This article looks at the recent decision by the Intellectual Property Office of Singapore (IPOS) in the Matter of a Trade Mark Application by Vivo Mobile Communication Co., Ltd. and subsequent Opposition by Daimler AG.
Background
This case involves an opposition proceeding commenced by Daimler AG (the “Opponent”) against Singapore trade mark application for “VIVO” in Class 12 filed by Vivo Mobile Communication Co., Ltd. (the “Applicant”).
The Opponent is one of the largest vehicle manufacturers in the world and holds trade mark registrations in numerous countries, including Singapore, for “VITO” for motor vehicles and its parts and accessories, which has been on sale in Singapore since 2002. Meanwhile, the Applicant is a global technology company which produces electronic consumer goods such as smartphones and smartphone accessories since 2009. Both entities have amassed millions of consumers across the world.
In this dispute, the Opponent alleged that the Applicant’s “VIVO” mark is too similar to its “VITO” mark which may result in confusion amongst the relevant public and consumers could be under the impression that the parties are economically linked. The Opponent also alleged that the use of “VIVO” on the overlapping goods closely related to vehicles would amount to the tort of passing off and therefore the registration of “VIVO” should be disallowed.
Summary of Decision
The Opposition was unsuccessful as the Principal Assistant Registrar (“PAR”) held that there was no likelihood of confusion as the marks were similar to a low extent and the particular nature of the goods would translate to a high level of attention on the consumers’ part. The Opponent also failed to establish the tort of passing off as the element of misrepresentation was not proven.
The length of word marks was an important factor in the comparison of mark similarity. In terms of visual representation, short word marks such as “VITO” and “VIVO” would lead consumers to pay closer attention to each letter and any differences would be amplified compared to longer marks. Therefore, having more letters in common may not necessarily lead to the conclusion that the marks are highly similar and, in this case, a single dissimilarity between the marks is amplified in the PAR’s assessment. In addition, the marks were found to be aurally similar to a low extent based on contrasting pronunciation and conceptually neutral as local consumers are unlikely to attach any significant meaning to these Latin words.
Further, despite the overlapping goods in Class 12, the PAR held that there would be no likelihood of confusion amongst consumers due to the high prices of vehicles in Singapore which would result in consumers paying greater care and attention in their purchase of vehicles and vehicle parts. The assistance rendered by retailers during the sale of these items would also dispel any possible confusion on the consumers’ end.
Last but not least, it was also highlighted that the Opponent’s “VITO” mark was mostly used in proximity with “Mercedes Benz”, “Mercedes” or the “
“ device and seldom by itself in the market. As such, the evidence tendered by the Opponent failed to prove any reputation of the “VITO” mark, its acquired distinctiveness in Singapore or establish the ground of misrepresentation resulting from the use of “VIVO” mark under the alleged tort of passing off.
Conclusion
This decision serves as a caution to all businesses and practitioners on certain vital considerations prior to commencing an opposition proceeding and the need to consider the potential outcome of the proceeding from the consumers’ standpoint. As illustrated, a minor dissimilarity between short word marks may be amplified due to greater attention paid by the consumers and luxury items, unlike common goods, would attract greater care and scrutiny at the point of purchase. Finally, businesses should be mindful of how their marks are put to use in the market as using them in conjunction with its other renowned brands or marks may diminish its reputation such that the mark concerned may not function effectively as a badge of trade origin on its own.