K.S. Low Trade Marks

In review: B.R. succeeded in opposing “Recherché” mark

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In B.R. v Elements Cosmeceuticals Pte. Ltd. [2021] SGIPOS 3, the Principal Assistant Registrar (“PAR”) refused the registration of ““by the Elements Cosmeceuticals Pte. Ltd. on grounds under s 8(2)(b) of the Trade Marks Act (Cap 332, Rev 2005)(“TMA”) that ““is similar to B.R.’s earlier mark T1200582A “” under s 8(2)(b). B.R. also brought an action for passing off against Elements Cosmeceuticals Pte. Ltd. successfully.

Intellectual Property Office of Singapore (IPOS)

Hearing Officer: Ong Sheng Li Gabriel (“PAR”)

Hearing Date: 29 October 2020

Relevant Date: 7 November 2017 

Applicant’s Mark: 40201721937Q

Elements Cosmeceuticals Pte. Ltd. (“Applicant”) sought to register “” (“applicant’s mark”) for goods including skincare cosmetics, skincare preparations for cosmetic purposes, facial cleansers in Class 3 and services including beauty salons and beauty services in Class 44. The trade mark application, filed on the 7 November 2017 (“relevant date”) was opposed by B.R. (“Opponent”), a French company founded in Paris, on numerous grounds under the Trade Marks Act (Cap 332, Rev 2005) (“TMA”) including ss 8(2)(b), 8(7)(a), 8(4)(b)(i), 7(6), 7(1)(c). It relied on its trade mark no. T1200582A “” (“Opponent’s mark”) registered for goods in class 3 including skincare and cosmetic preparations. The Opponent succeeded on grounds s 8(2)(b) and s 8(7)(a).

The starting point is that “BIOLOGIQUE RECHERCHE” is in French—a language which the public in Singapore would not be presumed to know.

Marks Similarity – s 8(2)(b)

To succeed under s 8(2)(b), (i) the competing marks have to be similar, (ii) the goods and services of the applicant have to similar to the registered goods or services and (iii) confusion as a result of (i) and (ii) is therefore likely to occur.

The issue central to this dispute was if applicant’s mark is similar to the opponent’s earlier mark and whether the word “RECHERCHE”, the common element is distinctive. The Opponent, in its submission, asserted the words “BIOLOGIQUE RECHERCHE” in French means “BIOLOGICAL RESEARCH” while the Applicant submitted that “RECHERCHE” is an English word; albeit uncommon and carries the meaning of “rare” or “exquisite”. The PAR noted the parties’ submission and took into consideration the “ordinary signification” of the word “RECHERCHE” to the public in Singapore as applied to the goods concerned and concluded that the word would not have conveyed any meaning whether it’s in English or French. The PAR took the view that the word “RECHERCHE” is inherently distinctive to a significant degree. The PAR noted “BIOLOGIQUE” means “BIOLOGICAL” alluding to “organic” or “natural” in relation to the nature of goods claimed in class 3 but nevertheless concluded that “BIOLOGIQUE” is inherently less distinctive than “RECHERCHE”. 

The PAR took the view the common element “RECHERCHE” is the dominant component of both marks and that the device element and the word “BIOLOGIQUE” did not set the marks apart sufficiently and found the marks visually similar to a slight degree. The PAR assessed the aural similarity of the marks using the “Dominant Component Approach” and found the marks aurally similar to a slight degree. The marks were assessed to be “neutral conceptually”. On balance, the PAR found competing marks to be similar to a slight degree.

In considering if the goods in class 3 claimed by the Opponents are similar to the services in class 44 (second limb of s 8(2)(b)), the PAR found authorities in foreign jurisdictions tendered persuasive given that the segment of customers do overlap. The extent to which the goods and services are complementary to or substitute for each other was also taken into consideration. The PAR was satisfied that the goods claimed by the Opponent in class 3 and the goods and services applied for in classes 3 and 44 to be similar, thus satisfying the second limb of s 8(2)(b).

In assessing the likelihood of confusion (third limb under s 8(2)(b)), the PAR took the view that the “BIOLOGICAL” could be taken as descriptive element by the public against the more distinctive “RECHERCHE”. Hence, on balance, in relation to skincare products and beauty services, consumers with imperfect recollection might be misled into thinking that Applicant’s mark and the Opponent’s mark emanated from the same source or they might be commercially linked.

The ground under s 8(2)(b) was established. 

Passing Off – s 8(7)(a)

Evidence disclosed that the distributors (spa outlets) advertised and promoted Opponent’s products and the element of goodwill was found to be established. The inquiry of the marks under s 8(2)(b) was therefore taken to be a deciding factor in the finding of misrepresentation.  In assessing the element of “damage”, actual damages need not be proven. The damage in the form of diversion of sales and restriction to business expansion opportunities in the form of beauty services (in class 44) is likely to occur. On balance, the PAR concluded that the ground s 8(7)(a) was established.

Comments:

The approach the PAR adopted in his assessment of foreign words is akin to a High Court case in Australia involving foreign words in trade marks. In Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, the High Court of Australia held that the trade marks “ORO” and “CINQUE STELLE” — registered by the appellant, Cantarella Bros Pty Limited (“Cantarella”), in respect of products including coffee — were inherently adapted to distinguish the goods for which they were registered from the goods of other persons, within the meaning of s 41 of the Trade Marks Act 1995 (Cth). The High Court in determining if the marks consisting of Italian words “ORO” and “CINQUE STELLE” (meaning “gold” and “five stars” respectively) are inherently adapted to distinguish, took into consideration the “ordinary signification” of the words to the persons in Australia in relation to the goods concerned. The High Court, by majority took the view that the words “ORO” and “CINQUE STELLE” did not convey any meaning or idea sufficiently tangible to anyone in Australia in relation to coffee as to words having direct reference to the quality or character of the goods concerned. The marks were thus held to be inherently adapted to distinguish for the goods registered from the goods of other traders.

Disclaimer: The above is provided to assist in the understanding of the decision by the Registrar. 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.