Case Update: Trade Mark Application by Megaport (Services) Pty Ltd and opposition by Singapore Telecommunications Limited [2018] SGIPOS 17
Case summary written with the help of Ng Jiaxiang. Also found at Ronald JJ Wong's blog.
Trade Mark Application by Megaport (Services) Pty Ltd and opposition thereto by Singapore Telecommunications Limited (“Megaport”) [2018] SGIPOS 17
Significance
Singtel lost in its objection application against Megaport with regard to its MEG@POP / Meg@Pop trade marks.
Facts
Megaport (Services) Pty Ltd (“the Applicant”), a telecommunication service provider, applied for registration of a subject mark, “MEGAPORT”. The application mark was accepted and published for opposition purposes. Singapore Telecommunications Limited (“the Opponent”) then opposed the registration. The Opponent argued that their earlier marks (“Opponent’s Earlier Marks”) are similar to the application mark.
The Principal Assistant Registrar of Trade Marks (the “Tribunal”) noted that the mark closest to the Application Mark is the Opponent’s Earlier Meg@Pop Mark: MEG@POP, meg@pop and Meg@Pop. The Opponent relied on section 8(2)(b) and 8(7)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”).
Legal Principles
The Tribunal adopted the 3-step test in hearing objections under section 8(2)(b) of the Act as set out in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 (“Staywell”). The 3 steps are:
Establishing the element of similarity or identity of the marks;
Establishing the element of similarity or identity of the goods/services; and
After the first two steps are established individually, the court will look into the issue of confusion in the round by considering 3 sub-issues:
How similar the marks are;
How similar the goods/services are; and
How likely the relevant segment of the public will be confused.
Firstly, the court will consider distinctiveness in three aspects of similarity of marks, namely visual, aural and conceptual similarities. Secondly, the assessment of marks similarity will be a separate inquiry with no influence from any external matter. Thirdly, the similarity of marks is more of a matter of impression than a quantitative definite exercise. This means that the tribunal will have to decide whether the marks in their totality are dissimilar or similar. Fourthly, technical distinctiveness is an important factor: the greater the technical distinctiveness a mark has, the harder it is for an opponent’s mark to be deemed a similar mark. Lastly, the mark must be assessed as a whole, including its components, whether distinguishing or dominant, to come to an overall impression of the marks.
Further, in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] 2 SLR 941 (“Hai Tong”), the Court of Appeal held that the relevant viewpoint is that of an average consumer who would exercise some care and a measure of good sense in purchasing, rather than that of an unthinking person in a hurry. It should also be assumed that an average consumer has “imperfect recollection” which means that the two marks should not be compared side by side and examined in detail. Instead, the court will decide on the general impression left on the consumer by the essential or dominant features the marks.
As regards the similarity of services, the Tribunal referred to Staywell, which held “that registration in the same specification within a class establishes a prima facie case for identity”.
On likelihood of confusion, several key principles from Staywell for assessing this are as follows:
Compare the actual and notional fair uses rights that are enjoyed by incumbent proprietor against the rights of the applicant;
Consider the impact of similarities of marks and goods or services on relevant consumers’ ability to understand where the goods or services originate from;
External factors which inform the court as to how the similarity of marks and goods/services will likely affect the consumers’ ability to understand where the goods/services originated from can be considered;
A non-exhaustive list of factors to be considered:
Impact of marks-similarity on consumer perception
Degree of marks-similarity
Reputation of the marks
Impression given by the marks
Possibility of imperfect recollection of the marks
Impact of goods-similarity on consumer perception
Normal circumstances under which consumers would purchase the goods/services
The pricing of the goods/services—expensive or not
The degree of attention and fastidiousness purchasers command to purchase the goods/services
Characteristics of the relevant consumers
Whether the summers would apply care or specialist knowledge when purchasing the goods/services.
With regard to section 8(7)(a) of the Act, there are three elements which must be established for it to succeed:
Goodwill;
Misrepresentation; and
Damage
Referring to The Commissioners of Inland Revenue v Muller & Co’s Margarine Limited [1901] AC 217, the Tribunal noted that goodwill is described as “the benefit and advantage of the good name, reputation, and connection of a business…the attractive force which brings in custom”. However, to establish goodwill, the Opponent must be able to provide evidence that they have obtained goodwill after the date of the application of the Application Mark, 27th December 2013. Goodwill, in the context of passing off, is concerned with goodwill in the business as a whole, and not specifically in its constituent elements. Goodwill can also be established by e.g. evidence of sales and income of the business which acts as a proxy for the attractive force of the business (Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electronical Trading) [2016] 4 SLR 86).
As regards the element of misrepresentation, this can be considered in the same analysis as that of the ‘likelihood of confusion’, i.e. whether an average consumer will mistake one mark for the another. If the element of misrepresentation is made out, the tribunal will look into the element of damage.
Holding by the tribunal
Grounds of opposition under section 8(2)(b)
Distinctiveness
The Tribunal held that the @ symbol is distinctive and stood out among the other letters in the mark, it also splits the mark into two equal portions. The tribunal disagreed with the Opponent’s assertion that “ME-GA” is a distinctive component. However, the Tribunal indicated that the @ symbol does not render the whole mark negligible as the assessment of a mark must be as a whole and not based on a symbol itself. Hence, the tribunal ruled that the Opponent’s Earlier Meg@Pop Mark is in the middle of the technical distinctiveness spectrum.
Visual Similarity
The Tribunal regarded the Opponent’s Earlier Meg@Pop Mark as a composite mark due to the @ symbol while the application mark is a full plain wordmark. Although the Tribunal accepted that the @ symbol can be interpreted in different ways such as “at”, “a” or “at the rate of”, the tribunal disagreed that the Opponent’s Earlier Meg@Pop Mark has seven letters. Applying Ozone Community Corp v Advance Magazine Publishers Inc [2010] SGHC 16, the High Court held that in the case of word marks, a determination of visual similarity typically involves looking at the length of the marks, structure of the marks and whether the same letters are used in the marks. Hence, the Tribunal opined that the @ symbol will remain as a symbol not a letter no matter how it is construed. Therefore, the Tribunal ruled that the Opponent’s Earlier Meg@Pop Mark has six letters and one symbol.
The Opponent also used the Opponent’s Earlier Meg@Pop Mark with their housemark SINGTEL or the Opponent’s Earlier Singtel MEG@POP Mark in their promotional materials.
In light of the above factors, the Opponent’s Earlier Meg@Pop Mark is clearly visually more dissimilar than similar from the Application Mark.
Aural Similarity
The Tribunal referred to the case of Apptitude Pte Ltd v MGG Software Pte Ltd 2016 SGIPOS 15 (“Apptitude”) and noted that when a person seeks to pronounce a word, e.g., “SNAC”, they would naturally reach for the closest familiar word to it, which is “SNACK”. The Tribunal also commented on the marks of “SNAC” and “snaapp”, noting that speakers especially in Singapore have a tendency to slur the endings of English words. As both marks starts with similar sound of “SNA”, there would be some aural similarity. In the present case, the Tribunal agreed on the tendency for local speakers to slur the ending of the marks such that the marks would have the same starting sound of “ME-GA”. Therefore, there would be some aural similarity.
Conceptual Similarity
Applying Carolina Herrera, Ltd v Lacoste [2014] SIPOS 3, the Tribunal noted that the conceptual analysis of two signs is an analysis of the concepts that can be derived from the elements present in the sign at surface value. In the present case, the Tribunal observed that the word “port” has various interpretations and can be interpreted at surface value as e.g., “a harbor” and “POP” in the application mark can be inferred as “POP server” or “a loud sound”. The Tribunal also rejected the Opponent’s arguments on the @ symbol in the Opponent’s Earlier Meg@Pop Mark being perceived as “at” or “at the rate of” since there was no meaning to “MEG”. Hence, due to all the different interpretations in the marks, the Tribunal held that the marks are conceptually more dissimilar than similar.
Similarity of Services
As provided in Staywell, registration to the same specification will establish a prima facie case of identity. Hence, the service provided in this case is, namely telecommunication services, as indicated in the Opponent Notice of Opposition and Applicant’s registration of subject mark, T1321153J. Therefore, the element of services similarity is satisfied.
Likelihood of Confusion
The Opponent’s actual clients were/are corporations seeking to purchase expensive and technical products. However, as regards notional uses, the potential customers include the ‘man on the street’. The Tribunal held that the reputation of Opponent would likely reduce the likelihood of confusion. The Tribunal also disagreed with the Opponent’s argument that its corporate customers are managed by employees who are as discerning as average man on the street consumers. The Tribunal opined that the employees are hired due to their expertise and in procurement, they would apply greater care, specialist knowledge and consult their colleagues since the services may affect the company’s baseline and will be used throughout the organisation.
Regarding the category of “man on the street” consumers, the Tribunal believes that a consumer will give a higher level of attention and be warier of the services they are buying as it is purchased once in a while and is not considered cheap to many.
Also, in promotional materials of the Opponent, the Opponent uses the Opponent’s Earlier Meg@Pop Mark and accompany it with their housemark SINGTEL or the Opponent’s Earlier SingTel MEG@POP Marks.
Therefore, with regard to all the factors above, the Tribunal ruled that there is no likelihood of confusion.
Grounds of opposition under section 8(7)(a)
Goodwill
The Tribunal referred to the revenue from sales of services of the Opponent which was gradually increasing each year. Hence, the Tribunal ruled that the Opponent has goodwill in Singapore.
Misrepresentation
By referring to the promotional material of the Opponent, the Tribunal noted that the Opponent uses their house mark SINGTEL with the Opponent’s Earlier SingTel MEG@POP Mark or Meg@Pop Mark. The Tribunal held that there is no likelihood of misrepresentation that the Applicant and Opponent are the same or linked economically,
Damage
The element of damage was not considered as there is no misrepresentation in this case. Hence, Section 8(7)(b) fails as the elements are not made out.
