The court held that the burden lay on Mobil to prove that the application was made in bad faith, and Mobil had not adduced further evidence to substantiate its allegation. The two marks were not so close as to lead to an inference of bad faith. The court accepted Hyundai Mobis’s explanation as to how the MOBIS mark came to be derived. In the absence of contrary evidence, the court was not prepared to make a finding of bad faith.
The case demonstrates the importance of the similarity of the goods in trademark oppositions. The finding that the goods were not similar was decisive for the court in deciding that Mobil had not made out the grounds of opposition. Mobil has appealed against the decision of the High Court on the grounds that the opposition should have succeeded under Section 8(3) of the act.
John Lim, Alban Tay Mahtani & De Silva, Singapore