In Twitter, Inc. v V V Technology Pte Ltd [2022] SGIPOS 4, the Principal Assistant Registrar (“PAR”) Mark Lim decided that trade mark application no. 40201818292X for “” (“Application Mark”) in Class 42 by V V Technology Pte Ltd (“Applicant”) be refused registration after it was determined that the Application Mark would be confused with registered trade mark “” (Opponent’s Registered Mark) by Twitter, Inc (“Opponent”).

Intellectual Property Office of Singapore 

Decision: 11 March 2022

Hearing Officer: Mr. Mark Lim, Principal Assistant Registrar ("PAR")

V V Technology Pte Ltd (“Applicant”) is a local start up backed by V V group of companies based in China, leveraging on inter alia artificial intelligence, blockchain technologies and big data to drive smart commerce. The Applicant developed a lifestyle mobile app named “V V Life” (“App”). The App has not been launched yet. The Applicant applied to register “” (“Application Mark”) in class 42 for “Information services relating to information technology; Maintenance of computer software relating to computer security and prevention of computer risks; Maintenance of software for internet access; Monitoring of computer systems by remote access; Preparation of reports relating to computer programs; Providing Information on Computer technology and programming via a web site; Provision of information relating to computer programming” (“Application Services”).

Twitter, Inc (“Opponent”) a public-listed, social networking giant from the United States of America, opposed the Application under ss 8(2)(b) and 8(7)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed)(“TMA”) after it was published for opposition on the 24 May 2019. 

The Opponent relied on its registered mark “” (“Opponent’s Registered Mark”) for services in classes 9,35,38,41,42,45. The Opponent also relied on its prior unregistered marks:

There was no dispute that the competing services overlap.

Marks Similarity Assessment

The Opponent submitted that the “bird” device was arbitrary and meaningless in relation to the services claimed under the mark and has high technical distinctiveness. The PAR, based on evidence and arguments from both parties, took the view that the Opponent’s Registered Mark has a normal level of inherent technical distinctiveness. It was observed that the PAR was wary of inadvertently conferring on the Opponent a monopoly to a “bird” device on the services claimed under the Opponent’s mark.

The PAR took the view that the competing marks were visual more similar than dissimilar given that the marks featured (1) birds in flight, (2)both marks depict side profile, (3)both appear to be relatively small birds and finally (4) neither mark depicts features such as eye**. Aural similarity was not taken into consideration since the competing marks were devices without accompanying words/characters. The PAR’s view was that the competing marks were “birds in flight” with most consumers not being able to identify the marks the specific species of bird, and hence the competing marks were taken to be conceptually identical/similar. The PAR emphasized that visual similarity would be given greater importance over conceptual similarity in the overall assessment of marks-similarity. However, the PAR agreed with the Opponent that conceptual similarity would be more than marginal relevance in this case when the competing marks depict highly recognizable and distinctive concepts (such as birds, animals which are arbitrary and meaningless in relation to goods and services of interest). 

On balance, the PAR held that the marks were similar. 

The PAR made two important observations: the characteristics of average consumer of the relevant services and effect of the Opponent’s reputation in its mark in assessing the likelihood of confusion. 

The PAR noted that some of the services of interest such as information service might be made available to consumers at no or low cost and as a result, the average consumer might pay little or below-average attention when procuring such services. As for the Opponent’s reputation in its mark, the PAR took the view the Opponent’s strong reputation might militate against a finding of confusion but at the same time, confusion might be likely because consumer might mistook the Applicant’s Mark for a new iteration of the Opponent’s Mark or that the Application Mark might a modified mark for a new closely-related digital service as an extension of the Opponent’s existing range of services. Having taken into account the Opponent’s frequent “rehashing” of their marks within a relatively short time, the PAR went on to conclude that on balance, the factors support a finding of a likelihood of confusion. The ground of opposition under s 8(2)(b) was therefore established. 

Having found the element of goodwill acquired in Opponent’s business, the elements of misrepresentation (under likelihood of confusion under s 8(2)(b)) and damage to the goodwill were also established. 

The Application Mark was refused registration and the case is now pending an appeal to High Court of Singapore.

Disclaimer: The above is provided to assist in the understanding of the decision by the Registrar at the Intellectual Property Office of Singapore. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.