VIGOSS and MEN VIGOSS confusingly similar

The Singapore Trademarks Registry has invalidated the mark MEN VIGOSS for clothing on the grounds that it was confusingly similar to the mark VIGOSS for the same type of goods.

Bulur Giyim Sanayi Ve Ticaret Limited Sirketi (Bulur) has been the registered proprietor of the mark VIGOSS in Singapore for "clothing, footwear, headgear" since June 10 2003. In February 2004 Guangying Clothing Co Ltd (Guangying) registered MEN VIGOSS for "clothing, layettes, raincoats, bathing suits, football shoes, shoes, hosiery, gloves, neckties, strap (clothing)". Bulur subsequently filed an invalidation application against Guangying's mark on the basis of Section 8(2)(b) (read with Section 23(3)) of the Trademarks Act 1998.

Section 8(2)(b) provides that:

"a trademark shall not be registered if because … it is similar to an earlier trademark and is to be registered for goods or services identical with or similar to those for which the earlier trademark is protected, there exists a likelihood of confusion on the part of the public."

Section 23(3)(a)(i) provides that:

"the registration of a trademark may be declared invalid on the ground …that there is an earlier trademark in relation to which … the conditions set out in Section 8(1) or (2) apply."

In determining the similarity of marks under Section 8(2)(b), the registrar held that the marks were similar. The registrar found that:

• the most prominent visual feature of the marks was the word 'VIGOSS';
  
  
• because of its dominant position, the word 'VIGOSS' would be likely to play an important part in the aural perception of the marks;
  
  
• the marks were also conceptually similar because 'VIGOSS' was a coined word and therefore the idea brought to mind was of the same mark;
  
  
• the word 'MEN' was merely a descriptive prefix and played only a secondary role in determining the distinctiveness of Guangying's mark; and
  
  
• the goods were similar, if not identical, because both marks were registered essentially for clothing.

On the question of the likelihood of confusion on the part of the public, the registrar held that there was such a likelihood, because the addition of the word 'MEN' would give the impression that Guangying's line of clothing was the male line of Bulur's clothing range.

Paul Teo, Drew & Napier LLC, Singapore