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07 January 2014

Court of Appeal issues landmark decision on likelihood of confusion assessment

The Court of Appeal has released its ruling in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts, which is probably the most important IP decision of 2013. The court considered two key issues in relation to the assessment of the likelihood of confusion – namely, whether there is a difference in approach between opposition proceedings and infringement proceedings, and whether extraneous factors are relevant.

13 December 2013

IPOS decision provides guidance on how to establish well-known status

In Formula One Licensing BV v Idea Marketing SA, the Intellectual Property Office has held that F1 was not a well-known mark for motor racing in Singapore as of the date of application for registration of the mark F1H2O. The office provided useful guidance regarding the evidence to be submitted to prove the well-known status of a mark.

25 September 2013

Inclusion of prior mark in later mark does not guarantee success in opposition

In Kenzo v Kenzo, the hearing officer has rejected fashion house Kenzo’s opposition against the registration of KENZO ESTATE by Tsujimoto Kenzo, a winemaker based in California. The case reiterates that the mere inclusion of a prior mark in a later mark will not guarantee success in an opposition. It also highlights the evidentiary burden that any prospective opponent faces when seeking to rely on the protection afforded to well-known marks.

10 July 2013

Court of Appeal clarifies assessment of likelihood of confusion

The decision of the Court of Appeal in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd may be considered as one of the more important rendered by the court in recent years. In particular, the court clarified two areas of trademark law: the comparison of composite marks and the assessment of the likelihood of confusion.

28 June 2013

SGX guidelines on disclosure of IP rights: impact on trademarks-focused businesses

SGX has released an advisory providing guidance on the disclosure of IP rights by listed companies and companies seeking listing. The advisory makes it clear that companies seeking listing or listed companies which are materially dependent on IP rights must disclose information on their IP rights where this can affect the price or value of their securities.

19 June 2013

Tighter registration procedures introduced for '.sg' domain names

SGNIC has introduced a pilot scheme, [email protected], to improve the data integrity of the WHOIS records for ‘.sg’ domain names and to combat cases of identity theft and fake identities being used when registering ‘.sg’ domain names. From the beginning of May 2013, all new domain name registrations under ‘.sg’ are required to undergo verification of the domain name registrant's details.

23 May 2013

Singapore and Spotify; the battle against piracy

Recently Spotify announced its entry into the Asian market, launching in Singapore, Hong Kong and Malaysia.Although focused on copyrighted content, Spotify’s efforts to change Singaporean attitudes to intellectual property will also in the long run benefit trademark owners by raising the overall level of IP awareness and respect.

17 April 2013

Small differences not always sufficient to differentiate primarily descriptive marks

In The Singapore Professional Golfers’ Association v Chen, the Court of Appeal has allowed The Singapore Professional Golfers’ Association’s appeal against the respondents for their unauthorised use of the name Singapore Senior PGA LLP and the initials 'SSPGA'. Interestingly, the court directed the parties to agree on the scope of the restraining order and refused to award damages, even though the appellant had succeeded in establishing passing off.

05 April 2013

Singapore unveils IP hub plan; scant on trademark initiatives

Based on the recommendations of an IP Steering Committee, Singapore has officially unveiled its 10-year master plan to develop the city-state into a global IP hub. However, the report has meagre detail on trademark-related initiatives. Is this a case of the IP Steering Committee overlooking trademarks or is the Singapore system mature enough to not necessitate further improvement?

07 February 2013

Use of 'Nutello' for hot chocolate beverage held to infringe Ferrero’s trademark

In Sarika Connoisseur Café v Ferrero Spa, the Court of Appeal has dismissed an appeal against a decision of the High Court in which the latter had found that Sarika Connoisseur Café Pte Ltd’s use of the name Nutello for a hot chocolate beverage infringed Ferrero’s trademark NUTELLA. Most of the Court of Appeal’s judgment related to the issue of unfair dilution under Section 55(3)(b)(i) of the Trademarks Act.

14 December 2012

High Court finds no likelihood of confusion between 'Regis' marks for hotel services

In Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts, the High Court has held that there was no likelihood of confusion between the marks PARK REGIS and ST. REGIS for hotel services, notwithstanding the finding that the marks were similar. Among other things, the court noted that the parties' websites were completely different and used the other brands of the parties prominently.

17 July 2012

Trademark protection - an optional extra?

The importance of securing the correct trademarks in all relevant jurisdictions is one of the basic rules of launching a new brand. But could there be exceptions to this rule? At the first ever IP Management for C-Suite Seminar which took place in Singapore last week, the audience heard from one entrepreneur who has decided that, in his line of business at least, trademark protection is an expensive and unnecessary luxury.

11 April 2012

Trademark training boost as Singapore’s IP Academy unveils future plans

Singapore’s IP Academy has reaffirmed its commitment to delivering top class trademark training as it becomes part of the IP Office of Singapore, with a dedicated trademarks programme planned for later this year. The restructuring at the Academy is the latest step in Singapore’s plan to establish itself as the IP hub of the region.

15 February 2012

Mark for tobacco products refused based on identical mark for sports goods

In Basic Trademark SA v Karelia Tobacco Company Inc, the principal assistant registrar has upheld an opposition by Basic Trademark SA, the owner of various KAPPA marks, against the registration of the trademark KAPPA for tobacco products. Among other things, the principal assistant registrar found that there would be misrepresentation likely to cause damage to Basic’s goodwill should there be use of the KAPPA mark by Karelia.

19 April 2011

SGNIC releases premium domain names

The Singapore Network Information Centre has become the latest registry to announce that it would begin the release of short domain names. SGNIC planned to make available a limited number of ‘premium domain names’ to registrants who applied before the end of March, with more domains to be released in further stages on a quarterly basis. The base price may be up to around $16,000, depending on the domain name.