American clothing brand, Guess, Inc (“Guess”) opposed the registration of “” filed by Jen Chi for goods in Class 25 (clothing). One of the main grounds of opposition was that the applicant’s mark was similar to their earlier marks, and relied on the following earlier marks, amongst others:
|Guess’ Earlier Registered Marks|
Guess argued that the dominant and distinctive feature of their mark is “the inverted triangle device” which has a high level of “technical distinctiveness” and therefore “enjoys a high threshold before a competing sign will be considered dissimilar to it”.
The Principal Assistant Registrar (“PAR”) took the view that an average consumer is likely to view the device simply as an “inverted triangle device” and a decorative element.
She also disagreed that the dominant and distinctive feature of Jen Chi’s Mark is the “inverted triangle device”, and disagreed that the word “Hater” only serves to reference Jen Chi’s goods of hats as contended by Guess. Given the centrality and prominence of the textual component “hater” which was missing from Guess’ Earlier Marks and the positioning of the differing textual component in the marks, she found that the marks are visually and conceptually more dissimilar than similar.
Having considered all the relevant evidence adduced by Guess, the PAR was prepared to recognise the “” mark as a well-known mark with the relevant goodwill in Singapore. However, taking into account the dissimilarity of the marks, the PAR was of the view that on a balance of probabilities, there was no likelihood of misrepresentation that Guess and Jen Chi are one and the same or that they are economically linked. Guess’ claim for passing-off also failed.
The opposition was dismissed and the application proceeded to registration.