Before Principal Assistant Registrar P Arul Selvamalar
27 March 2008
Trade Marks – Applications for invalidation – Likelihood of confusion - whether the registered marks are similar to earlier trade marks and are to be registered for goods or services identical with or similar to those for which the earlier trade marks are protected - Section 8(2)(b) read with section 23 of the Trade Marks Act [Cap. 332]1999 Rev. Ed.
Trade Marks – Applications for invalidation – whether the applications to register were made in bad faith – Section 7(6) read with section 23 of the Trade Marks Act [Cap. 332] 1999 Rev. Ed.
Trade Marks – Applications for invalidation – Distinctiveness – whether the registered marks satisfy the definition of a trade mark under section 2(1) and the requirements under Section 7(1) read with section 23 of the Trade Marks Act [Cap. 332] 1999 Rev. Ed.
On 5 August 2005 the Applicants applied for declarations of invalidity of 2 registered trade marks in the name of the Respondents, T03/07469G in class 11 and T04/05913F in class 7, which comprised the word Pensonic and a device of a letter P. These marks had been registered since 19 May 2003 and 14 April 2004 respectively. The Applicants own registrations for the mark Panasonic in class 7 (T71/52492I, T95/00558A, T00/22115Z and T04/08865I) and class 11 (T85/03800B, T95/00562Z, T00/22119B and T02/08869A). Their applications for invalidation were based on 4 grounds, that (i) there exists a likelihood of confusion on the part of the public because the registered marks are confusingly similar to their marks under Section 8(2)(b), (ii) that the registered marks are objectionable under Section 7(5) and the law of passing off under Section 8(7)(a), (iii) that applications for the registered marks were made in bad faith and were contrary to Section 7(6) and (iv) that the registered marks were not distinctive under Section 7(1)(a); all read with Section 23.
The Applicants used the Panasonic mark since 1988 in Japan and this use extended to South East Asia and China since 1991. The Panasonic brand products were sold in Singapore since 1990. The Applicants also own registrations for the Panasonic mark around the world. In Singapore they own registrations or applications in 26 classes and their earliest registration in class 9 is dated 1968. In Malaysia their mark has been registered since 1971.
The Respondents are one of Malaysia’s largest manufacturers and distributors of home appliances and their products are marketed in over 800 outlets in Malaysia. They claim that PENSONIC was derived from the words “Penang” (which is their Group Executive Chairman’s hometown and where their business commenced) and “sonic” which means sound, as they were initially in the audio business. Their mark means “sound of Penang”. The device of the letter “P” was also chosen to represent Penang. The Respondents claim that they had not heard or seen the Applicants’ mark when they devised the mark. PENSONIC was registered in Malaysia in 1984. Their Pensonic mark co-exists with the Applicants’ mark in Australia, Japan, Hong Kong, Malaysia, Sri Lanka, Vietnam, China, Laos, Myanmar, Kuwait and Lebanon, 11 out of the 16 countries where the Respondents have registrations. The Respondents started selling their products in Singapore in 1984 but later decided to focus on larger markets like Hong Kong and Thailand. They are now interested in entering the Singapore market again.
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The marks are aurally and conceptually similar. The goods are also similar. When considering the likelihood of confusion, the test is not whether the consumer who is presented with both Panasonic and Pensonic products side by side is going to be confused. The test is whether a person who has seen a Panasonic product is going to select a Pensonic product thinking that it is a Panasonic product. Here, the ending of the marks, the word “sonic”, is common and the beginning of the marks sound similar, as the beginnings will be pronounced as “pen/pan”. The additional vowel “a” in the Applicants’ mark is one distinction between the marks but it is likely to be slurred. The device of the letter P is not dominant enough to distinguish the marks. There is a likelihood that a substantial number of average Singaporeans would be confused. The applications for invalidation therefore succeed under Section 8(2)(b) read with Section 23.
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No finding was made under Section 8(7)(a) read with section 23.
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Omission to investigate the Malaysian register of trade marks when the Respondents created their own brand cannot by itself lead to an inference of bad faith. The Applicants did not start using the Panasonic mark in the South East Asian region until the 1990’s and the Respondents created the mark in the 1980’s. There is insufficient evidence to make an inference that the applications for the registered trade marks had been made in bad faith. The applications for invalidation on the grounds of Section 7(6) read with Section 23 therefore fail.
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The registered trade marks are inherently capable of distinguishing the Respondents’ goods and satisfy the definition of a trade mark under Section 2(1). The applications for invalidation under Section 7(1)(a) read with Section 23 fail.
- Trade Marks Act (Cap. 332) 1999 Rev. Ed. Sections 2(1), 7(1), 7(6) and 8(2)(b) read with Section 23.
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- Pianotist Co’s Application (1906) RPC 774
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- CDL Hotels International Limited v Pontiac Marina Pte Ltd [1998] 2 SLR 550
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- Rothmans of Pall Mall Limited v Maycolson International Ltd [2006] 2 SLR 551
- Mr Sukumar Karuppiah and Ms Vicki Heng (Ravindran Associates) for the Applicants
- Ms Celine Teo (Citilegal LLC) for the Respondents