Opposition by R J Reynolds Tobacco Company & WorldWide Brands Inc.

In The Matter Of Application No. 4620/96
By Chip Seng Impex (S) Pte Ltd
To Register A Trade Mark In Class 30

And

Opposition By
R J Reynolds Tobacco Company & Worldwide Brands Inc.

Before Principal Assistant Registrar P Arul Selvamalar
1 October 2001

Trade Marks - opposition by registered proprietor of similar mark in different classes - whether goods of same description - whether applicant is the rightful proprietor

The Applicants applied for registration of a mark consisting of the word "CAMEL" and a device of a camel for rice in class 30. The mark was accepted and advertised. The Opponents opposed its registration. The Opponents had used a mark consisting of the word "CAMEL" and a device of a camel on cigarettes since 1913. In Singapore they had registered various marks for goods in classes 8, 9, 12, 14, 16, 18, 22, 25, 28 and 34 but their opposition was based mainly on the reputation of their Camel mark for cigarettes. None of the Opponents' registrations were for class 30 goods or any food items.

Held, dismissing the opposition:

Although the Opponents had a reputation in their camel mark in Singapore for cigarettes, that reputation was limited to cigarettes, it did not extend to food items. There was no special connection between cigarettes and rice. Therefore the case of Tiffany & Co v Fabriques de Tabac did not apply. If the Applicants mark is registered, it would not be likely to deceive the public or cause confusion among the public that the goods of the Applicants are in some way connected with the Opponents. The Opposition under section 15 failed.
The Opponents relied on their registration in class 8 for cutlery to argue their case under section 23. However it was found that cutlery and rice are not goods of the same description. Therefore the Opposition under section 23 failed.
The Opponents argued that under section 12, the Applicants were not entitled to be registered as the propreitor of the mark as they had copied the opponents mark. It was found that the allegation of copying was not made out. There were many other marks on the register in food classes which contained the device of a camel and the word Camel. The Opposition under section 12(1) failed.

Provisions of legislation discussed:

Trade Marks Act (Cap 332, 1992 Revised Edition) section 12(1), 15 and 23

Cases referred to:

Tiffany & Co c Fabriques de Tabac Reunies SA [1999] 3 SLR 147
Super Coffeemix v Unico Trading & Anor [2000] 3 SLR 145
Pioneer Hi-Breed Corn Co v Hy-Line Chick Pte Ltd [1979] RPC 410
Harrods v Harrodian School Ltd [1996] RPC 697
McDowell's Application (1926) 43 RPC 313
Jellinek's Application (1946) 63 RPC 59
Lifeguard [1957] RPC 79
McDonalds Corp v Victorian Dairy Industry (1987) AIPC 90
Spillers Ltd's Application (1953) 70 RPC 51
Re Jaguar TM [1993] 2 SLR 466
Vitamin Ltd's Applictoin [1956] RPC 1
Brown Shoe Co Inc's Application [1959] RPC 29
Rawhide TM [1962] RPC 133
Genette TM [1968] RPC 148
Al Bassam TM [1995] RPC 511

Representation:

Mr Paul Teo (Drew & Napier) for the Applicants
Mr Lim Teng Leong (Donaldson & Burkinshaw) for the Opponents