Rolex S.A. successfully prevents registration of “MARINER”

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This article looks at the recent decision by the Intellectual Property Office of Singapore (IPOS) in the Matter of a Trade Mark Application by FMTM Distribution Ltd and Opposition Thereto by Rolex S.A. [2020] SGIPOS 6.

Background

FMTM Distribution Ltd (“Applicant”), a company selling high-end watches, applied to register the trade mark “” (“Applicant’s Mark”) in Singapore in respect of watches and other specified goods in Class 14. 

The application was opposed by the renowned Swiss luxury watch manufacturer Rolex S.A. (“Opponent”). Among several grounds of opposition that were put forward, the Opponent’s main contention was that the Applicant’s Mark was confusingly similar to their registered trade mark “” (“Opponent’s Mark”), also in Class 14 in respect of horological instruments and parts.

Decision

The opposition was successful on the following grounds:

  1. Section 8(2)(b) of the Trade Marks Act (“TMA”) – The Applicant’s Mark is more similar than dissimilar to the Opponent’s Mark, for similar competing goods and there exists a likelihood of confusion; and 
  2. Section 8(7)(a) of the TMA – Passing off.

Section 8(2)(b) of the TMA – similarity between the marks & confusion 

Although the Opponent had adduced a substantial amount of evidence to show that the Opponent’s Mark had acquired distinctiveness, every piece of evidence showed the “ROLEX” mark prominently featured alongside the Opponent’s Mark. The IP Adjudicator noted that: 

“If the Opponent’s Mark is constantly accompanied by the “ROLEX” mark in every piece of evidence, then I cannot see how it can be said that the Opponent’s Mark is a mark that has acquired distinctiveness.”

Concluding that the Opponent’s Mark possessed a medium degree of inherent distinctiveness, as it is a known English word and had not acquired distinctiveness, he nevertheless observed that both marks were single words of similar lengths, and that the entirety of the Applicant’s Mark was encompassed in the Opponent’s Mark. 

Both marks shared three identical or very similar-sounding syllables. The Applicant argued that the first syllable of a word is aurally the most important, given that English speakers tend to slur subsequent syllables. The IP Adjudicator, however, was unconvinced that the prefix “Sub” in the Opponent’s Mark would displace the fact that the Applicant’s Mark formed a substantial part of the Opponent’s Mark.

In terms of conceptual similarity, the IP Adjudicator accepted that both marks similarly conveyed the ideas of a sailor and the sea. As a whole, the IP Adjudicator found that both the Applicant’s Mark and the Opponent’s Mark were visually, aurally and conceptually similar. Taking into account the similarities of the goods and both marks, the IP Adjudicator also found that there existed a likelihood of confusion between the Applicant’s Mark and the Opponent’s Mark, both over the origin of the goods and in the belief that users of the competing marks are economically linked. The likelihood of confusion was further enhanced by the fact that the average consumer would not have specialist knowledge on watches and be so invested in the purchase so as to preclude a likelihood of confusion. 

Section 8(7)(a) of the TMA – Passing Off 

Due to the Opponent’s established network of retailers throughout Singapore, the IP Adjudicator was satisfied that the Opponent had goodwill in its business as a whole in Singapore.  

Following the finding of likelihood of confusion under Section 8(2)(b), the IP Adjudicator determined that there was a likelihood of misrepresentation that the Applicant and the Opponent are one and the same or that they are economically linked. As the Opponent and Applicant were direct competitors of one another, there would have been a real likelihood of damage to the Opponent’s goodwill. 

Conclusion

This decision provides further guidance in the assessment of similar marks that can only be differentiated due to the presence of a prefix (i.e. “Sub”) in one of the marks. 

Brand owners should also be aware that the presence of a relatively well-known mark (i.e. “Rolex”) alongside another mark (i.e. “Submariner”) on a product may render the mark incapable of functioning as a badge of origin and may not assist in proving that the mark has acquired distinctiveness. 

This article was written by Amy Chan, Principal, and Lo Zhen Xin, Associate.

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