Owner of ANGRY BIRDS fails to prevent registration of ANGRY BITE for Class 30 goods

In Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd ([2015] SGHC 216), Rovio Entertainment Ltd appealed the registrar’s decision to refuse its opposition against Kimanis Food Industries Sdn Bhd’s trademark application (T1204840G) for the figurative mark ANGRY BITE (depicted below) in respect of “flour-based savoury snacks; food products containing (principally) flour; cereal-based snack food; snack food products made from maize flour; snack food products made from potato flour; snack food products made from rice flour; snack food products made from soya flour; rice-based snack foods; flour confectionary; sesame snacks” in Class 30 of the Nice Classification.

The opponent relied on the following marks:

• T1111886Z (registered in numerous classes including Class 30) (the 'red bird mark'):
  
• T1113897F ANGRY BIRDS (the 'ANGRY BIRDS word mark').

It also asserted that it owned copyright in the sign below (the 'fancy word mark'), which had been registered for copyright in the United States and China:

The registrar dismissed Rovio’s opposition, holding as follows:

1. Under Section 8(2)(b) of the Trademarks Act, the marks as a whole were more dissimilar than similar and there was no likelihood of confusion.

2. Under Section 8(4) of the act, while the opponent's marks are well known to the public (but not to the public at large), they were not similar or identical to the ANGRY BITE mark and the applicant’s use of its mark would not indicate a connection between its goods and the opponent.

3. Under Section 8(7)(a), there was insufficient evidence to demonstrate goodwill in the opponent's marks, and there was no misrepresentation.

4. In relation to Section 8(7)(b), there was no copyright infringement because there was no proof that the opponent’s marks were original creations and there was no proof of copying.

The first ground of appeal was Section 8(2)(b) of the Trademarks Act. Section 8(2)(b) required the court to find that (a) the marks are similar; (b) the goods are identical or similar; and (c) as a result of (a) and (b) there existed a likelihood of confusion.

For the comparison of the marks, the issue was whether the opponent's marks may be combined to form a composite mark to be compared to the ANGRY BITE mark, or whether the red bird mark and the ANGRY BIRDS word mark had to be compared separately to the ANGRY BITE mark. The judge, having examined previous case law, noted that there had been no direct local authority on whether two earlier registered trademarks may be combined into a composite whole for the purposes of comparing marks. In the United Kingdom, it was suggested that any such combination was likely to be disallowed (see Infamous Nut).

The judge noted that the plain reading of Section (2)(b) of the Trademarks Act suggests that an “earlier trademark” must refer to a single trademark. Even on a purposive interpretation based on the statutory purposes behind trademark protection, he rejected the opponent’s argument that it was impractical or untenable to expect trademark proprietors to register each combination of their marks. Rather, the reverse was held to be true - ie, that certainty as to what is protected by registration is important, since registered trademark rights are personal property enforceable in rem which confer rights both to oppose other trademarks and to bring actions for trademark infringement where there is strict liability. Therefore, it was held that a key objective of the trademark registration system is to give a fair warning to other businesses and the public generally, who are entitled to know with objective certainty the marks that are protected by registration. Considerable uncertainty would be created if protection were conferred to a composite of two separate registered marks which are used together in practice. Accordingly, it was held that two separate trademarks cannot be combined to form a single composite mark for the purposes of mark comparison.

It was emphasised that the court, in the comparison of the marks, is entitled to take into account the 'dominant' components or features of the opponent’s mark. Accordingly, where the opponent mark has a feature that is clearly dominant, the fact that this feature is also found in the applicant's mark may lead to a finding of similarity even if some other features are different or absent.

The court first compared the red bird mark and the ANGRY BITE mark:

 v

On visual similarity, the registrar had held that the only possible similarity was the eyes and eyebrows of the red bird, and that the marks were visually dissimilar on the whole. The court affirmed the registrar’s holding and agreed that she had given due weight to the fact that the eyes and eyebrows may be considered as the dominant components of both marks; nevertheless, the marks should still be assessed as a whole. The court also noted the differences in the actual depiction of the eyes and eyebrows in the marks.

On conceptual similarity, the registrar had found that the marks were dissimilar: it was found that the red bird mark conveyed the image of a bird with angry eyes, while the ANGRY BITE mark conveyed the idea of a creature biting angrily; therefore, the only common element was the emotion of anger. The court found that the ANGRY BITE mark did not convey the impression or idea of a bird and, therefore, affirmed the registrar’s conclusion that there was no conceptual similarity.

Overall, the judge affirmed the registrar’s holding that there was no visual, aural or conceptual similarity.

The court then compared the ANGRY BITE mark and the ANGRY BIRD word mark. The judge affirmed the registrar’s finding that the pictorial elements of the ANGRY BITE mark created visual dissimilarity from the ANGRY BIRD word mark, and upheld her finding that the marks were visually dissimilar. On aural similarity, the judge agreed that there was some aural similarity since the 'angry' components in both marks were aurally identical, although 'bird' and 'bite' were dissimilar to some extent. On conceptual similarity, the judge repeated his earlier findings.

In conclusion, the judge agreed with the registrar that the marks were dissimilar on the whole. He also held that the similarity of marks is to be assessed objectively, as a matter of impression for the judge who must put himself in the position of a reasonable or notional average consumer. However, for the comparison of marks, the characteristics and perceptions of the actual consumers of the products should not be considered.

The court then turned to the likelihood of confusion. At this stage, the court considers the effect of the objective similarity between the marks on the perception of consumers. Four issues were raised.

The first issue was whether extraneous factors such as the colour of the applicant’s packaging and the catapult on the applicant’s crisp pack should be taken into account. It was previously held by the Court of Appeal in Staywell v Starwood that “factors which are not inherent in the goods, but are susceptible to changes that can be made by a trader from time to time, should not be permissible considerations” and that it was “unnecessary, unworkable and impermissible for the court to have regard to such issues as pricing differentials, packaging and other superficial marketing choices which could possibly be made by the trader”.

The opponent sought to argue that the above applied only where the applicant sought to distinguish or differentiate its goods, which were otherwise confusingly similar, but did not preclude an opponent from using extraneous factors to show an enhanced likelihood of confusion. The court rejected this argument and held that the Court of Appeal in Staywell did not intend for its remarks on impermissible extraneous factors to be applicable only to negating a likelihood of confusion, but also to enhancing a likelihood of confusion. Further, it was reiterated that registered trademarks gave owners proprietary rights over trademarks only and did not confer on them rights over certain types of packaging or marketing techniques. Therefore, proprietors are protected only to the extent that confusion arises from the use of a similar mark.

The court also found that the same or similar coloured packaging was used by many crisps manufacturers and that the opponent did not have any registered trademark(s) over the colour of the packaging.

Accordingly, the applicant’s packaging was held to be a superficial marketing choice which could not be considered in determining the likelihood of confusion.

The second issue was whether the reputation of the opponent’s brand enhanced, or detracted from, a likelihood of confusion – such reputation was certainly capable of being taken into account. The court found that it was a factual inquiry dependent on the facts, and noted that there could be cases where the reputation of the mark reduces the likelihood of confusion as a matter of fact. However, the court found no rule of law that held that a greater reputation of the mark would reduce the likelihood of confusion (or vice versa).

Accordingly, it was found that the registrar had not erred in factually concluding that the opponent’s reputation was likely to reduce the likelihood of confusion.

On the third issue, the registrar found that visual and conceptual similarities were more important than aural similarity since the goods were self-serve items sold in supermarkets. On the facts, the court found no reason to disturb her assessment.

On the fourth issue, the judge agreed with the registrar’s finding that people who buy snacks are not merely - or even primarily - children and rejected the opponent’s submission that children were the primary consumers of the goods.

Overall, the court found that there was no likelihood of confusion.

The second ground of appeal was Section 8(4)(b)(i), read with Section 8(4)(a).

Under Section 8(4)(b)(i), the opponent had to show that:

• the earlier trademark is identical or similar;
• the earlier trademark is well known in Singapore; and
• use of the later trademark would indicate a connection between those goods or services and the proprietor of the earlier trademark, and was likely to damage the interests of the proprietor of the earlier trademark.

The registrar had found the opponent’s marks to be well known in Singapore and the court found no reason to disturb her finding, although it commented that it was not a requirement to show that a mark is well known to a particular and well-defined sector of the public, but that the mark may still be considered well-known in Singapore, even though it was difficult to define with precision the sector or class of the public among which it is well known. Rather, the factors under Section 2(7) would be considered.

The court further found that the similarity inquiry under Section 8(4)(b)(i) was similar to the inquiry in Section 8(2)(b) and repeated its conclusion on similarity. With regard to the indication of a connection, the court reaffirmed the registrar’s decision that there was no confusing connection, based on his previous finding that there was no likelihood of confusion. With regard to damage, the judge found that the requirements were essentially similar to those in the test applied in a passing-off action. He found that, assuming that the opponent could have made out its case on confusing connection and marks similarity, it could well have been able to establish damage to its interests on the basis of a restriction to its ability to expand into crisps and snacks.

The third ground of appeal was Section 8(7)(a). Under this limb, a mark shall not be registered if its use in Singapore is liable to be prevented by any rule of law, in particular the law of passing off. The difficulties under Section 8(7)(a) were noted, including the fact that the later mark may not even have been used and that there were few facts and evidence for the court to make its decision.

It was noted that it was fairly well established that, in evaluating an opposition under Section 8(7)(a), the court would consider whether the normal and fair use of the applicant's mark in respect of the goods and services sought to be registered would result in passing off. The opponent would have to prove whether, on a balance of probabilities, it would have a valid passing off claim if the applicant's mark was used in relation to any of the covered goods and services. In Wild Child Trademark (a UK decision), the appointed person concluded that the opponent’s evidence did not clearly establish use of the earlier mark as a trademark and was an insufficient basis for a claim in passing off. In Singapore, it was held that, at the very least, Section 8(7)(a) requires an opponent to adduce sufficient evidence to establish a prima facie case on goodwill, misrepresentation and damage - ie, that a passing-off claim would be successful if the applicant mark were to be used in a normal and fair manner in respect of the goods and services for which the mark is sought to be registered.

Goodwill in Singapore must be established, and the first step is to demonstrate that the claimant has a business in Singapore. It would also be necessary to show that the claimed indicia of origin enjoys a reputation in Singapore, in that the mark is known to the public in Singapore as a mark associated exclusively with goods or services of a particular origin.

In Amanresorts v Novelty, it was held that goodwill subsists in Singapore even if limited to only a section of the public in Singapore (provided that such section was not so small as to be negligible).

In this case, it was held that the existence of goodwill is normally established with evidence of figures of sales in Singapore (actual sales figures to demonstrate the volume of sales in Singapore, and the greater the volume of sales and proven demand, the greater the likelihood that the claimed mark would be found to be a badge of recognition in the public’s mind) and marketing and advertising efforts in Singapore (which show the extent of public exposure of the particular brand or business in Singapore – the court will scrutinise the nature, extent and effectiveness of advertising in determining whether the business has achieved some degree of recognition in the minds of consumers).

On the facts, there was some evidence of the marketing of the Angry Bird brand in Singapore, but there was little evidence as to the scale or extent of the marketing efforts. No statistics on marketing expenditure and the volume of sales of Angry Bird merchandise before the application date were provided. However, there was clear evidence of substantial downloads of the Angry Bird game by that date which was considered to be business activity in Singapore. The court therefore found that there was goodwill in the opponent's marks.

Given that the marks were held to be dissimilar, the judge found that there was no misrepresentation. He commented that the argument that the ANGRY BITE mark was inspired by Angry Birds was not in itself evidence of an intention to deceive, as there was no bar to inspiration.

The opponent's fourth ground of appeal was that the application contravened Section 8(7)(b) of the Trademarks Act, which prevents a mark from being registered if the use of the mark is liable to be prevented by virtue of the law of copyright. The opponent argued that the ANGRY BITE mark infringed the copyright in the red bird mark and the fancy word mark (collectively, the artistic works).

At first instance, the registrar had found that the artistic works satisfied the requirement of first publication (ie, in Finland in 2009 and 2010, respectively). She held that the opponent had not proven subsistence of copyright because originality had not been proved; no evidence or submissions were made to demonstrate the originality of the designs. While there were copyright registration certificates from China and the United States, she held that these certificates on their own did not show that the substantial requirements of registration, including originality, were satisfied.

Further, the opponent had argued that Section 130 of the Copyright Act allowed the subsistence and ownership of copyright in the artistic works to be presumed in favour of the opponent. Therefore, the issue was whether Section 130 could be invoked by a litigant in trademark opposition proceedings. The judge found that Section 8(7)(b) of the Trademarks Act required the court to consider a notional action for copyright infringement and the opponent had to establish a prima facie case and, therefore, it must be determined whether an action for copyright infringement is likely to succeed. The judge held that, since a plaintiff in a copyright infringement action would be able to invoke Section 130 of the Copyright Act, a court assessing an opposition under Section 8(7)(b) of the Trademarks Act should be permitted to consider the likely success of copyright infringement in light of Section 130 of the Copyright Act.

The court considered whether the presumptions of Section 130 of the Copyright Act were likely to be successfully invoked in potential copyright proceedings. While the opponent adduced evidence of copyright registration certificates before the court, the latter held that a mere copyright registration did not mean that copyright did, in fact and law, subsist in the artistic works.

The court reiterated the requirements of copyright under the Copyright Ac, namely:

1. the material in question must be copyright subject matter;

2. if what is claimed is a literary, dramatic, musical or artistic work, the work must be original; and

3. if the above requirements are satisfied, the connecting factors must have been satisfied in respect of the nationality, residence and/or place of first publication.

The judge found that the opponent may well be able to establish a sufficient chain of title, whether by assignment or exclusive licence or otherwise. The court also accepted that the fancy word mark, due to sufficient visual stylisation, was also an artistic work, along with the red bird mark.

On the issue of originality, although no evidence was adduced as to the process by which the artistic works were created, and no evidence adduced that they were slavish copies, the judge found, on a balance of probabilities, that the opponent would likely be able to demonstrate that the artistic works are original works in copyright infringement proceedings and, therefore, that the subsistence and ownership of copyright in the artistic works were likely to be sufficiently proven by the opponent in potential copyright proceedings.

The judge then examined whether copying had taken place and, if so, whether the ANGRY BITE mark reproduced a substantial part of the artistic works. There was evidence that the applicant’s in-house designer was inspired when he saw his nephew play the Angry Bird game, and then modified the design.

The judge reiterated that what had to be copied was the original expression, and not the underlying idea or concept behind the work. Therefore, the first step was to examine what had been copied, by comparing the part copied with the artistic works to determine whether the part copied was substantial in terms of quality. It was found that, while it was clear that the idea of an angry figure was borrowed, the detailing was different in that the ANGRY BITE mark portrayed a face head on, was not bird-like, and did not resemble the depiction in the red bird mark. It was also noted that, while the ANGRY BITE mark featured angry eyes, there was no clearly defined face and no beak. Rather, what was depicted was distorted lips, teeth and a cone-like snack in the process of being crushed.

Accordingly, the judge found that what was taken, by inspiration, was the concept of an angry character. While the angry eyes and accented eyebrows were used in the ANGRY BITE mark, little else had been taken, and even the eyes and eyebrows showing anger were not the same as those in the red bird mark. Accordingly, the judge held that the applicant’s designer had not taken sufficient details of any key features of the red bird mark that would amount to substantial copying, since the details of the characters and colours were different.

The judge also rejected the claim based on copyright infringement of the fancy word mark, since the visual appearance and stylisation used by the applicant was found to be different due to the fact that the words 'angry bite' were depicted in outline block letters, and the stylisation and detailing also differed significantly.

Therefore, the court rejected the objection under Section 8(7)(b)

In light of the above, it was held that the ANGRY BITE mark could proceed to registration.

Regina Quek, One Legal LLC, Singapore