IN THE MATTER OF TRADE MARK APPLICATION T0720701B BY
NG WEE PING
AndOPPOSITION THERETO BY
S.TOUS, S.L.

Before Principal Assistant Registrar Ms Lee Li Choon
25 June 2010
Trade Marks – Opposition to registration – whether the application should be refused
registration in classes 14, 18 and 25 as the Application Mark is similar to the Opponents’mark which is an earlier trade mark and the Application Mark is to be registered forgoods similar to those for which the earlier trade mark is protected and there exists alikelihood of confusion on the part of the public - Section 8(2)(b) of the Trade Marks Act(Cap 332, 2005 Revised Edition)
Trade Marks – Opposition to registration – whether the Application Mark is similar tothe Opponents’ earlier trade mark that is well known in Singapore and whether the use ofthe Application Mark in relation to the goods for which the Application Mark is sought tobe registered would indicate a connection between those goods and the Opponents and islikely to damage the interests of the Opponents - Section 8(4) of the Trade Marks Act(Cap 332, 2005 Revised Edition)
Trade Marks – Opposition to registration – whether in view of the long and extensive
use of the Opponents’ mark and other variants in relation to the Opponents’ goods, there
is substantial goodwill and reputation subsisting in the Opponents’ marks such that theuse or proposed use of the Application Mark in respect of the proposed specification islikely to mislead the public into believing that the Applicant’s goods originate from or
are somehow associated with the Opponents when there is none, causing damage to theOpponents’ business and goodwill and as such, the registration is liable to be prevented
in Singapore by virtue of the law of passing off – Section 8(7)(a) of the Trade Marks Act(Cap 332, 2005 Revised Edition)

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This is an opposition against the trade mark application T0720701B by Ng Wee Ping forthe device mark,is as follows:

as a series of 2 marks (the representation of the 2 marks in series) in classes 14, 18 and 25 for use on:Class 14
Goods made of precious metals, their alloys or plated therewith, in particular, ornamental
objects, boxes and cases, powder compacts; jewellery, jewellery articles (includingfashion jewellery) in particular, rings, rings for keys, rings, earrings, cufflinks, bracelets,charms, brooches, chains, necklaces, tie pins, ornamental pins, medallions; timepieces
and chronometric instruments including watchstraps, watches, wristwatches, pendulum
clocks, pendulettes, alarm clocks, caskets and cases for timepieces.
Class 18
Leather and imitation leather; travelling bags, travelling sets (leather goods), trunks andsuitcases, garment bags for travel purposes, vanity cases, backpacks, shoulder bags,
handbags, attache cases, document holders and briefcases of leather, clutch bags, wallets,purses, key cases, card cases; umbrellas.
Class 25
Clothing and underwear including sweaters, shirts, tee-shirts, lingerie, belts (clothing),
scarves, neckties, shawls, vests, skirts, raincoats, overcoats, suspenders, trousers, denim
trousers, pullovers, dresses, jackets, sashes for wear, gloves, tights, socks, bathing suits,
bath robes, pajamas, nightshirts, shorts, pockets (clothing); shoes, boots, slippers;
headgear.
The Opponents was established in Manresa, Spain in 1920. In or around 1985, an
employee of the Opponents came up with a drawing of a bear design which subsequently
became known as the “TOUS Bear” mark and symbol of the Opponents. The Opponents’. In addition, the Opponents have earlier“TOUS Bear” mark looks like this :registrations (T0315786Z, T0315787H, T0315788F) all dated 7 May 2003 for the bearmark,in respect of the following goods:

Class 14 : Precious metals and their alloys and goods made of these materials or coatedtherewith not included in other classes; jewelry, precious stones; timepieces andchronometric instruments.
Class 18 : Bags, wallets and key holders of leather.
Class 25 : Clothing, footwear, headgear and belts (clothing).

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The Opponents also have an earlier registration for the same “TOUS Bear” mark in class
9 in respect of “spectacles and spectacle frames” in Singapore. The Opponents’ jewellery
products bearing the “TOUS Bear” mark were sold soon after 1985 in Spain. As theOpponents’ business grew, the Opponents’ range of products expanded from jewellery toother accessories such as bags, small leather articles, gloves, shawls, glasses, perfumes,chinaware and watches. The “TOUS Bear” mark appears on many of the Opponents’products. The Opponents have an international presence with numerous distributors andmore than 300 points of sale worldwide. In particular, the Opponents have numerous
retail stores in Hong Kong, Japan, Korea and China.
As for use in Singapore, the Opponents have been using the “TOUS BEAR” mark sinceat least 2002. In addition, the Opponents have also established an online store “TOUS
shops” in the US, Puerto Rico and Canada. The “TOUS BEAR” mark has been
advertised worldwide, including in Italian Vogue which is available in Singapore frommajor bookstores and newsstands, and in Ronda Iberia, which is the in-flight magazine of
the Spanish national airline Iberia which flies to Singapore. The Opponents have also
registered the “TOUS BEAR” mark in at least 50 countries such as the US, UK, Korea,
Hong Kong, Italy, Australia and Japan.
Held, allowing registration:
1. The Application Mark and the Opponents’ mark are visually dissimilar andconsists ofdistinguishable from each other. The Opponents’ earlier trade mark,a unique design of a teddy bear with rather distinctive and memorable features such as
facial features comprising of three dots and chubby, short lower limbs. The overall

impression of the Opponents’ earlier trade mark,, is that of a cute, bloatedbodied creature with distinctive and memorable features and a three-dimensional
appearance. The Application Mark, on the other hand,appears flatter and twodimensional. It is also a silhouette and has no facial or bodily features. Although the twomarks are conceptually and aurally similar, aural and conceptual similarity between thetwo marks is not the most important factor. In this case, the question whether the marks
are on the whole similar depends more on their visual similarity. As the marks arevisually dissimilar, the marks are therefore, overall, dissimilar. It is also clear that thegoods are similar. On the question of likelihood of confusion, from common knowledge
as well as from the Register, it is clear that the device of a bear or a teddy bear is quite
commonly used either as a trade mark or as an element (ornament, motifs, charms) as far
as trade in goods in Classes 14, 18 and 25 are concerned. As consumers are inundatedwith marks that bear the shape of a bear or a teddy bear, it is likely that they will exercise
a little more care and will not be quick to draw the conclusion that the goods with3

different-looking “teddy bear” marks come from the same commercial undertaking
simply because the concept of a teddy bear is used in the marks. Thus, there is no real
likelihood of confusion amongst the public. Therefore, the opposition under Section
8(2)(b) of the Trade Marks Act (Cap 332) 2005 Revised Edition fails.
2. As the Application Mark and the Opponents’ marks are dissimilar, the opposition underSection 8(4) of the Trade Marks Act (Cap 332) 2005 Revised Edition also fails. In anyevent, the Opponents failed to prove that their marks,in Singapore.
3.

oris well known

Whilst the Opponents have shown that there is goodwill associated with theormark, there is no
Opponents’ business through the Opponents’misrepresentation as the Application Mark and the Opponents’ marks are not similar andthere is also no likelihood of confusion amongst the public that the Applicant’s goods andthe Opponents’ goods originate from the same source. Therefore, the elements forpassing off have not been made out and the opposition under Section 8(7)(a) of the Trade
Marks Act (Cap 332) 2005 Revised Edition fails.
Provisions of legislation discussed:
Trade Marks Act (Cap. 332) 2005 Rev. Ed. Sections 8(2)(b), 8(4), 8(7)(a).
Cases referred to:
The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] 2 SLR(R) 690
The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2005] 4 SLR(R) 816
MediaCorp News Pte Ltd v Astro All Asia Networks PLC [2009] 4 SLR(R) 496
Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International) [2006] 2SLR(R) 669
Newmans Chocolate Ltd v Societe Produits Nestle SA [2003] SGIPOS 2
Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp) [2007] 1SLR(R) 1082
Goldlion Enterprises (Singapore) Pte Ltd v Baume & Mercier SA [2005] SGIPOS 10
British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281
Novelty Pte Ltd v Amanresorts Ltd and Another [2009] SGCA 13Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd [1991] 1 SLR(R)903
WILD CHILD Trade Mark [1998] RPC 455

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Representation:
Mr Ng Wee Ping in person for the Applicant
Mr Paul Teo and Ms Joanna Lim from Drew & Napier LLC for the Opponents

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