Owner of PANASONIC mark prevents registration of PENSONIC

In Matsushita Electric Industrial Co Ltd v Pensonic Corporation Sdn Bhd ([2008] SGIPOS 10, June 27 2008, published in August 2008), the registrar of trademarks has upheld an opposition against the registration of the mark PENSONIC.

Pensonic Corporation Sdn Bhd, a Malaysian company, applied to register the mark PENSONIC (with P design) in Singapore (Application T0503804C) for the following goods:

“electrical apparatus and instruments, radio and television receiving apparatus, tape and video recorders and combinations thereof, mechanisms for cassette and cartridge tape recorders, stereophonic sound reproducing apparatus and instruments, aerials, loud speakers, headphones, microphones, radio gramophones, sound amplifiers and parts and fittings, irons, electric steam irons, electric dry irons, electric flat irons, calculators; all being goods included in Class 9.”

Japanese giant Matsushita Electrical Industrial Co opposed the application based on its registered PANASONIC marks for goods in Class 9 of the Nice Classification. Matsushita argued that:

PENSONIC was confusingly similar to its registered PANASONIC marks;
PANASONIC was a well-known mark;
PENSONIC should not be registered on the grounds of passing off; and
Pensonic had filed the application in bad faith.

The PANASONIC mark was first used in the United States in 1955 for audio speakers and was registered in that country in 1957. Matsushita subsequently started to use the mark in Europe, Japan, Southeast Asia, China, the Middle East and Africa. Matsushita registered the PANASONIC mark in Singapore in 1968 and began using it in 1990.

The PENSONIC mark was created in Malaysia. The word ‘Pensonic’ is derived from the words ‘Penang’ and ‘Sonic’ (meaning ‘sound of Penang’). Pensonic claimed not to have been aware of the PANASONIC mark when it applied for the registration of PENSONIC in Malaysia. The application for the registration of PANASONIC was filed in 1971, but the mark was introduced to the Malaysian market only around 1991. PENSONIC was registered in Malaysia in 1984, and the Pensonic Group is now one of the largest manufacturers of electronic home appliances in Malaysia. Pensonic began exporting PENSONIC-branded products to 18 countries in 2001 and PENSONIC is now registered in several countries. The PENSONIC mark currently coexists with the PANASONIC mark in 11 countries, including Australia, Hong Kong, Japan and Malaysia.

Pensonic sold its goods in Singapore from 1984 to 1986. It applied to register PENSONIC in 2005 with the intention to relaunch its products on the Singapore market.

Having considered the facts and evidence submitted, the registrar decided in favour of Matsushita.

First, the registrar held that the marks PENSONIC and PANASONIC were confusingly similar. From a visual point of view, the registrar concluded that the marks were dissimilar due to the distinctive P device in the PENSONIC mark. However, the registrar found that the marks were aurally and conceptually similar. The registrar felt that the device element could not be taken into account in assessing the aural similarity. Therefore, she concluded that the pronunciation of the words ‘Pensonic’ and ‘Panasonic’ was similar. From a conceptual point of view, the marks were similar since they were both based on the concept of sound. Pensonic’s contention that its mark meant ‘sound of Penang’ was unconvincing, since the company had made no effort to educate consumers as to the meaning of the mark.

There was no dispute that the goods covered by both marks were similar and that the channels of trade used by both parties were the same.

In addition, the registrar examined the issue of whether the typical brand-conscious consumer (who checks the price, features and functions of a product before buying it) was likely to be confused into thinking that the PENSONIC mark was the same as, or linked to, the PANASONIC mark. The registrar concluded that the average consumer would believe that PENSONIC-marked products were Matsushita’s products.

The registrar added that if the PENSONIC mark had continued to be used in Singapore after 1986 alongside the PANASONIC mark, the average consumer would have been able to distinguish the marks. However, as only the PANASONIC mark had been present in Singapore since 1994, the average consumer was likely to be confused if both marks were used in the same channels of trade.

Having decided that the marks were similar, the registrar then turned to the issue of whether the PANASONIC mark was well known in Singapore. She concluded that PANASONIC is a well known trademark based on:

the volume of sales of PANASONIC-branded goods over the years; and
the fact that the PANASONIC mark would be recognized immediately by individuals in the chain of distribution and sale of those goods, as well as by members of the public.

The registrar added that use of the PENSONIC mark in relation to electronic goods would “indicate a connection” between Pensonic’s electronic goods and Matsushita, thereby confusing consumers as to the source of the products. Consequently, Matsushita’s interests would be damaged.

In light of those findings, the registrar did not deem it necessary to consider the issue of dilution and passing off. In addition, she concluded that there was insufficient evidence to make an inference of bad faith.

Arguably, Pensonic may have been successful if it had:

educated the public as to the meaning of its mark; and/or
continued to sell its products in Singapore after 1986 (thereby possibly succeeding on the grounds of honest concurrent use).

While the PENSONIC and PANASONIC marks coexist in other countries, the registrar felt that such coexistence was impossible in Singapore as the PENSONIC mark is virtually unknown in that country.

In separate proceedings, Matsushita has succeeded in invalidating the registered trademark PENSONIC for goods in Classes 7 and 11 in Singapore. Both cases should remind brand owners that trademark protection is principally territorial in nature and that in order to assert their rights against competitors (particularly in common law jurisdictions such as Singapore), it is imperative not only to register their trademarks, but also to use them. Trademark owners should thus review their marketing and business strategies on a regular basis to ensure that their brands are protected in their specific countries of interest and that they continue to build on the goodwill and reputation of their brands in those countries.

Kevin Wong and Kiran Dharsan, Ella Cheong Spruson & Ferguson, Singapore

Owner of PANASONIC mark prevents registration of PENSONIC

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