In a recent decision involving Mobil Petroleum Co Inc ("Mobil Petroleum") and Hyundai Mobis ("Hyundai"), the applicants, Hyundai, had applied for registration of the mark "Mobis" to be used on vehicle parts in class 12.
Mobil Petroleum, owners of the mark "Mobil" which was used in relation to fuels, objected to the applicants' registration on various grounds. This included the argument that the mark "Mobis" for vehicle parts was confusingly similar to their mark under Section 8(2)(b) of the Trade Marks Act. Mobil Petroleum also contended that their mark "Mobil" was a well known mark. The application should, therefore, be refused under Section 8(3) of the 1988 Act, before the 2004 amendments.
IPOS decided that the "Mobil" and "Mobis" marks were not confusingly similar under Section 8(2)(b). Notwithstanding this, it was found that Mobil Petroleum, which had a presence in Singapore since 1893, was indeed a well known mark.
Under Section 8(3), there is a requirement for an indication of connection and confusion between the well known mark and the later mark to be established. It was found that there would be no confusion among the public if the applicants' mark, "Mobis" for vehicle parts, was used in Singapore. IPOS also concluded that the use of the mark "Mobis" on vehicle parts would not indicate a connection with Mobil Petroleum.
The new provision relating to well known marks under Section 8(4) no longer requires confusion to be proven. However, the owner of the well known mark must still establish a connection between his mark and the applicants' use of their mark. Mobil Petroleum has appealed to the High Court of Singapore against the decision.