Failed opposition to MTV registration is music to Viacom's ears

Singapore

The trademark registrar of the Singapore Intellectual Property Office has dismissed an opposition against Viacom International Inc's application to register the mark MTV for online information services in Singapore (Application T00/3154G, July 7 2004).

In April 2002 Viacom, a global entertainment company that operates music television channel MTV, requested the transfer of the domain name 'mtv.com.sg' from Gary Lee Ongkowidjaja on the basis of its MTV mark. The administrative panel, applying the Singapore Domain Name Dispute Resolution Policy (SDRP), found that the mark MTV was descriptive of entertainment and broadcasting services, and even generic as it had entered the local Chinese language as an abbreviation for 'music videos'. Accordingly, the panel dismissed Viacom's complaint.

Viacom subsequently applied to register its MTV mark for online information services. Lee Ongkowidjaja opposed the application. He argued that, following the findings of the SDRP panel, the MTV mark (i) was inherently descriptive as it stands for 'music television' and was thus unregistrable under Section 7(1)(c) of the Trademarks Act 1998, and (ii) had become customary or generic in the local context and was thus unregistrable under Section 7(1)(d).

The registrar dismissed the opposition. With respect to the first ground of opposition, she took the view that even though the term 'music television' was arguably descriptive of music being shown on television, this did not mean that the abbreviation of the term (ie, MTV) was necessarily descriptive in this way. She also disagreed with the SDRP panel's interpretation of the case of Staph Guard TM ((1967) RPC 165). She found that this case did not establish that every abbreviation of a known word lacks distinctiveness. The registrar stated that even if she were wrong on this ground, Viacom's MTV mark had become distinctive through use and thus was registrable pursuant to Section 7(2).

The registrar also dismissed the second ground of opposition. The burden of proving that MTV had become generic fell onto Lee Ongkowidjaja, but the evidence that he submitted was in Chinese and either undated or dated after the application for the MTV mark had been filed, which made it irrelevant for the purposes of the opposition. The registrar concluded that Lee Ongkowidjaja had failed to show that MTV had become customary in the trade.

This case is a reminder that it is advisable to file for trademark protection prior to or at the same time as registering the mark as a domain name. A registered trademark affords statutory protection for the owner while a registered domain name merely serves to identify a website: it does not confer any statutory protection.

Penny Leng, Drew & Napier LLC, Singapore

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