IN THE HEARINGS AND MEDIATION DEPARTMENT OF
THE INTELLECTUAL PROPERTY OFFICE OF SINGAPOREREPUBLIC OF SINGAPORE

Trade Mark No. 40201804512R
9 June 2020

IN THE MATTER OF A TRADE MARK APPLICATION BY

POINT TEC PRODUCTS ELECTRONICS GMBHANDOPPOSITION THERETO BYCOMPAGNIE DES MONTRES LONGINES, FRANCILLON S.A. (LONGINESWATCH CO., FRANCILLON LTD.)

Hearing Officer:

Ms Sandy Widjaja
Principal Assistant Registrar of Trade Marks

Representation:
Mr Chua Shangli (Donaldson & Burkinshaw LLP) for the Opponent (written submissions
only)
Ms Ruby Tham (Drew & Napier LLC) for the Applicant

GROUNDS OF DECISION

1Take flight. Or not.

2

In this dispute, the subject mark, 40201804512R ("Application Mark"):[2020] SGIPOS 9

is sought to be registered for “Watches and chronometric instruments” in Class 14 by
POINT tec Products Electronic GmbH (the “Applicant”).
3
The Application Mark was accepted and published on 20 July 2018 for opposition
purposes. Compagnie Des Montres Longines, Francillon S.A. (Longines Watch Co.,
Francillon Ltd.) (the “Opponent”) filed its Amended Notice of Opposition1 to oppose theregistration of the Application Mark on 19 September 2018. The matter was originally set
down for a hearing on 7 April 2020. However, due to the COVID 19 situation, the oral
hearing was heard on 9 June 2020 via zoom.2 In addition, the Opponent also informed theRegistrar, via its letter dated 7 April 2020 that it will only rely on written submissions andwill not appear for the oral hearing.3
Grounds of Opposition
4
The Opponent relies on sections 8(2)(b), 8(4)(b)(i)4 and 8(7)(a) of the Trade Marks
Act (Cap 332, 2005 Rev Ed) (“Act”) in this opposition.
Evidence and written submissions
5

The evidence comprises the statutory declarations of:(i) Mr Walter Von Kanel, President of the Opponent, dated 19 June 2019(“Opponent’s 1st SD”);(ii) Mr Walter Von Kanel, President of the Opponent, dated 23 December 2019(“Opponent’s 2nd SD”);(iii) Ms Nathalie Birk, Chief Operating Office of the Applicant, dated 5 November
2019 (“Applicant’s SD”).

6

Parties submitted the following written submissions:
(i)
(ii)

Opponent’s written submissions dated 6 March 2020 (“OWS”); andApplicant’s written submissions dated 9 March 2020 (“AWS”).

1

The original Notice of Opposition was filed on 6 September 2018. The Amended Notice of Opposition
was made to input the correct trade mark number which is relied on as an earlier mark.
2
See IPOS letter of 2 June 2020.
3This was in response to the Registrar’s letter of 31 March 2020, where he queried if parties wish to proceed
based on written submissions only in light of COVID 19. In contrast, the Applicant opted for an oral hearing(Applicant’s letter of 7 April 2020). The Opponent maintained its position to only proceed based on written
submissions despite the Applicant’s decision to proceed with oral submissions (see the Notice of Hearing
dated 8 April 2020 and the Opponent’s responses of 22 April 2020).
4
The Opponent dropped the ground of opposition under section 8(4)(b)(ii) during the Pre-Hearing Review
on 4 February 2020.

-2-

[2020] SGIPOS 9

Applicable Law and Burden of Proof
7
As the applicable law is the Act, there is no overall onus on the Applicant either
before the Registrar or in opposition proceedings. The undisputed burden of proof in thepresent case falls on the Opponent.
Background8
The Opponent deposed that it has used its
logo since 1867 andthe signature hourglass logo has been registered in Switzerland since 1889, holding therecord for the oldest registered trade mark in the world.5 The Opponent deposed that it isa renowned market leader for the manufacture and retail of watches and is synonymouswith high end luxury and style. 6 The Longines brand, including its hourglass logo,
is used by the Opponent on its products globally, including in
Singapore. The Opponent’s products are sold in Singapore at official Longines boutiques
and retailers, including a flagship store, as well as through its e-commerce platform.8
7

9
The Opponent relies on its following earlier registered marks (collectively, theOpponent’s Earlier Marks)9 in these proceedings:
S/N
1

Opponent’s Earlier MarksClass
Class 14

T1315264Z

Precious metals and their alloys and goods made ofthese materials or coated therewith included in thisclass, namely figurines, trophies; jewelry, namely
rings, earrings, cuff links, bracelets, charms,
brooches, chains, necklaces, tie pins, tie clips,
jewelry caskets (cases), cases; precious stones,
semi-precious stones; timepieces and chronometric
instruments namely chronometers, chronographs,
clocks, watches, wristwatches, wall clocks, alarm
clocks as well as parts and accessories for the
aforesaid goods namely hands, anchors,pendulums, barrels, watch cases, watch straps,
watch dials, clockworks, watch chains, movements
for timepieces, watch springs, watch glasses,

Opponent’s 1st SD at [4].
Opponent’s 1st SD at [4].
7Opponent’s 1st SD at [4].
8Opponent’s 1st SD at [4].
9At [6] OWS.
5
6

-3-

[2020] SGIPOS 9

S/N

Opponent’s Earlier Marks

2

Class
presentation cases for timepieces, cases fortimepieces.
Class 14

T7669349D

Watches, clocks, pendulum, chronometers, theirparts and fittings, jewelled-watches, watch-straps
made in precious metal, articles of jewellery.

10 The Applicant deposed that it was founded in 1987 and is one of the largest watch
manufacturers in Germany.10 The Applicant deposed that its history is inextricably linked
to aviation inspired watches also known as pilot watches.11 The Applicant’s watches draw
heavily on the design characteristics of pilot watches while staying true to the high quality
standards of German watchmaking and the Bauhaus design movement.12 The Bauhaus
movement is a German modernist movement in the arts as well as design. 13 Bauhaus
design is characterised by simplified forms and a focus on functionality.14 The use of
simple linear and geometrical forms is preferred over complex curvilinear or floral forms.15

MAIN DECISION
Ground of Opposition under Section 8(2)(b)11

Section 8(2)(b) provides:8(2) A trade mark shall not be registered if because…
(b) it is similar to an earlier trade mark and is to be registered for goods or services
identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public.

Decision on Section 8(2)(b)
Step-by-step approach
12 In Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc[2014] 1 SLR 911 (“Staywell”), the Court of Appeal re-affirmed the 3-step test approachin relation to an objection under section 8(2)(b):16

Applicant’s SD at [5].
Applicant’s SD at [6].
12
Applicant’s SD at [8].
13Supra.
14
Supra.
15
Supra.
16
At [15] and [55] of Staywell.
10
11

-4-

[2020] SGIPOS 9(i)

Under the step-by-step approach, the three requirements of similarity of marks,
similarity of goods or services, and likelihood of confusion arising from thetwo similarities, are assessed systematically. The first two elements - namely
similarity or identity of the marks and similarity or identity of the goods /services - are assessed individually before the final element which is assessedin the round.

(ii)

Once the two threshold requirements have been met, the issue of the likelihoodof confusion arises and the tribunal / court is directed to look at (a) how similar
the marks are, (b) how similar the goods / services are, and (c) given this, howlikely the relevant segment of the public will be confused.

Similarity of Marks
13

The law in relation to this issue is as follows:17(i)

The three aspects of similarity (i.e. visual, aural and conceptual similarities) aremeant to guide the court’s inquiry. Trade-offs can occur among the three
aspects of similarity.

(ii)

Technical distinctiveness (discussed further below) is an integral factor in themarks-similarity inquiry. A mark which has greater technical distinctivenessenjoys a high threshold before a competing sign will be considered dissimilar
to it.

(iii) While the components of a mark may be inherently technically distinctive,
ultimately the ability of the mark to function as a strong badge of origin must
be assessed by looking at the mark as a whole. Conversely, the components ofa mark may not be inherently distinctive, but the sum of its parts may havesufficient technical distinctiveness.
(iv) When speaking of the assessment of a mark as a whole, the visual, aural orconceptual similarity of the marks in question must be based on the overall
impression given by the marks, bearing in mind, in particular, their distinctive
and dominant components.
(v)

The similarity of marks is ultimately and inevitably a matter of impression
rather than one that can be resolved as a quantitative or mechanistic exercise.
The court must ultimately conclude whether the marks, when observed in their
totality, are similar or dissimilar.

(vi) The assessment of marks similarity is mark-for-mark without consideration ofany external matter.

17

Staywell at [15] to [30].

-5-[2020] SGIPOS 9

14 Further, the Court of Appeal provided in Hai Tong Co (Pte) Ltd v Ventree Singapore
Pte Ltd and another and another appeal [2013] 2 SLR 941 ("Hai Tong"):18[40(c)] The relevant viewpoint is that of the average consumer who would exercise
some care and a measure of good sense in making his or her purchases, not that of an
unthinking person in a hurry.
[40(d)] It is assumed that the average consumer has “imperfect recollection” suchthat the two contesting marks are not to be compared or assessed side by side (andexamined in detail). Instead, the court will consider the general impression that will
likely be left by the essential or dominant features of the marks on the average
consumer.
Opponent’s Earlier Marks
15 While bearing in mind that the marks are not to be compared side by side, for easeof reference, the marks are:
S/N
1

Opponent’s Earlier Marks

Application MarkT1315264Z
2

T7669349D
16 There are two preliminary points which I wish to make before discussing the issueof distinctiveness. Firstly, I agree with the Applicant19 that the focus for the comparison
exercise will be on T1315264Z. The two earlier marks are similar in the main and most of
the evidence tendered by the Opponent do not reflect T7669349D. It is observed that the
Opponent itself refers to T1315264Z when providing its background. 20 Thus, moving
forward, the term Opponent’s Earlier Mark will simply refer to T1315264Z only.
Secondly, the relevant date in this instance, which is the date of application of the
Application Mark, is 30 May 2017 (“Relevant Date”).21
Distinctiveness17 I am mindful of the Court of Appeal’s guidance in Staywell that distinctiveness is afactor integrated into the visual, aural and conceptual analysis as to whether the competing18

At [40(c)] and [40(d)] Hai Tong.
Via oral submissions.
20
See above as well as the Opponent’s 1st SD at [4].
21
See [6] AWS.
19

-6-

[2020] SGIPOS 9

marks are similar and it is not a separate step within the marks-similarity inquiry. However,for ease of analysis, I will summarise my findings on distinctiveness first, before applying
them within the context of the mark-similarity analysis (this was also the approach takenby the Court of Appeal in Hai Tong).22
Opponent’s Earlier Mark18

The Applicant submitted:23[18] On how the distinctiveness of the earlier mark affects the similarity analysis, werefer to the remarks of the Court of Appeal in Hai Tong at [30]:“….the more fancy or inventive or arbitrary a mark, then in general, the greater
the protection it will receive, in the sense that the defendant would have todemonstrate to a more compelling degree that his mark or sign is indeed
dissimilar from the registered mark… On the other hand, the more descriptive
a mark, the greater the latitude afforded to the defendant in using words or ideasof a generic nature, even if these have some similarity to what is found in theregistered mark.”[19] It is submitted that the [Opponent’s Earlier Mark has] at best a normal degreeof distinctiveness.
[Emphasis mine].

I agree.
19 In coming to this conclusion, while I agree with the Opponent that “[Opponent’s
Earlier Mark] has no direct meaning or significance in relation to the goods”, 24 the fact
is that the Opponent has never relied on Opponent’s Earlier Mark on its own. The
Applicant made extensive submissions in this regard:25[22] We also highlight that there is no evidence that the [Opponent’s Earlier Mark][is] used independently from the mark, “LONGINES”. The evidence lodged by the
Opponent [mostly] show use of the mark, “LONGINES” or composite mark,:26

22

See Hai Tong at [26].
AWS at [18].
24
OWS at [8].
25
AWS at [22].
23

The composite mark, as can be seen, includes both the word LONGINES as well as the “winged” (or“hourglass”, as described in the Opponent’s 1st SD at [4]) device.
26-7-

[2020] SGIPOS 9(a) Invoices found in Exhibit D of the [Opponent’s 1st SD]: The marks usedwere LONGINES and.

(b) Website printouts in Exhibit E of the [Opponent’s 1st SD]: The marks
used were LONGINES and. The [Opponent’s EarlierMark] can be seen on page 128 of the [Opponent’s 1st SD] on the image of thestore front at the door handle. However, the date of the press release, 13
October 2018 is past the [Relevant Date]. In any case, the composite mark is
positioned nearby, again pointing to the conclusion that the mark is rarely, if
ever, used independently.
(c) Advertisements in Exhibit F 27 of the [Opponent’s 1st SD]: The marks
used were LONGINES and. The advertisements from pages
28
151 and 17[6] are from foreign publications and therefore are irrelevant tothe state of affairs in Singapore…
(d) Copy printouts of the Opponent’s website and social media pages in
Exhibit G29 of the [Opponent’s 1st SD]: The marks used were LONGINES
andDate].

…it is not clear that they are dated prior to the [Relevant(e) Copy printouts of press releases and media reports on events sponsoredby the Opponent in Exhibit H of the [Opponent’s 1st SD]: The marks usedwere LONGINES and.

(f) Copy printouts of the Opponent’s watches in Exhibit A of the[Opponent’s 2nd SD]: The materials are undated.30 Even leaving that aside, theevidence does not support independent use of the mark, as the watches also27

For the avoidance of doubt, while it appears that there is a swap in exhibits, it does not affect the analysis.
Specifically, Exhibit F of the Opponent’s 1st SD was intended to include exhibits relating to the Opponent’ssocial media activities (see [12] of the Opponent’s 1st SD), while Exhibit G of the Opponent’s 1st SD wasintended to include exhibits relating to the Opponent’s promotional activities via publications (see [13] of
the Opponent’s 1st SD).
28
Pages 177-178 of Exhibit F of the Opponent’s 1st SD includes a Singapore subscriber version of the TIME
magazine although the race appears to be scheduled to take place in Hong Kong. In any event, they cannot
be taken into account as they are dated after the Relevant Date.
29
See footnote relating to Exhibit F of the Opponent’s 1st SD above.
30
And not paginated. References to page numbers for the Opponent’s 2nd SD is as it appears on the PDF
version of the document.

-8-

[2020] SGIPOS 9

bear the historical 1889 Longines composite mark31 (referred to at paragraph[41] of the [Applicant’s SD]) or themark.32[Emphasis mine].
20 I will only add that Exhibit I of the Opponent’s 1st SD pertains to publications suchas the Opponent’s celebrity endorsements as well as official launches of limited edition
watches, amongst others.33 It is observed again that the evidence lodged mainly show useof the mark, “LONGINES” or composite mark,.

21 Taking into account all of the above evidence, it is clear that there is a dearth ofevidence showing use of the [Opponent’s Earlier Mark] per se.34
22 The Opponent submitted that “the fact that some of the evidence shows the[Opponent’s Earlier Mark] being used in conjunction with other marks does not preclude
the fact that the [Opponent’s Earlier Mark] was in fact being used, by analogy to theestablished principle that “the distinctive character of a mark ... may be acquired inconsequence of the use of that mark as part of or in conjunction with a registered trademark”.35
23 This could be so in some cases. But such is not the case here. In this regard, I agreewith the Applicant that:36[23] Use of the composite markis insufficient to establish
distinctiveness of the device mark alone. In the composite mark, the wing device
plays a smaller role comparatively to the word “LONGINES” by virtue of both its
placement at the bottom and smaller size within the mark.
[Emphasis in italics and in bold mine].
24 In addition, the Applicant has also tendered evidence to the effect that “[t]he concept
of utilising wings as part of a trade mark for watches is not unique to the Opponent. The

Page 8 of the Opponent’s 2nd SD.
Page 9 of the Opponent’s 2nd SD.
33
Documents which are undated (for example, page 227) or dated after the Relevant Date (for example,
pages 265 - 267) are not be taken into account.
31
32

For the avoidance of doubt, this is so even if instances where “LONGINES” orin the vicinity are taken into account.
35
OWS at [10].
36
See [23] AWS.
34

-9-

appear[2020] SGIPOS 9

Applicant provided evidence of numerous trade marks registered in Singapore 37 that
contain winged devices for watches that sold in Singapore”.38 In particular, the Applicant
tendered evidence39 as to “winged-device marks” in the market. Some examples40 are:and.

25 Following the above, I disagree with the Opponent that “[Opponent’s Earlier Mark]is a unique, stylized device created and used by the Opponent…and…[ Opponent’s Earlier
Mark is] inherently highly distinctive”, 41 and that evidence of the surrounding
circumstances cannot be taken into account.42
26 In coming to the above conclusion, it is necessary to address the issue as to whether
the evidence of the actual circumstances can be taken into account at this stage of the marksimilarity inquiry since Staywell clarified that the assessment of marks similarity is markfor-mark without consideration of any external matter.
27 As the Applicant submitted at the oral hearing, this is an unsettled area of the law.
Nonetheless, I agree with the Applicant that the better view is that evidence should be taken
into account at this stage of the analysis. In this regard, the IP Adjudicator opined, in
Monster Energy Company v NBA Properties, Inc [2018] SGIPOS 16, albeit obiter:[41] One interesting question that arose from this dispute is to what extent theknowledge of the average consumer, which may include awareness of facts that are
widely known to the public or common general knowledge, is relevant to the marksimilarity analysis in trade mark opposition proceedings. More specifically, is it
permissible for the parties to adduce evidence of public activities which may haveshaped consumer knowledge of, and familiarity with, a word mark? This question
arises because of the emphasis that the Court of Appeal has placed on how “theassessment of marks similarity is mark-for-mark without consideration of any
external matter” (Staywell at [20]) and is related to the unresolved question ofwhether the acquired distinctiveness of a mark ought to be relevant to mark-similarity(Step 1) analysis.
…
[46] In my view, how the average consumer understands what he sees (which is theessence of the mark-similarity analysis) must necessarily depend on what he knows.
As such, the knowledge of the average consumer, and how he is likely to understandor interpret the word device element of a composite mark, must be relevant to mark37

However, the Register may not present an accurate picture of the actual circumstances since it is possible
to register a mark with an intention to use.
38
See [20] AWS.
39
See [62] and Exhibit 19 of the Applicant’s SD.
40
Those evidence which are dated after the Relevant Date in Exhibit 19 are not taken into account.
41
At [8] OWS.
42
See [14] of the Opponent’s 2nd SD (which sought to deny the Applicant’s SD at [61] – [66]); this is a legal
submission which should have included in the written submissions instead.

- 10 -

[2020] SGIPOS 9

similarity assessment. What words (or images, for that matter) mean to the average
consumer must be evaluated contextually. It follows that the parties should bepermitted to adduce evidence of those surrounding circumstances that are relevant
towards establishing the general knowledge possessed by the average consumer. To
consciously ignore this context would entail the adoption of a highly contrived, andartificially blinkered, approach towards mark-similarity assessment that is
incompatible with the commercial realities within which the trade mark regime
operates.
[Emphasis as in bold and italics mine]
28 Having regard to the above, as alluded above, I agree with the Applicant that the
Opponent’s Earlier Mark on its own, is at most, only of a normal level of distinctiveness.
29 I am aware that the IP Adjudicator in Valentino S.P.A v Matsuda & Co [2020]
SGIPOS 8 (“Matsuda”)43 does not agree with the above approach.44 Nonetheless, with thegreatest respect to the IP Adjudicator in Matsuda, I am of the opinion that “a commonsense overall comparison of mark-for-mark” necessarily encompasses the context within
which the marks reside for reasons described above. As at the Relevant Date, theconsumer would have been exposed to the surrounding circumstances in which the marks
reside so as to be subconsciously influenced by them when making the comparison.
Discounting the context will result in an unrealistic analysis of the comparison process.
30 In any event, even if the approach in Matsuda is applied, the same result will ensue
in this case. This is because the Opponent’s Earlier Mark on its own, sans any evidenceof the surrounding circumstances, is not of an “enhanced level of distinctiveness”45 suchas to enjoy “a high threshold before a competing sign will be considered dissimilar to it”.46
Even at such a “higher” level of distinctiveness (in contrast to the normal level ofdistinctiveness) any similarity between the marks will be offset by the presence of thewords “IRON ANNIE” within the Application Mark such that the marks, when viewed aswholes, are more dissimilar than similar.
Visual Similarity
31
S/N
1

For ease of reference only, the marks are as follows:
Opponent’s Earlier Mark47

Application Mark

43

Issued on 30 July 2020.
See foot note 1 at [22].
45[11] OWS.
46[12] OWS.
47
I have indicated above that for the purposes of comparison only this mark will be taken into account.
44- 11 -

[2020] SGIPOS 9

It is obvious that the Opponent’s Earlier Mark is a device only mark while the Application
Mark is a composite mark. A “winged” device 48 is common to the marks while theApplication Mark has additional words on top of the device.
32

As submitted by the Opponent:49[21] In The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2005] 4
SLR(R) 816 [OBA Tab 9], Lai Kew Chai J held (at [26]), that in cases where there
is a common denominator, it is important to look at the differences between themarks to decide whether the challenged mark is able to distinguish itself
sufficiently…

[Emphasis in bold and italics mine]
33 For the relevant principles in relation to the visual similarity of composite marks, theguidance in Hai Tong at [62] is helpful:50[62(a)] As we have noted above at [40(c)] and [40(d)], when assessing two contestingmarks or signs, the court does so with the “imperfect recollection” of the average
consumer…The two marks or signs should not be compared side by side or
examined in detail because “the person who is confused often makes comparison
from memory removed in time and space from the marks”…
[62(b)] The visual similarity of two contesting marks or signs must normally beassessed by reference to the overall impressions created by the marks or signs,
bearing in mind their distinctive and dominant components. When the othercomponents of a complex mark or sign are of negligible significance, it is permissible
to make the comparison solely on the basis of any dominant element(s).
[62(c)] The overall impression conveyed to the public by a composite trade markmay, in certain circumstances, be dominated by one or more of its components…
[62(d)] The textual component of a composite mark or sign could (but will notnecessarily or always) be the dominant component of the mark or sign. Someinstances where this might be the case include where:(i)

The two marks or signs in question each contain a similar device. The
overall resemblance between them may then be diminished if they bearwords which are entirely different from each other…

As alluded to above, it is described as an “hourglass logo” in the Opponent’s 1st SD at [4].
See [21] OWS.
50
See also [30] AWS.
48
49

- 12 -

[2020] SGIPOS 9(ii)

The textual component is large, and is in a prominent location in
relation to the other components or stands out from the background of
the mark or sign…

(iii) The textual component is in itself already widely known…
(iv) The composite mark or sign is applied to goods or services marketed orsold primarily through online trade channels…
[62(e)] The device component has been found to be an equally significant, if not thedominant, component of a composite mark or sign where:
(i)
(ii)
(iii)

the device is significant and large…
the accompanying word(s) are devoid of any distinctive character, or
are purely descriptive of the device component… or
the device component is of a complicated nature…

But usually not where:
(iv)
(v)

(vi)

the device is simple and will not evoke any particular concept for the
average consumer...
the device component does not attract the attention of the average
consumer of the goods in question because such a consumer is regularly
confronted with similar images in relation to those goods…
the device component is more likely to be perceived as a decorative
element rather than as an element indicating commercial origin…

[Emphasis in bold and italics mine]
34

Returning to the visual comparison of marks:

S/N
1

Opponent’s Earlier Mark

Application Markas mentioned above, it is obvious that there is a common “winged” device in both marks.
35 Applying the above to the current case, I agree with the Applicant that the “visual
impression of the Application Mark is dominated by two elements, namely, the words,“IRON ANNIE” and the “winged device with the geometric centre device” 51 for thefollowing reasons:51

See [31] AWS.

- 13 -

[2020] SGIPOS 9(i)

Both the device and the words are almost of equal size and occupy central
positions in the Application Mark.52 53(ii)

Distinctiveness of the words “IRON ANNIE”. The words are meaningless andinvented in the context of the goods (watches and chronometric instruments).

36 In my view, the devices are similar to a low extent. They can be consideredessentially as “winged” devices. The main distinction, if any, is the centre, in particularhaving regard to the colour contrast.54 In this regard, I do not think it is appropriate to go
down into a detailed analysis of the differences between the two winged devices.55
37 I agree with the Applicant on the applicability of The Polo/Lauren Company, L.P. v
United States Polo Association [2015] SGIPOS 10 (“POLO USPA IPOS”):56[45]…the IP Adjudicator concluded that there was “an extremely low degree ofvisual similarity between the two marks”, as “whilst there is a small degree ofsimilarity between the devices, the presence of text “USPA” in the Application
Mark significantly reduces this similarity.”[46] On appeal to the High Court…the Honourable Justice Lee Seiu Kin J stated in
upholding the above finding at [17]…:[17] … I would point out that even if I were to accept the plaintiff’s submissionthat the Application Device is highly similar to the Opposition Mark, applying
the principle set out in Hai Tong at [62(d)(i)], the Application Text would inany diminish the overall resemblance between them.
38 In conclusion, taking the two marks as wholes, I am of the view that the presence,placement and size of an “equally distinctive”57 and “co-dominant”58 textual element of“IRON ANNIE” in the Application Mark, renders the marks visually more dissimilar thansimilar.
39 For the avoidance of doubt, the Opponent’s reliance on Abercrombie & Fitch
Europe SAGL v MMC International Services Pte Ltd [2016] SGIPOS 6 (“Abercrombie”)
for the proposition that “a composite mark consisting of word and device elements may bedeemed to be visually similar to a pure device mark”59 is misplaced.
52

The Applicant relied on the case of The Polo/Lauren Company, L.P. v United States Polo Association[2015] SGIPOS 10 for this proposition ([32(c)] – [34] AWS).
53
I agree with the Applicant that “it is not likely that a consumer would not notice the “IRON ANNIE” text,
which is in capitalised letters and placed above the device element, such that she / he would focus on thedevice to the exclusion of the “IRON ANNIE” words” ([37] AWS).
54
See [40(c)] AWS.
55
Whether it is a “winged hourglass” device ([40(b)] AWS) or “winged device with the geometric centre
device” ([31] AWS).
56
See [45] and [46] AWS.
57
See [53] AWS.
58
See [52] AWS.
59
See [19] OWS.

- 14 -

[2020] SGIPOS 9

40

As explained at [107] of Abercrombie:[107] Similarly, the Application Mark has taken up the whole of the Opponents’
Earlier Moose Device Mark. The moose device takes up about two thirds of the
Application Mark…
[Emphasis in italics mine]

This is clearly not the case here. As indicated above, in the Application Mark, the device
is of equal size to the words, “IRON ANNIE”.
Aural Similarity
41 With regard to aural similarity, the Court of Appeal in Staywell stated at [31] and[32] that there are two approaches. One approach is to consider the dominant componentof the mark (“Dominant Component Approach”) and the other is to undertake a quantitative
assessment as to whether the competing marks have more syllables in common than not(“Quantitative Assessment Approach”).
42 Here, as alluded to above, Opponent’s Earlier Mark is a device only mark. As
submitted by the Applicant, “the position on whether ‘a mark that is found to have no auralcomponent may nonetheless found to be aurally similar to another mark does not appear to
be settled law’”.60
43 At one end, “[t]he position taken in some decisions is that a device without an auralcomponent cannot be verbalised. It would then follow that no aural comparison can bemade if any of the marks to be compared is such a device”.61 On the other end, “there are
the decisions which verbalise marks with no aural component, by describing the images
that they depict”.62
44 I am of the view that the initial approach is more appropriate in the instant case. The
latter approach is more suitable where the device is an uninvented, everyday item / thing,such as a cat. If I am correct, then no aural comparison can be made.
45 In any event, even if I am wrong, the Opponent’s Earlier Mark would be described
as a “winged device”, and the two marks would be aurally more dissimilar than similar
since the Application Mark would be described as “IRON ANNIE”.
46 As explained in The Polo/Lauren Company, L.P. v United States Polo Association[2016] SGHC 32 (“POLO USPA HC”):63
60

At [56] AWS, quoting from [22] The Polo/Lauren Company, L.P. v United States Polo Association [2016]
SGHC 32.
61
See [58] AWS.
62
See [60] AWS.
63
See [61] AWS quoting from [23] – [24] POLO USPA HC.

- 15 -

[2020] SGIPOS 9[23] But even if I were to accept that the Opposition Mark would be verbalised as“polo-player”, I am not persuaded in respect of the Application Mark….
[24] …As I have already found above, I am of the view that neither the Application
Device nor the Application Text is the dominant component of the Application Mark.
That being the case, I did not see any particular reason why the reasonableconsumer would choose to pronounce the Application Mark as “polo-players”
rather than as “USPA”, which while invented, is not unpronounceable. As counsel
for the defendant highlighted in his oral submissions, no one has sought to pronounce
Nike’s “Swoosh” device even though it is only accompanied by the text “NIKE”,
which the public may not know to be a Greek goddess”.
47 In conclusion, the marks are either aurally neutral or aurally more dissimilar thansimilar.
Conceptual Similarity
48

The Court of Appeal in Staywell expounded at [35] as follows:[35] …Unlike the aural analysis, which involves the utterance of the syllables without
exploring the composite meaning embodied by the words, the conceptual analysis
seeks to uncover the ideas that lie behind and inform the understanding of the markas a whole…Greater care is therefore needed in considering what the conceptually
dominant component of a composite mark is, because the idea connoted by eachcomponent might be very different from the sum of its parts…

[Emphasis in italics mine]
49

The Applicant submitted:[66] The only concept that may be said to be common…is the concept of “extended
wings”.
[67] However, the Application Mark is a composite mark, made up of the equally
dominant, if not more dominant words, “IRON ANNIE” and an extended wing
device…

[Emphasis in bold and italics mine]
50 I am of the view that the Applicant’s proposition that “the Application Mark, as awhole, evokes the impression of a strong and determined girl with some connection toaviation or flight”,64 is reasonable and plausible.

64

At [69] AWS.

- 16 -

[2020] SGIPOS 951 Even if I am wrong, and the general impression of the Application Mark is somethingother than that described above, the overall idea as exuded by the Application Mark must
be more than “one of wings and/or flight”.65 In this regard, I am of the view that, having
regard to “a specialised historical fact”66 that ““Iron Annie” is used as a nickname of a
German aircraft model”67 “will not be known to most of the general public in Singapore”,68
it is too much of a leap in logic to propose that “the term “Iron Annie”…[is] associatedwith wings and/or flight”.69
52 I find support in the decision of Tiger Coatings v Seng Fong Paints [2019] SGIPOS
10,70 where the marks compared were found to be conceptually dissimilar, despite having
the shared concept of a “tiger”:
Opponent’s Mark

53

Application MarkAs submitted by the Applicant:71[73] The IP Adjudicator reasoned…the textual elements…“LNK Coatings” in theapplication mark featured prominently, with the result that the concept conveyed
incorporated those elements, as opposed to the imagery of a tiger on its own (at[77])…

54 Taking all of the above into consideration, I am of the view that the marks areconceptually more dissimilar than similar.
Conclusion on the similarity of marks
55

It is to be recalled that:(i)

The court must ultimately conclude whether the marks, when observed in their
totality, are similar rather than dissimilar. In this regard, trade-offs can occur
among the three aspects of similarity.

65

See [23] OWS.
Supra.
67
Supra.
68
Supra..
69
Supra.
70
At [72] AWS.
71
See [73] AWS.
66

- 17 -

[2020] SGIPOS 9

(ii)

56

The average consumer:(a) has an “imperfect recollection” and there is a need to consider the general
impression that will likely be left by the dominant features of the marks.
(b) is one who would exercise some care and a measure of good sense in
making his or her purchases, not that of an unthinking person in a hurry.

In light of all the above, in my view, the Application Mark is:
Visually more dissimilar than similar in comparison to the Opponent’s EarlierMark;(ii) Aurally neutral or more dissimilar than similar in comparison to the
Opponent’s Earlier Mark;(iii) Conceptually more dissimilar than similar in comparison to the Opponent’s
Earlier Mark,(i)such that it is overall more dissimilar than similar to the Opponent’s Earlier Mark.
57 Having regard to the 3-step test, my conclusion above ends the inquiry with regard
to the objection under Section 8(2)(b). However, in the event that I am wrong, I willproceed with the other two elements. In such a case, the marks can at most be said to be
similar to a low extent.
Similarity of Goods / Services
58

For ease of reference, the relevant goods and services are as follows:
Opponent’s Earlier MarkClass 14

Application MarkClass 14

Precious metals and their alloys and goods made of thesematerials or coated therewith included in this class, namely Watches andfigurines, trophies; jewelry, namely rings, earrings, cuff links, chronometricbracelets, charms, brooches, chains, necklaces, tie pins, tie clips, instruments
jewelry caskets (cases), cases; precious stones, semi-precious
stones; timepieces and chronometric instruments namely
chronometers, chronographs, clocks, watches, wristwatches,wall clocks, alarm clocks as well as parts and accessories for the
aforesaid goods namely hands, anchors, pendulums, barrels,
watch cases, watch straps, watch dials, clockworks, watch
chains, movements for timepieces, watch springs, watch glasses,
presentation cases for timepieces, cases for timepieces.
It is obvious that this element has been satisfied since “watches and chronometric
instruments” appears in both specifications.

- 18 -

[2020] SGIPOS 9

Likelihood of Confusion
59 The relevant principles for assessing likelihood of confusion have been expoundedby the Court of Appeal in Staywell:(i)

In opposition proceedings, the inquiry must take into account the full range ofthe competing monopoly rights that are already enjoyed on the one hand,
namely the actual and notional fair uses to which the incumbent proprietor hasor might fairly put his registered trade mark, and compare this against the fullrange of such rights sought by the applicant by reference to any actual use by
the applicant (assuming there has been prior use) as well as notional fair uses
to which the applicant may put his mark should registration be granted(Staywell at [60]).

(ii)

Once similarity between the competing marks and goods or services has been
established, the impact of these similarities on the relevant consumers’ ability
to understand where those goods and services originate from falls to beconsidered. The only relevant confusion is that which results from thesimilarity between marks and goods or services. However, the plain words ofsection 8(2) do not have the effect of making a finding of confusion automaticupon the establishment of similarity of marks and goods or services (Staywellat [64]).

(iii) On the effect of the foregoing (i.e. similarity of marks and goods or services)on the relevant segment of the public – extraneous factors may be considered
to the extent that they inform the court as to how the similarity of marks andgoods will likely affect the consumer’s perception as to the source of the goods(Staywell at [83]).
(iv) The following represents a non-exhaustive list of factors which are regarded asadmissible in the confusion inquiry (Staywell at [96]):(a)

Factors relating to the impact of marks-similarity on consumer
perception:
(1)
(2)

(3)
(4)
(b)

the degree of similarity of the marks themselves;
the reputation of the marks (a strong reputation does notnecessarily equate to a higher likelihood of confusion, and could infact have the contrary effect);the impression given by the marks; andthe possibility of imperfect recollection of the marks.

Factors relating to the impact of goods-similarity on consumer perception(factors concerning the very nature of the goods without implicating any
steps that are taken by the trader to differentiate the goods).

- 19 -

[2020] SGIPOS 9

(1)
(2)
(3)

(4)

The normal way in, or the circumstances under, which consumers
would purchase goods of that type;
Whether the products are expensive or inexpensive items;
Whether they would tend to command a greater or lesser degreeof fastidiousness and attention on the part of prospective
purchasers; andThe likely characteristics of the relevant consumers and whether
the relevant consumers would or would not tend to apply care or
have specialist knowledge in making the purchase.

[Emphasis in italics mine]
Factors relating to the impact of marks-similarity
60 I have concluded above that the Application Mark is overall more dissimilar thansimilar in comparison to the Opponent’s Earlier Mark or at most, similar to a low extent.
As watches are usually displayed on shelves in the brick and mortar shops or online
platforms, it is the visual component which is crucial. In this regard, I have earlier
concluded that the marks are visually more dissimilar than similar.
61 In relation to the reputation of the Opponent’s Earlier Mark, I have already indicatedabove that most of the evidence cannot be taken into account such that there cannot be any
reputation to speak of. On the other hand, the sales and promotional figures of the
Applicant do not appear to be extensive:
S/N
1
S/N
2

Year
201773Year201775

Number of watches sold72
5,000
Promotional and Advertising Expenditure in €74
30,000

In fact, the extent to which the figures above relate to sales and promotion of products
bearing the Application Mark in Singapore is unclear.76
62 Having regard to all of the above, even taking into account the possibility ofimperfect recollection, the overall impression of the marks is that they are more dissimilar
than similar.

At [18] of the Applicant’s SD.
The figures for 2018 and 2019 are disregarded as they occur after the Relevant Date. For convenience, theyear 2017 is taken into account even though the Relevant Date is 31 May 2017. For the avoidance of doubt,
this does not affect the analysis in this case.
74
At [20] of the Applicant’s SD.
75
As above.
76
See [17] – [20] of the Applicant’s SD.
72
73- 20 -

[2020] SGIPOS 9

Factors relating to the impact of goods-similarity
63 I agree with the Applicant that “watches are “highly personal item[s] which blend
function and style” 77 …[h]ence, watches would tend to “command a greater degree offastidiousness and attention”78…from consumers, who would consequently be less likely
to be confused”.79
64 As a type of product, watches span a whole range of prices. Nonetheless, while they
are not as expensive as a car, they are definitely not cheap items or “a 50 pence purchasein the station kiosk”.80 For clarity, the price of the product is only one of the many factors
accounting for the level of attention exuded by the would be consumers. As the IP
Adjudicator clarified in POLO USPA IPOS:[109]…I do not think that it is necessary in every case to focus on the price of thetype of goods concerned. Ultimately, the aim of the exercise is to determine thedegree of care that the average consumer is likely to pay when purchasing that typeof goods...
[Emphasis in bold and italics mine]
65 In terms of the mode of purchase, as alluded to above, this would either be via brickand mortar shops or via online purchases.
66 For purchases via shop fronts, as submitted by the Applicant, “visual…[aspects] play
important roles…[watches] would be placed on shelves and purchased with the help ofassistants”.81 In such a case, consumers would peruse the marks visually before asking theassistant for help for a closer look at the watch. In this regard, I have concluded above thatthe marks are visually more dissimilar than similar.
67 For clarity, the Applicant also submitted that an alternative mode of purchase where“consumers…ask the sales assistants for a watch by their trademark, before perusing thewatches visually”.82 I am of the view that even via this mode of purchase, it is the visual
aspect that is critical as it is a visual inspection which will ultimately enable the consumer
to confirm if he/she is purchasing the watch that he/she is looking for. This is unsurprising,
given that, as alluded above, watches are “highly personal item[s] which blend function
and style”.83

77

See [89] AWS referring to [98] Swatch AG v Apple Inc [2019] SGIPOS 1.
Supra.
79
See [89] AWS.
80
Staywell at [96(b)].
81
See [92] AWS referring to [96] Swatch AG v Apple Inc [2019] SGIPOS 1.
82
See [92] AWS.
83
See footnote 78.
78- 21 -

[2020] SGIPOS 9

68 In the same vein, for purchases via online platforms, even if the consumer would
have to type in the description of the mark he is looking for,84 ultimately, it is the visual
aspect that is crucial since it is a visual inspection which enable the consumer toconclusively confirm he/she is purchasing the watch that he/she is looking for.
69 Thus, having regard to the usual factors relating to the impact of marks-similarityand goods-similarity, there is no likelihood of confusion that they are one and the same orare at least economically linked.
70

Before I conclude, the Opponent submitted:85[34]…in a number of the Applicant’s watch models, the logo “” is often prominently positioned on the product and placed above or some distanceaway from the words “IRON ANNIE”, making this graphic element the distinctive
feature of the Application Mark…Based on the use of the graphic element in thisway, there is a high possibility that consumers are likely to mistake the Application
Mark for the [Opponent’s Earlier Mark].

The Opponent is clearly misguided as the Application Mark must be assessed as sought
to be registered for the purposes of this ground of opposition.
71 The Opponent also sought to argue that there is a likelihood of confusion as “there
is a high possibility that consumers would be misled to believe that there is an economic
link between the Opponent and the Applicant due to the highly distinctive nature of the[Opponent’s Earlier Mark]”, and that “[t]his is further exacerbated by the fact that the“Iron Annie” series was only created in 2017 with a full collection launched in 2019…asthis means that it is not a long-established brand name”.
72 Firstly, I have earlier concluded that I am of the view that the Opponent’s Earlier
Mark is only of a normal level of distinctiveness. Further, as alluded to above, having
regard to the fact that watches are personal items, consumers are likely to pay more
attention during the purchasing process, such that there is no danger of such a form ofconfusion.
Conclusion on Section 8(2)(b)73

The ground of opposition under Section 8(2)(b) therefore fails.

See Hai Tong above where it was commented that “[t] textual component of a composite mark or sign
could…be the dominant component of the mark or sign...[where] [t]he composite mark or sign is applied togoods or services marketed or sold primarily through online trade channels ([62(d)]).
85
See [34] OWS.
84

- 22 -

[2020] SGIPOS 9

Ground of Opposition under Section 8(4)(b)(i)
74

Section 8(4) of the Act reads:
8(4) Subject to subsection (5), where an application for registration of a trade markis made on or after 1st July 2004, if the whole or an essential part of the trade markis identical with or similar to an earlier trade mark, the later trade mark shall not beregistered if —(a) the earlier trade mark is well known in Singapore; and(b) use of the later trade mark in relation to the goods or services for which thelater trade mark is sought to be registered —(i) would indicate a connection between those goods or services and the
proprietor of the earlier trade mark, and is likely to damage the interests of the
proprietor of the earlier trade mark…

Decision on Section 8(4)(b)(i)Similarity of marks
75 In relation to this ground, it is clear that the first element that must be satisfied is that"the whole or essential part of the trade mark must be identical or similar to an earliermark". This element is essentially the same as the similar element under section 8(2)(b).86
Thus, my conclusion in relation to this is the same as that for the objection under section
8(2)(b) above.
Well-known in Singapore
76

The critical question is whether the Opponent’s Earlier Mark:is well known in Singapore at the Relevant Date.
77

The definition of a well known trade mark is provided in section 2 of the Act:
2.—(1) In this Act, unless the context otherwise requires —“well known trade mark” means —(a) any registered trade mark that is well known in Singapore; or(b) any unregistered trade mark that is well known in Singapore and thatbelongs to a person who —86

See Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA (Sarika CA) [2013] 1 SLR 531 at [70] and [71].

- 23 -

[2020] SGIPOS 9(i) is a national of a Convention country; or(ii) is domiciled in, or has a real and effective industrial orcommercial establishment in, a Convention country, whether or notthat person carries on business, or has any goodwill, in Singapore;
78 Further, section 2(7), (8) and (9) of the Act is relevant for the concept of “well knownin Singapore”. Section 2(7) of the Act states:
Subject to subsection (8), in deciding, for the purposes of this Act, whether a trade
mark is well known in Singapore, it shall be relevant to take into account any matterfrom which it may be inferred that the trade mark is well known, including such of
the following matters as may be relevant:(a) the degree to which the trade mark is known to or recognised by any
relevant sector of the public in Singapore;(b) the duration, extent and geographical area of –(i) any use of the trade mark; or(ii) any promotion of the trade mark, including any advertising of, any
publicity given to, or any presentation at any fair or exhibition of, thegoods or services to which the trade mark is applied;(c) any registration or application for the registration of the trade mark in any
country or territory in which the trade mark is used or recognised, and theduration of such registration or application;(d) any successful enforcement of any right in the trade mark in any country or
territory, and the extent to which the trade mark was recognised as well known
by the competent authorities of that country or territory;(e) any value associated with the trade mark.
Section 2(8) of the Act reads:
Where it is determined that a trade mark is well known to any relevant sector of the
public in Singapore, the trade mark shall be deemed to be well known in Singapore.
Section 2(9) of the Act states:
In subsections (7) and (8), “relevant sector of the public in Singapore” includes anyof the following:(a) all actual consumers and potential consumers in Singapore of the goods orservices to which the trade mark is applied;- 24 -

[2020] SGIPOS 9(b) all persons in Singapore involved in the distribution of the goods or services
to which the trade mark is applied;(c) all businesses and companies in Singapore dealing in the goods or services
to which the trade mark is applied.
79

These provisions have been the subject of further exposition by the Courts:(i)

Section 2(7)(a) is arguably the most crucial factor when determining whether
a trade mark is well known in Singapore. This is because section 2(8) of the
Act deems a trade mark to be well known in Singapore where it is determined
to be well known to any relevant sector of the public in Singapore (see [139]of Novelty Pte Ltd v Amanresorts Ltd and another [2009] SGCA 13("Amanresorts")).

(ii)

Aside from section 2(7)(a) of the Act, the court is ordinarily free to disregard
any or all of the factors listed in section 2(7) as the case requires and to takeadditional factors into consideration (Amanresorts at [137]).

(iii) In relation to section 2(8) of the Act, the Court of Appeal in Caesarstone CAclarified that:[101] …we said in Amanresorts that it is “not too difficult” for a trade
mark to be regarded as well known in Singapore87…
[102] We do not think that this comment in Amanresorts was made to lay
down a general principle…the context of this comment was the desire toclarify that, in order for a mark to be well known in Singapore, therelevant sector to which a mark must be shown to be well known can be
any relevant sector of the Singaporean public, and this sector need not belarge in size. Beyond this, it should not be read as suggesting (moregenerally) that the threshold for a trade mark to be regarded as wellknown in Singapore is a low one.
[Emphasis in italics mine](iv) Last but not least, with regard to the ambit of section 2(9)(a), the inquiry is into
the specific goods or services to which the opponent’s trade mark has been
applied ([152] Amanresorts).
80 The Opponent made extensive submissions 88 as to how the Opponent’s Earlier
Mark is well known to the relevant public in Singapore. I have dealt with the evidence
above and I will not repeat my analysis here. In short, most of the evidence cannot be
87

The Court of Appeal in Amanresorts commented that it is not too difficult for a trade mark to be regarded
as “well known in Singapore” since the trade mark in question need only be recognised or known by “anyrelevant sector of the public in Singapore” which could in certain cases be miniscule ([229] Amanresorts).
88[41] – [47] OWS.

- 25 -

[2020] SGIPOS 9

taken into account because they do not relate to the Opponent’s Earlier Mark per se and/or
are undated / dated after the Relevant Date.
81

Accordingly, this element has not been made out.

Confusing connection
82

In relation to this element, the Court of Appeal in Staywell provided at [120]:…As for the third element, the detailed analysis in Amanresorts has put it beyond
doubt that the connection requirement of s 8(4)(b)(i) and s 55(3)(a) of the Act will besatisfied where there is a likelihood of confusion…

83 Accordingly, I am of the view that there will be no confusing connection here forlargely the same reasons that I have provided for my conclusion in relation to the likelihoodof confusion under section 8(2)(b).
Likelihood of Damage
84 In light of my conclusion above that there is no confusing connection, there can be
no damage.
Conclusion on Section 8(4)(b)(i)85

The ground of opposition under section 8(4)(b)(i) fails.

Ground of Opposition under Section 8(7)(a)86

Section 8(7)(a) of the Act reads:
8(7) A trade mark shall not be registered if, or to the extent that, its use in Singapore
is liable to be prevented —(a) by virtue of any rule of law (in particular, the law of passing off) protecting an
unregistered trade mark or other sign used in the course of trade.

Decision on Section 8(7)(a)87 In relation to this ground, it is trite that there are three elements to be established (i)goodwill; (ii) misrepresentation; and (iii) damage.
88

Some further elaboration on the law of passing off:(i)

The opponent must establish that it has acquired goodwill as at the relevantdate, that is, the date on which the defendant's conduct complained of started.
Applying this principle, it is the Relevant Date in this instance (Law of- 26 -

[2020] SGIPOS 9Intellectual Property of Singapore (Sweet & Maxwell, 2nd Edition, 2014)(“Law of Intellectual Property of Singapore”) at [17.2.5]).
(ii)

Goodwill, in the context of passing off, is concerned with goodwill in thebusiness as a whole, and not specifically in its constituent elements. The issueof whether a mark or get-up is distinctive of a plaintiff’s products or services
is a question best dealt with in the context of the inquiry as to whether the
defendant has made a misrepresentation (Singsung Pte Ltd v LG 26 Electronics
Pte Ltd (trading as L S Electrical Trading [2016] 4 SLR 86 (“Singsung”)).
Evidence of sales and income of the business are a “proxy for the attractive
force of the business” (Singsung at [58]). The “get up” can include various
aspects of the business, including a mark (Law of Intellectual Property ofSingapore at [17.2.10] – [17.2.11]).

(iii) Section 8(7)(a) of the Act at the very least requires an opponent to adduce
sufficient evidence to establish a prima facie case on goodwill,
misrepresentation and damage (Rovio Entertainment Ltd v Kimanis Food
Industries Sdn Bhd [2015] SGHC 216 at [164]).
89

It is not in dispute that the Opponent has the relevant goodwill.

Misrepresentation
90 As alluded to above, in an action in passing off, it is permissible for the Opponent torely on its get-up (which includes the Opponent’s Earlier Mark).
91 I have already commented above that the bulk of the evidence tendered by the
Opponent89 do not relate to the Opponent’s Earlier Mark per se90 and/or are undated /dated after the Relevant Date.
92 It is important to recall that for the purposes of this ground of objection, theOpponent’s get-up is compared to the Application Mark as sought to be registered. In thisregard, section 8(7)(a) provides:
8. (7)(a) A trade mark shall not be registered if, or to the extent that, its use in
Singapore is liable to be prevented by virtue of any rule of law (in particular, the lawof passing off) protecting an unregistered trade mark or other sign used in the courseof trade.
[Emphasis in italics mine]
89

Those parts which can be taken into account having regard the Relevant Date.

90

Most of the evidence pertain to the mark, “LONGINES” or composite mark,Opponent’s Earlier Mark does appear on its own, “LONGINES” orvicinity.

- 27 -

and whenare usually in the[2020] SGIPOS 9This is in contrast to an action under the common law of passing off.
93

Accordingly, the comparison of get-ups / marks are as follows:

S/N
1

Opponent’s earlier get-ups

2
3

LONGINES

Application Mark

94 In light of the above, I am of the view that, on a balance of probabilities, there isclearly no likelihood of misrepresentation that the Applicant and the Opponent are one andthe same or that they are economically linked.
Damage95 As I have found that the element of misrepresentation has not been made out, there
is no need for me to look into the element of damage.
Conclusion
96

The ground of opposition under section 8(7)(b) therefore fails.

Conclusion
97 Having considered all the pleadings and evidence filed and the submissions made inwriting and orally, I find that the opposition fails on all grounds. Accordingly, theApplication Mark shall proceed to registration. The Applicant is also entitled to costs tobe taxed, if not agreed.

Date of Issue: 28 August 2020

- 28 -