Opposition by Raffles Hotel (1886) Limited

In The Matter Of Application No. 1924/97
By Corporate Licensing Pty Ltd
To Register A Trade Mark in Class 3

And

In The Matter Of Opposition Thereto
By Raffles Hotel (1886) Limited

Before Principal Assistant Registrar P Arul Selvamalar
11 January to 3 February 2002

Trade Mark Application - opposition to registration - whether application mark would cause confusion or deception - whether registrar should exercise her discretion under section 12(2) - section 12(1), 12(2), 15 and 23

Corporate Licensing Pty Ltd is an Australian Company which applied for registration of the mark "Lady Raffles" (words only) in class 3 for "perfumes and cosmetics". The Opponents are Raffles Hotel (1886) Ltd and they have been using a mark, which comprises the front façade of the hotel and the words "Raffles Singapore" in an oval device in class 3. The Opponents also have applications for the marks, Red Palm by Raffles (TM 6077/96 - registered), Casuarina by Raffles (TM 7856/94 - pending) and Raffles by Raffles (TM7855/94 - pending), all in class 3. The Opponents opposed the registration of the applicants' mark on the basis that they are the owners of the mark "Raffles" in class 3 and that therefore the use of the mark "Lady Raffles" by the applicants would cause confusion or deception. The applicants argued that the Opponent used the word "Raffles" together with other devices and that the other devices sufficiently distinguished their mark from the opponents' marks, and that therefore there would be no confusion or deception.

Held, disallowing the application:

The Opponents have been using their marks, Raffles Singapore, Red Palm by Raffles and Casuarina by Raffles on class 3 goods since 1993. The issue in this case does not revolve around the question of whether only the Opponents can use the word "Raffles" which is a common surname. The issue is, in light of the Opponents' ownership of the 4 marks described above, is there a likelihood of confusion or deception, if the applicants' mark is registered. The Opponents own composite marks with one common element - the work Raffles. Although the word Raffles may not be the main element in these 4 composite marks, there is a special circumstance in this case. The Opponents' Raffles Hotel is so famous in Singapore that when a member of public buys class 3 goods sold by the Opponents, they would buy them because these goods are from the Raffles Hotel. Therefore the common feature may not be the main feature in terms of size or prominence but it is the main feature because of the fame of the hotel. When the public see the mark Lady Raffles on the applicants' goods, there is a likelihood that they would think that they are connected with the Opponents' goods. Therefore there is a likelihood of confusion.
Under section 12(2) of the Trade Marks Act, the Registrar has the discretion to disallow the registration of the mark even if it complies with section 10 or 11 and is not prohibited by section 15 and 23. The applicants approached the opponents for a licensing program in 1995 and when rejected, applied for the mark Lady Raffles in various classes. The applicants created a mark, which comprised of the same surname that the opponents had been using, for the same classes that the opponents had started merchandising in. It did not appear to the Registrar that the applicants wanted to make their mark so distinct from the opponents marks, so that no connection could be made between the opponents' marks and the applicants mark. Therefore the Registrar exercised her discretion under section 12(2) to reject the application.
The opposition under section 23 failed because the Opponent only had one prior registered mark. Therefore a consideration of a family of marks did not arise. The opposition under section 10 also failed.

Provisions of legislation discussed:

Trade Marks Act (Cap 332, 1992 revised Ed) section 12,15 and 23

Cases referred to:

Eno v Dunn [1890] HL 252
Bali TM [1969] RPC 472
Southern Cross Refrigerating Company [1953] 91 CLR 592
National Dairies Ltd v Xie Chun Trading Pte Ltd [1998] 1 SLR 620
An application by Smith Hayden & Co [1946] RPC 97
Hacks Application [1941] 58 RPC 91
An application by Pianotist Company [1906] RPC 774
Beck Koller 64 RPC 76
Australian Woollen mills [1937] 58 CLR 641
re Application by Harding Manufactures Pty Ltd (1987) 8 IPR 147
Perfumes of Singapore v Raffles Hotel [1993] AIPR 278

Representation:

Mr Donald Vivien Roach director of the Applicants in person
Ms Winnie Tham and Mr Louis Chan (Allen & Gledhill) for the Opponent