No likelihood of confusion between MIO marks, says court

Singapore
In Mitac International Corporation v Singapore Telecommunications Ltd ([2009] SGHC 137, June 5 2009), the High Court of Singapore has dismissed an action filed by Mitac International Corporation, a manufacturer of personal digital assistants and global positioning system devices, against Singapore Telecommunications Ltd (SingTel), Singapore's leading telecommunications group. Mitac claimed that SingTel had infringed its MIO marks and sought to invalidate SingTel's own MIO marks. The actions were consolidated and heard at the same time.
 
Mitac is the owner of the trademarks MIO and MIO DIGIWALKER for goods in Class 9 of the Nice Classification. Mitac alleged that the registration and use by SingTel of the trademarks MIO BOX, MIO PLAN, MIO TV, GENERATION MIO and MIO for goods and services in Classes 9 and 37 infringed its registered trademarks. SingTel’s MIO marks were used as a sub-brand for a bundling package. 
 
The High Court considered the following points of law for the first time:
  • whether services in Class 37 were similar to goods in Class 9; and
  • the meaning of the phrase “in relation to goods or services” under Section 27 of the Trademarks Act
Sections 27(1) and (2) state as follows:
 
"27(1) A person infringes a registered trademark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign which is identical with the trademark in relation to goods or services which are identical to those for which it is registered.

(2) A person infringes a registered trademark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign where, because -

(a) the sign is identical to the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or

(b) the sign is similar to the trademark and is used in relation to goods or services identical or similar to those for which the trademark is registered,

there exists a likelihood of confusion on the part of the public."
 
The court held that SingTel’s marks were neither identical nor similar to Mitac’s marks. It also held that the services for which SingTel’s MIO marks were being used were not similar to the goods for which Mitac’s MIO marks were registered. The court highlighted that the case should have been dismissed on this point alone, but went on to consider the other issues raised by counsel for the sake of completeness.
 
In clarifying the meaning of the phrase “in relation to goods or services” under Section 27 of act, the court held that SingTel did not use the MIO mark in relation to goods or services that were identical or similar to those for which the MIO mark was used by Mitac. It reasoned that SingTel had used the MIO mark only in relation to the mio Box (a modem device used to provide SingTel’s customers with unlimited outgoing calls) and the mio TV set-up box (a device leased to SingTel’s pay-TV customers, which cannot be purchased). Any reference to mobile phones, telephones or televisions made by SingTel were through SingTel’s televised commercials, which were actually meant to promote a bundle of services provided by SingTel, and not the electronic products themselves. 
 
Finally, the court held that there was no likelihood of confusion on the part of the public because SingTel’s MIO marks always appeared together with SingTel’s logo. The consolidated action was dismissed with costs.
 
Mitac has appealed against the decision.

Paul Teo and Roe Yun Song, Drew & Napier LLC, Singapore

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