[2018] SGIPOS 11

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

Trade Mark No. T1005795F
24 April 2018

IN THE MATTER OF A TRADE MARK REGISTRATION
IN THE NAME OF

STAYWELL HOSPITALITY PTY LIMITEDAND

APPLICATION FOR INVALIDATION THEREOF BY

STARWOOD HOTELS & RESORTS WORLDWIDE, INC
AND
SHERATON INTERNATIONAL IP, LLC

Hearing Officer:

Ms Sandy Widjaja
Principal Assistant Registrar of Trade Marks

Representation:
Ms Elaine Tan and Mr Marcus Liu (Amica Law LLC) for the Applicants
Mr Gilbert Leong, Mr Alvin Lim and Ms Quek Jie Ying (Rodyk IP) for the Proprietor

GROUNDS OF DECISION

1This is not the first time that Starwood Hotels & Resorts Worldwide, Inc andSheraton International IP, LLC 1 . (“Applicants”) and Staywell Holdings Pty Limited 2(“Proprietor”) crossed swords before this Tribunal. The seminal case of Staywell
Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide Inc & anor [2014] 1
SLR 911 (“Staywell Court of Appeal”) arose out of a dispute between the parties before
this Tribunal. It would appear that the contention lingers; this case is intricately intertwinedwith the previous chain of disputes.
2
The Opposition before IPOS 3 then (“Staywell IPOS”) was against the Proprietor’s
mark T0802642I in Classes 35 and 43 brought by the Applicants. For ease of reference,
this chain of disputes shall be referred to as the “Previous Opposition Decision”4. The
marks in contention were:Previous Opposition Proceeding
Opponent’s Earlier Mark

Application Mark3

A brief chronology of the dispute is necessary and is as follows:

S/N
Date
1
8 September 20085
2

19 July 20113

18 April 20124

9 October 2012

5

5 July 2013

6

Event
initiated an Opposition action before thisApplicants
Tribunal.
Staywell IPOS was issued and the Applicants succeededin the Opposition action.
The Proprietor’s appeal to the High Court was heard on 18
April 2012.
The High Court issued its decision 7 (“Staywell High
Court”). The Proprietor succeeded and IPOS’ decision
was reversed.
The Applicants’ appeal to the Court of Appeal was heard
on 5 July 2013.

1

In the previous chain of actions, the Initiators were Starwood Hotels & Resorts Worldwide, Inc and Sheraton
International, Inc.
2
There was a transfer of ownership from Staywell Holdings Group Pty Limited to Staywell Holdings GroupPty Limited via CM8 filed on 15 February 2018 (see letter of 3 April 2018).
3
Starwwood Hotels & Resorts Worldwide, Inc and Another v Staywell Hospitality Group Pty Ltd [2011]
SGIPOS 7. In the Opposition, the current Proprietor was the Applicant and the current Applicants were theOpponents.
4
This reference is used as a general reference to the dispute regardless of the forum.
5
Staywell IPOS at [2].
6For ease of reference, the parties shall be referred to as per the current action.
7
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another [2013] 1 SLR
489.

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6

29 November 2013

Staywell Court of Appeal was issued. The appeal
succeeded. The High Court decision was reversed and the
IPOS’ decision reinstated.

4
In this instance, the Applicants are seeking to invalidate the registered markT1005795F (“Subject Mark”)

registered for the following services:(i)

Class 35
Advertising, marketing, promotion and publicity services; business management;
business administration; office functions; administration of the business affairs ofretail stores, advisory, information and consultancy services relating to all theaforesaid; all the aforesaid services also provided on-line from a computer databaseor via the global communications network; all included in class 35; and(ii)Class 43
Services for providing food and drink; temporary accommodation; hotel services;motel services; tourist homes; resort hotel services; hotel accommodation services;
hotel catering services; hotel reservation services; hotel restaurant services; provisionof hotel accommodation for business exhibitions, business fairs, conferences,
congresses, lectures and meetings; providing facilities [accommodation] for
conducting conferences, conventions, exhibitions, fairs and holidays; rental of
meeting rooms; hospitality services [accommodation]; hospitality suites [provisionof accommodation, food or drink]; holiday information and planning relating toaccommodation; inn keeping [bar, restaurant and accommodation]; restaurants;
cafes; bar and catering services; advisory, information and consultancy services
relating to all the aforesaid; all the aforesaid services also provided on-line from acomputer database or via the global communications network; all included in Class
43.

5
It is obvious that the only difference between the instant case and Staywell Court ofAppeal is the addition of the Chinese characters 柏•伟诗酒店 to the Subject Mark. I
therefore have to decide whether the addition of these Chinese characters will result in adifferent conclusion from that in Staywell Court of Appeal.
6
The transliteration and translation of the Chinese characters (as set out in theRegister 8reads:

8

See Exhibit 2 of the Applicants’ 3rd SD.

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The transliteration of the Chinese characters [柏•伟诗酒店] appearing in the mark is“Bai” which means “Cypress”, “Wei Shi” which has no meaning9 and “Jiu Dian”
which means “Hotel”.
[Emphasis in italics mine]
7
However, the Proprietor argued at the oral hearing that the clause in Register is forsearch purposes only 10 and instead referred to the version tendered via their evidence 11:
S/N
1
2
5
4

Chinese character
柏
伟
诗
酒店

Transliteration
bai
wei
shi
Jiu dian

Translation
CypressGreat
Poetry, poem
Hotel

8
I am inclined to accept the transliteration clause in Register as a more accurate
indication since it is more contemporaneous to the point of genesis of the Subject Mark.
This is in contrast to the Proprietor’s 1 st SD, which was tendered following the current
invalidation action brought against the Proprietor. Nonetheless, as we shall see, this issue
does not make much difference to the final conclusion.
9
Processwise, the Applicants filed their Form TM 28 and Statement of Grounds on 6
July 2015. The Proprietor filed its Counter-Statement on 5 November 2015. The
Applicants filed evidence in support of the invalidation on 12 October 2016. The
Proprietor filed evidence in support of the registration on 29 May 2017. The Applicants
filed their evidence in reply on 15 November 2017. A Pre-Hearing Review (“PHR”) was
conducted on 13 December 2017 12. The matter ultimately was set down for hearing, andheard, on 24 April 2018.
Grounds of Invalidation
10 The Applicants relied on Section 23 read with Section 7(6), Section 8(2)(b), Section
8(4)(b)(i) and 8(4)(b)(ii)(A) 13 and Section 8(7)(a) respectively of the Trade Marks Act(Cap 332, 2005 Rev Ed) (“Act”).

9This clause was inserted via TM27B filed on 30 July 2010.
Searches for earlier marks are conducted in the Trade Marks Registry under Section 8 of the Trade Marks
Act (Cap 332, 2005 Rev Ed) (“Act”).
11
See the Proprietor’s 1st SD at [7]. More discussion below.
12
Following the PHR, the Applicants confirmed via their letter of 10 January 2018 that they are not pursuing
Section 8(4)(b)(ii)(B) of the Act and that the primary marks relied upon are (i) T9512253G; and (ii)T0402585A for this action. For the avoidance of doubt, while there was a reference to T1014070E in theletter, this cannot be relied on since the date of application for that mark is after the relevant date of 7 May
2010 (see below).
13
See above.
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Applicants’ Evidence
11

The Applicants’ evidence comprises the following:
a)
b)
c)

statutory declaration of Marshall Donat, Vice President & Assistant Secretaryof the Applicants, dated 11 October 2016 (“Applicants’ 1st SD”);
statutory declaration of Elaine Tan, agent for the Applicants dated 12 October
2016 (“Applicants’ 2nd SD”); andstatutory declaration of Marshall Donat, dated 13 November 2017(“Applicants’ 3rd SD”).

Proprietor’s Evidence
12

The Proprietor’s evidence comprises the following:a)b)

statutory declaration of Ng Chin Bee, Associate Professor in the division of
Linguistics and Multilingual Studies in Nanyang Technological University’s
School of Humanities and Social Sciences, dated 25 May 2017 (“Proprietor's
1st SD”); andstatutory declaration of Richard Robert Macfie Doyle, Executive Director andCorporate Counsel of the Proprietor, dated 26 May 2017 (“Proprietor’s 2 nd
SD”).

Burden of Proof for Invalidation
13 Under Section 101(c)(i) of the Act, “the registration of a person as proprietor of aregistered trade mark shall be prima facie evidence of the validity of the originalregistration”. Thus the burden of proof lies with the Applicants to establish the grounds ofinvalidity on a balance of probabilities.
Background
14 The Applicants deposed that they are one of the leading hotels and leisure companies
in the world 14 ([5] of the Applicants’ 1 st SD), and that they manage more than 1200
properties worldwide, including properties under brands such as W Hotels, Westin and
Sheraton ([6] of the Applicants’ 1 st SD). The first St Regis was opened in New York in
1904. The Applicants deposed that the St Regis hotels and luxury accommodation are
known for their unrivalled dimension of luxury ([7] of the Applicants’ 1 st SD). To date,there are more than 38 St Regis properties in about 23 countries worldwide and as manyas 19 properties scheduled to open in the coming years ([8] of the Applicants’ 1 st SD).
15 The Proprietor deposed it is one of the largest independently owned hotelmanagement groups in the Asia Pacific region ([6] of the Proprietor’s 2 nd SD). The PARKREGIS brand has been continuously put to use worldwide since 1968 by the Proprietor and
14

The Applicants deposed that Sheraton International IP, LLC is a subsidiary of Starwood Hotels & Resorts
Worldwide, Inc. ([5] of the Applicants’ 1st SD).

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its predecessors in respect of the services covered under the Subject Mark in Classes 35
and 43 ([7] of the Proprietor’s 2nd SD). Accommodations provided under the PARKREGIS brand are usually 4-star hotel styled, targeted at business travellers ([8] of theProprietor’s 2nd SD).
16 Currently, the Proprietor has a network of over 30 properties in Australia, Singapore,
Indonesia, India, the UAE and the UK. It also has properties under development in,amongst others, China ([9] of the Proprietor’s 2 nd SD).
17

For ease of reference, the parties’ submissions are as follows:
The Applicants’ written submissions filed on 26 March 2018 (“AWS1”);The Applicants’ rebuttal written submissions filed on 23 March 2018
(AWS2”);(iii) The Proprietor’s written submissions filed on 26 March 2018 (“PWS1”);(iv) The Proprietor’s additional written submissions filed on 10 April 2018(“PWS2”).
(i)(ii)

MAIN DECISION

Ground of Invalidation under Section 7(6)18

The relevant provisions of the Act are Sections 23 and 7:
23.—(1) The registration of a trade mark may be declared invalid on the groundthat the trade mark was registered in breach of section 7.
7(6) A trade mark shall not be registered if or to the extent that the application ismade in bad faith.

Decision on Section 7(6) 15
19 The legal test for determining the presence of bad faith is fairly settled and is
encapsulated in Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203(“Valentino”). The key principles were helpfully summarised by the Principal Assistant
Registrar (“PAR”) in Christie Manson & Woods Limited v Chritrs Auction Pte. Limited[2016] SGIPOS 1 at [166]:[166(a)] “Bad faith” embraces not only actual dishonesty but also dealings which
would be considered as commercially unacceptable by reasonable and experienced
persons in a particular trade, even though such dealings may otherwise involve ‘nobreach of any duty, obligation, prohibition or requirement that is legally binding’upon the registrant of the trade mark’: Valentino at [28].
15

No cross-examination was requested in this action.

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[166(b)] The test for determining bad faith is the combined test of bad faith whichcontains both a subjective element (viz, what the particular applicant knows) and an
objective element (viz, what ordinary persons adopting proper standards would
think). Thus, “bad faith” as a concept is context-dependent. In the final analysis,
whether bad faith exists or not hinges on the specific factual matrix of each case:
Valentino at [29].
[166(c)] Once a prima facie case of bad faith is made out by the [Applicants], theburden of disproving any element of bad faith on the part of the [Proprietor] would
arise: Valentino at [36].
[166(d)] An allegation of bad faith is a serious claim to make and it must be
sufficiently supported by the evidence, which will rarely be possible by a process ofinference: Valentino at [30]…[However] this is not an absolute prohibition…in
Festina Lotus SA v Romanson Co Ltd [2010] 4 SLR 552 at [115]…the High Court
pointed out that a finding of bad faith is largely, if not invariably, based on
circumstantial evidence.
[166(e)] Once bad faith is established, the application for registration of a mark must
be refused even though the mark would not cause any confusion: Valentino at [20].
20 In addition, Festina Lotus SA v Romanson Co Ltd [2010] 4 SLR 552 provided at [100]and [115]:[100] Bad faith is to be determined as at the date of application and matters which
occurred after the date of application which may assist in determining the applicant’s
state of mind as at the date of application can be taken into consideration…
[115] …despite the broad nature of the notion of bad faith, one must show some sortof nexus between the parties in dispute. Otherwise, the notion of bad faith would
have to be decided in vacuum…In other words, while the finding of bad faith islargely, if not invariably, based on circumstantial evidence, the party alleging bad
faith needs to show some link between the parties, perhaps by way of a pre-existing
relationship or some acts of association with the proprietor or some nexus between
the two competing marks.
[Emphasis in bold mine]
In this case, the relevant date is the date of application of the Subject Mark, that is, 7 May
2010 (“Relevant Date”).
21

The Applicants’ case is that ([17] and [18] AWS1):

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a)

By reason of the Previous Opposition Decision as well as the concurrent
proceedings in several other jurisdictions, the Proprietor had actual knowledgeof the Applicants’ earlier trade marks16.

b)

The Proprietor is well aware of the Applicants’ opposition to the registrationof any mark that contains the word “REGIS” by the Proprietor.

c)

The conduct of the Proprietor in applying to register the Subject Mark fell shortof the normally accepted standards of commercial behaviour as it was merely
an attempt to put some distance between the Proprietor and the Applicants forthe purposes of securing a registration, but without the mark being a true
reflection of the intended or actual form of use.

22 The Applicants submitted that “[i]t is unclear when the Proprietor started to actually
use the Chinese characters 柏•伟诗酒店 together with its “Park Regis” name” ([22]AWS1). Importantly, where there is use of the Chinese characters, the Proprietor ha s not
used the Subject Mark in the form as registered:
S/N

Subject Mark as used

Reference[23] AWS1 17

12[23] AWS1 18

3[12] PWS2

23 The Applicants relied on PT Swakarya Indah Busana v Dhan International Exim Pte
Ltd [2010] 2 SLR 109 (“PT Swakarya”) ([6] AWS2) and highlighted that the Chinesecharacters as shown are in a font size which is significantly smaller than that used for the
English portions of the mark ([23] AWS1)19. The Applicants argued that “[e]ven though

16

More below.
There are added Chinese characters, 新加坡 (meaning “Singapore”) in front,
18
As above.
19
Contrast this to the Subject Mark (above).
17-8-the evidence relates to use of the mark after the Relevant Date 20…the evidence is still
relevant and useful as they ‘assist in determining the applicant’s state of mind at the dateof registration’” ([25] AWS1 21).
24 I agree with the Applicants that it is clear from the Proprietor’s 2nd SD 22 that they
have not been using the Subject Mark as registered, and that at first blush, it appears thatthe facts of this case are analogous to the facts in PT Swakarya.
25 However, in the current case, I am of the view that such an intention not to use the
Subject Mark as registered could not be attributed to the Proprietor as at the Relevant Date.
This is because, as the Proprietor submitted at the hearing, as at the Relevant Date, there
was nothing to suggest that the Proprietor will not prevail in relation to the Previous
Opposition Decision (see also [33] PWS1).
26 For ease of reference, the brief chronology in relation to the Previous Opposition
Decision is replicated below:
S/N
1
2
3
4
5
6

Date
8 September 2008

Event
Applicants initiated an Opposition action.
Relevant Date, i.e.7 May 201019 July 2011
Staywell IPOS was issued. The Applicants succeeded in
the Opposition action.
18 April 2012
The Proprietor appealed and the matter was heard in theHigh Court.
9 October 2012
The High Court allowed the appeal and Staywell High
Court was issued. The Proprietor succeeded.
5 July 2013
The Applicants appealed and the matter was heard in the
Court of Appeal.
29 November 2013 Staywell Court of Appeal was issued and the Court ofAppeal allowed the appeal.

As can be seen from the above, the Proprietor did succeed in Staywell High Court.
27 Further, the Proprietor provided a credible explanation as to the genesis of the
Subject Mark ([8] of PWS2). The Proprietor deposed that “[t]he words “PARK REGIS”
were chosen to reflect the fact that the “PARK REGIS” hotel in Sydney was built on Park
Street, near Hyde Park…” ([22] of the Proprietor’s 2 nd SD).

20

The evidence of use of the Subject Mark submitted by the Proprietor suggests that the Proprietor firstcommenced use some time in or about mid-2015. See for example the bottles of water at page 87 of Exhibit
3 of the Proprietor’s 2nd SD, which is part of a blog dated 2 June 2015 (see page 85).
21
Quoting Sotheby's v Sichuan Softbill Auction Co, Ltd [2010] SGIPOS 15 at [30].
22
See for example, page 240 Exhibit 3 of the Proprietor’s 2nd SD; which was dated for the period 1 July - 30
September 2015.

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28 As the Court of Appeal stated in Valentino at [21], “[i]t is in line with common sense
and logic that he who asserts must prove”. In the current case, in light of all of the above,
I am of the view that the Applicants have not made out “a prima facie case of bad faith” 23.
29 It is questionable why the Proprietor initiated use24 of the Subject Mark in Singapore
as reflected above (that is, with the Chinese characters in a font size which is significantly
smaller than that used for the English portions of the Subject Mark) in 2015,25 in light ofStaywell Court of Appeal which was issued on 29 November 2013. Nonetheless, this was
not the state of affairs as at the Relevant Date.
30

In light of the above, the objection under Section 7(6) fails.

Ground of Invalidation under Section 8(2)(b)31

The relevant provisions are:23(3) The registration of a trade mark may be declared invalid on the
ground —(a) that there is an earlier trade mark in relation to which —(i) the conditions set out in section 8(1) or (2) apply…
unless the proprietor of that earlier trade mark or other earlier right has consented to
the registration.
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
32 The 3-step test approach in relation to an objection under Section 8(2)(b) was reaffirmed in Staywell Court of Appeal (at [15] and [55]):
a)

The first two elements - namely similarity or identity of the marks andsimilarity or identity of the goods / services - are assessed individually before
the final element which is assessed in the round.

23

See Valentino at [33]; the Proprietor honestly believed that it had a right to registration and/or use the
Subject Mark as at the Relevant Date (PWS2 at [7]).
24This is in contrast to making an application as at the Relevant Date.
25
See for example, Exhibit 3 of the Proprietor’s 2nd SD at page 266 which was dated around the 4th quarterof 2016.

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b)

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
33 The law in relation to this issue is as follows (Staywell Court of Appeal at [15] to[30]):a)b)

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

c)

A productive and appropriate application of the step-by-step approachnecessitates that the court reaches a meaningful conclusion at each stage of theinquiry.

d)

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

e)Technical distinctiveness is an integral factor in the marks-similarity inquiry.
A mark which has greater technical distinctiveness enjoys a high threshold
before a competing sign will be considered dissimilar to it.

f)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.

g)

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.

34 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 at [40(c)] and [40(d)] ("HaiTong"):- 11 -

[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.
35 The Opponent relies on the following earlier marks (collectively, Applicants’ Earlier
Marks) ([11] AWS1):
S/N

Applicants’ Earlier
Marks

1

Class

T9512253GClass 42
Hotel, motel, resort, restaurant, bar, cocktail lounge, foodand beverage services.

T9512252I

Class 41Entertainment services, casino and gaming services,
amusement and theme park services.

2

3

Class 36
T0511703B

4

Real estate brokerage, real estate and land acquisition, realestate agencies relating to the managing and arranging forownership of real estate, condominiums, apartments; realestate investment, real estate management, real estateagencies relating to real estate time sharing and leasing ofreal estate and real estate property, including
condominiums and apartments.
Class 37
Building construction services.

T0511704J
5Class 30
T0902836J

6
T0402585A26

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial
coffee; flour and preparations made from cereals, bread,
pastry and confectionery, ices; honey, treacle; yeast,
baking-powder;salt,mustard;vinegar,sauces(condiments); spices; ice.
Class 43
Hotel, motel, resort, restaurant, bar, cocktail lounge, foodand beverage services and reservation services.

26

The transliteration of the Chinese characters of which the mark consists is "Rui Ji" which has no meaning.
(as set out in the Register).

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36 In response to the PAR’s queries at the PHR, the Applicants clarified via their letterof 10 January 2018, that they will be relying on the following marks as their primary marks:
S/N

1

Applicants’ Earlier
Class
Marks27
Applicants’ Earlier St Regis MarkClass 42
Hotel, motel, resort, restaurant, bar, cocktail lounge, foodand beverage services.
T9512253G

6
T0402585A

Applicants’ Earlier
MarkClass 43
Hotel, motel, resort, restaurant, bar, cocktail lounge, foodand beverage services and reservation services.

37 It is clear that between the 2 marks above, the Applicants’ Earlier St Regis Mark is
closer to the Subject Mark. This means that if the Applicants’ Earlier St Regis Mark is
found not to be similar to the Subject Mark, the same will hold true for the Applicants’
EarlierMark. Thus, the focus of the analysis below will be on Applicants’ Earlier
St Regis Mark.
38

The Applicants’ central line of argument is as follows ([34] AWS1):[34] In [Staywell Court of Appeal], the Court of Appeal found the “Regis”
component in the [Applicants’ Earlier St Regis Mark] and the [Proprietor’s markin Previous Opposition Decision] to be the dominant and distinctive
component in both marks…For reasons set out below, we submit that the dominantcomponent in the [Subject Mark] remains the word “Regis”, notwithstanding theaddition of the Chinese characters 柏·伟诗酒店…

39 Not surprisingly, a key tenet of the Proprietor’s argument is that Staywell Court ofAppeal is not binding since the mark in contention in this instance, is different ([47], [48],[50] and [50] PWS1):[47]The Applicants allege that the word, “REGIS” is the dominant part of the[Applicants’ Earlier St Regis Mark]. The Applicants relied heavily on the judgment
in [Staywell Court of Appeal] particularly on the findings of similarity by the[Staywell Court of Appeal]…that “REGIS” is the distinctive element and that the “” and “” marks are similar on the basis that there is a highdegree of aural similarity and a fair degree of conceptual similarity.

On the otherhand, the Chinese characters were translated to mean “lucky” at the Proprietor’s 1st SD.
27
See above footnote about T1014070E.

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[48] The Applicants contended in the [Applicants’ 1st SD] at [30], that, “the abovefinding of facts are incontrovertible and cannot be challenged in Singapore. I havebeen advised and verily believe that this decision is binding on the Registrar”. In
essence, the Applicants have averred that the finding of facts in the [Staywell Courtof Appeal] is binding on the Registrar to find that, notwithstanding …thechanges…in the [Subject Mark], the word “REGIS” remains the dominant featureof the [Subject Mark] and must be similar to the [Applicants’ Earlier St Regis
Mark.]…
[50] We submit that the Applicants are wrong in law. What is “dominant” in a mark,and what “stands out” must necessarily depend on the various components that makeup the mark…The Applicants should know that the principle of stare decisis only
applies to the ratio decidendi of the case and not a finding of fact.
[51] The [Subject Mark] combines the Chinese characters “柏·伟诗酒店” with the“PARK REGIS” words and the purple fleur-de-lis device. It cannot be said that
[Staywell Court of Appeal]…(which deals with a different mark owned by the
Proprietor) binds the Registrar in this case. Clearly, the Registry is concerned with acompletely different mark with that in [Staywell Court of Appeal].
40 For clarity, Osborn’s Concise Law Dictionary (Sweet & Maxwell, 8th Ed) defines
these terms as follows:
stare decisis: The ‘sacred principle’ of English law by which precedents areauthoritative and binding…
(ii) ratio decidendi: The legal reason (or ground) for a judicial decision.
(iii) Precedent: A judgement or decision of a court of law cited as authority for
deciding a similar set of facts; a case which serves as an authority for the legal
principle embodied in its decision.
(i)

41 While the ratio decidendi is the legal reasoning in a decision, it does not exist in a
vacuum and is grounded on a particular set of circumstances. Whilst Staywell Court ofAppeal is not strictly binding on me as the marks involved are different, nonetheless, itsfindings and observations are obviously highly persuasive, in light of the fact that the marks
involved there are highly similar to the marks here.
42

For ease of reference only, the marks are as follows:
Current Invalidation Proceeding
Applicants’ Earlier St Regis Mark

Subject MarkPrevious Opposition Proceeding- 14 -

Application Mark

Opponent’s Earlier Mark

43 It is clear that the only difference between the Subject Mark and the Application
Mark in the Previous Opposition Decision are the Chinese characters, “柏•伟诗酒店” 28.
On the other hand, the Applicants are relying on the exact same mark as their earlier markin the current case, namely, the Applicants’ Earlier St Regis Mark. Thus the key is
whether the inclusion of the Chinese characters in the Subject Mark will result in adifferent outcome to that in Staywell Court of Appeal.
Distinctiveness44 As elucidated in Staywell Court of Appeal, distinctiveness is a factor integrated into
the visual, aural and conceptual analysis as to whether the competing marks are similar and
it is not a separate step within the marks-similarity inquiry. However, having regard to theapproach in Hai Tong at [26]29), I make the following observation.
45

The High Court in Staywell High Court opined at [18], [19] and [20]:[18]...In the present case, the Opponents contend that the word “REGIS” is inventive
and fanciful when used for hotel services as it is in no way descriptive of the hotel
on offer. It is a randomly chosen word which distinguishes the Opponents’ hotels
from others. Although Staywell had argued that “REGIS” is a common name and“Saint Regis” may be a historical person who had been elevated to sainthood, themarks had to be considered in the light of the services for which they were registered.
The choice of “ST. REGIS” or “REGIS” for a commercial hotel was entirely random.
[19] From the evidence, the word “regis” has various applications. In Latin, it means“of the king”…It is also the name of a catholic saint, one St John Regis, who lived
in France in the 16th century. The word “regis” has been used as the first name of anumber of notable, though not world famous, people. It is also used as a surname anda place name in England and Germany. Despite all the examples of its use that havebeen given to me by Staywell30, however, I cannot conclude that it is a common place
word in English…It is also irrefutable that the word is not descriptive of and does
not connote the hospitality industry or hotel services in any way.
[20]…In the present case, “regis” is not a common word used in the hotel industry…
it is distinctive enough that a higher threshold for dissimilarity would apply than thatused in Ozone where the court had to determine the similarity of the marks

28

The fact that the Application Mark was portrayed in a series does not affect the analysis. See Section 17of the Act as to the definition of a “series of trade marks”.
29
The Court of Appeal commented at [26] that for the purpose of elucidating the analytical process, they
have highlighted distinctiveness as a separate step.
30
The Proprietor also argued that “ST. REGIS” will be understood as “a census-designated place in Mineral
County, Montana, United States (PWS1 at [75]). However, I am of the view that it is highly unlikely that
Applicants’ Earlier St Regis Mark will be understood as such in the local context.

- 15 -

“HYSTERIC GLAMOUR” and “GLAMOUR”. Although the Opponents
emphasised the word “REGIS”, the registered mark is “ST. REGIS” and the
Opponents’ Mark must be looked at as a whole in comparison with the Application
Mark as a whole, ie, “PARK REGIS”. However, even taking the whole of the mark“ST. REGIS”, that name when applied to a hotel is as fanciful as “Regis” on its own
since a saint is not generally associated with a hotel of any sort, let alone a luxurious
one. Thus, the addition of “St.” does not change the mark’s place on the scale ofdistinctiveness.
[Emphasis in italics mine]
It is to be noted that the Court of Appeal in Staywell Court of Appeal did not disagree with
Staywell High Court on this (subject to the issue of conceptual similarity, below).
46 In light of the above, Applicants’ Earlier St Regis Mark “is distinctive enough thata higher threshold for dissimilarity would apply” (Staywell High Court at [20]), having
regard to the main distinctive component REGIS (subject to the issue of conceptual
similarity, below).
Visual Similarity
47

The PAR held in Staywell IPOS at [54] that:[54] Visually, other than the word, "REGIS", both the Application Mark and the
Opponents' mark are quite different as the Application Mark contains visual elements
such as the fleur-de-lis device…Based on a visual comparison of the Application
Mark and the Opponents' mark, there are some differences.

48 Curiously, the finding on visual dissimilarity was not appealed against in the High
Court 31 and the Court of Appeal 32 . Nonetheless, the finding in Staywell IPOS is notbinding on me. With the benefit of Staywell Court of Appeal, the issue of visual similarity
can be viewed in a different light.
49

Again, for ease of comparison only, the marks are as follows:
Current Invalidation Proceeding
Applicants’ Earlier St Regis Mark

Subject MarkPrevious Opposition Proceeding
Opponents’ Earlier Mark

Application Mark / Previous Park
Regis Mark31
32

See Staywell High Court at [21].
See Staywell Court of Appeal at [12(a)(i)].

- 16 -

50 As submitted by the Applicant at [50] AWS1, “[w]here marks share a common
element, the starting point of the analysis is whether the common element in the marks is
so dominant as to render the differences ineffective to obscure the similarity between thetwo”.33
51

The Proprietor argued that ([58] PWS1):[58] While both marks share a common element, “REGIS”, this is not sufficient toconclude that the marks are visually similar (see Polo/Lauren at [26]). In the present
case, we submit that the overall visual impression created by the [Subject Mark] andthe [Applicants’ Earlier St Regis Mark] is totally different due to the distinguishinggraphic device and the presence of distinctive set of Chinese characters in the[Subject Mark].

52 In assessing the visual similarity of composite marks, the guidelines set out by the
Court of Appeal at [62] of Hai Tong is pertinent:[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.
(d) The textual component of a composite mark or sign could (but will not necessarilyor always) be the dominant component of the mark or sign. Some instances 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 bear words
which are entirely different from each other.
(ii) The textual component is large, and is in a prominent location in relation tothe 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.
(e) The device component has been found to be an equally significant, if not thedominant, component of a composite mark or sign where:(i) the device is significant and large;

33

Citing The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2005] 4 SLR(R) 816.

- 17 -

(ii) the accompanying word(s) are devoid of any distinctive character, or are
purely descriptive of the device component; or(iii) the device component is of a complicated nature.
(f) But usually not where:(i) the device is simple and will not evoke any particular concept for the
average consumer;(ii) 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; or(iii) the device component is more likely to be perceived as a decorative
element rather than as an element indicating commercial origin.
[Emphasis in italics mine].
53 I start by saying that I am unable to agree with the Proprietor’s argument at the oral
hearing that the 3 different elements, namely the device, “Park Regis” and the Chinesecharacters are respectively of equal importance. In my view, if there is a need to accord
weight in terms of the size of the components relative to the Subject Mark, I would
apportion (i) device – 20%; (ii) PARK REGIS – 45%; and (iii) 柏•伟诗酒店 - 35%. Also,
notably, 柏•伟诗酒店 appears below PARK REGIS.
Device54 I am of the view that the fleur-de-lis device is not dominant as it will only be viewed
as a decorative element having regard to the distinctiveness of the word “Regis” as well as
the positioning of the same.
55 Even if I am wrong, and there is some significance to be accorded to the device, itdoes not change the conclusion that REGIS remains as the distinctive component of the
Subject Mark. This is because aside from the visual attributes of the various components
of a mark, the meaning of the same also affects the visual appreciation of a mark34.
56 I refer to Exhibit 5 of the Proprietor’s 2 nd SD, which is an extract of a Wikipedia
entry in relation to the fleur-de-lis (page 410 of Exhibit 5 of the Proprietor’s 2 nd SD):
Usages
While the fleur-de-lis has appeared on countless European coat of arms and flags
over the centuries, it is particularly associated with the French monarchy in ahistorical context…
34

In this regard, there is some overlap with the issue of conceptual similarity.

- 18 -

[Emphasis in italics mine]
57 The concept of kingship exuded by the device is unmistakable 35 . Thus if any
significance is to be attached to the fleur-de-lis device, it merely augments the word
“Regis”. In this regard, it is to be recalled that “Regis” means “of the King” in Latin 36.
Thus the fleur-de-lis device does not and cannot displace the similarity between the marks
due to the presence of the common word REGIS.
“PARK”
58 The Court of Appeal in Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2017]
2 SLR 308 ("Caesarstone") commented at [41] (see [52] AWS1):[41] We agree with the Appellant that the word “stone” is merely descriptive of thegoods in Class 19. In this regard, the public will not generally consider a descriptive
element forming part of a complex mark as the distinctive and dominant element of
the overall impression conveyed by that mark…and, for this reason, we do not thinkthat the presence of such a descriptive element can fairly be regarded as being
effective to displace similarity.
[Emphasis in italics mine].
59

In the current case, the Applicants argued at [53(b)] AWS1:[53(b)] The word “Park” in the [Subject Mark] could be descriptive of the locationof the Proprietor’s property37 and therefore is unlikely to be regarded as a dominantand distinctive element in the overall impression to be conveyed by the mark.

[Emphasis mine]
60 I agree. This is particularly so in light of the services 38 for which the Subject Markis registered39. For example, PARK can clearly be descriptive of hotel services for which
the Subject Mark is registered 40.
35

It is observed that Staywell Court of Appeal implied, in the context of discussing conceptual similarity,that the fleur-de-lis device exudes a connotation of royalty (see [36] Staywell Court of Appeal).
36
See Staywell High Court at [19], above and also [75] PWS1.
37
See also Staywell Court of Appeal at [37] in the context of conceptual similarity, commenting that:[37] …Similarly, the word “Park”, as noted by the Judge, connotes the idea of a geographical location
though not necessarily of any particular type…
[Emphasis in italics mine]38
See Staywell High Court at [18], above. See also Monster Energy Company v Mixi Inc., SGIPOS [2017]
12 at [35] where the learned Assistant Registrar commented that “technical distinctiveness (in the markssimilarity assessment) is not necessarily confined to technical distinctiveness in the abstract. The services (orgoods) can be taken into account insofar as they relate to distinctiveness.”39
See above for the specifications in Class 35 and 43 for which the Subject Mark is registered.
40
Notably, the Proprietor deposed that “[t]he words “PARK REGIS” were chosen to reflect the fact that the“PARK REGIS” hotel in Sydney was built on Park Street, near Hyde Park…” ([22] of the Proprietor’s 2ndSD). While the intention of the Proprietor is not relevant to the perception of the consumer (see Carolina- 19 -

61 Thus, quoting from Caesarstone at [41], I “do not think that the presence of such a
descriptive element [namely, PARK] can fairly be regarded as being effective to displace
similarity” between the marks.
Chinese Characters – “柏•伟诗酒店”
62 As alluded to above, the transliteration and translation of the Chinese characters are
as follows41:
S/N
1
2
5
4
63

Chinese character
柏
伟
诗
酒店

Transliteration
bai
wei
shi
Jiu dian

Translation
CypressGreat
Poetry, poem
Hotel

The Applicants submitted ([43], [45],42 [54] and [56] AWS1):[43] First, from the point of view of consumers who are not conversant in Chinese,
the Chinese characters 柏•伟诗酒店 would likely be viewed simply as a decorative
element which has little or no significance43… It cannot be assumed that consumers
in Singapore would understand and/or read Chinese; there exists a significant part of
the Singapore population that do not read or understand Chinese….insofar as thelikely users of the services of both parties are going to be foreign tourists, asignificant portion of such tourists would not understand Chinese. The [Subject
Mark] is therefore likely to be remembered by the English elements in the mark.
[45] It bears highlighting that most of the evidence of use submitted by the Proprietor
is in the English language. The evidence of use submitted by the Proprietor reinforces
the fact that English being the working language in Singapore, makes it all the more
likely that most consumers in Singapore would refer to the English components in
the [Subject Mark] when referring to the Proprietor of its hotel in Singapore. Thiswas recognized in the case Seiko Holdings Kabushiki Kaisha (Trading as Seiko
Holdings Corporation) v Seiko Advance Limited [2011] SGIPOS 3 (“Seiko”) where
it was held at [45]:[45] I agree with the Opponents who have correctly pointed out that themembers of the public will be more likely to refer to the composite Application

Herrera., Ltd v Lacoste [2014] 3 at [56], in the context of the analysis of conceptual similarity), it does
support the argument above.
41
See the Proprietor’s 1st SD at [7]. More discussion below.
42
Paragraphs [43] to [45] AWS1 were argued in the context of the issue of distinctiveness.
43
The Applicants relied on Youyou Food Co Ltd v Tien Lei Trading Ltd and Yongsong Zhao, Case O-27016 (UKIPO), where the marks in dispute were the registered mark- 20 -and earlier mark.

mark by the readable portion which contains English words 44. The tendency is
to refer to that portion because English is the working language in Singapore,is spoken by the majority as a first language and people in general will gravitate
towards the language most familiar to them[54] The Chinese characters 柏•伟诗酒店 in the [Subject Mark] does little to alter
the fact that the [Subject Mark] is visually similar to the [Applicants’ Earlier St
Regis Mark]…consumers in Singapore are more likely to recollect the English
portion of the marks.
[56] …the dominant and distinctive element in both marks is the word “Regis”. As
such…it is submitted the [Subject Mark] is visually similar [to the Applicants’
Earlier St Regis Mark] notwithstanding the addition of the fleur-de-lis device andthe Chinese characters 柏•伟诗酒店 in the [Subject Mark].
[Emphasis as underlined the Applicants’]64 The Proprietor stressed at the oral hearing that 柏 • 伟 诗 酒 店 is not a meretransliteration or translation of PARK REGIS. The Proprietor submitted that 柏•伟诗酒
店 is a new trade mark, namely, the Proprietor’s Chinese trade mark. Being the Chinesename of the Proprietor, the Chinese characters are distinctive in their own right such thatthey cannot be ignored. In particular, the Proprietor pointed out that having no fixed
meaning, the Chinese characters can be considered to be inventive and thus possess a “highlevel of distinctiveness” (see [36] PWS2).
65

The Proprietor deposed at the Proprietor’s 1st SD at [7]:[7] …the Chinese characters 柏•伟诗酒店 are translated and transliterated…asfollows:
S/N
1
2
5
4

Chinese character
柏
伟
诗
酒店

Transliteration
bai
wei
shi
Jiu dian

Translation
CypressGreat
Poetry, poem
Hotel

The phrase, 柏 • 伟 诗 酒 店 does not have a fixed meaning in the Chinese
language...This dictionary contains no mention of the phrase 柏•伟诗酒店 either as
a distinct entry in the dictionary or as an example (i.e. used in a phrase when thatcharacter is conjoined with other characters) in connection with each of the characterin the Subject Mark.
44

While the application mark in Seiko is different from the current case in that it consists of English words
and Japanese Kanji and Katakana characters, this does not in anyway diminish the PAR’s view that “English
is the working language in Singapore…[and]…is spoken by the majority as a first language..”.

- 21 -

[Emphasis in italics mine]
66 The Proprietor further clarified that it is referring to the 3 rd method of creating
Chinese marks as described in the article Issue 10 – Focus on Trade Mark Names in China
in the Applicants’ 3rd SD at Exhibit 1, pages 12 - 14:
Three ways to choose your Chinese trade mark name1.

Create a literal translation

A literal translation works when the trade mark has a distinctive meaning. For
example, Apple computers chose the brand name “Ping Guo” ( 苹果), which is
Chinese for ‘apple’…The disadvantage of this method is that the Chinese characterswill sound different from your original trade mark. This means that marketing timeand money will need to be spent on building association between your Roman
character trade mark and the Chinese character trade mark.
2.

Create a phonetic translation

A phonetic translation involves creating a Chinese character name which sounds likeyour trade mark. Pinyin is the official Chinese phonetic alphabet that uses Roman
characters, which can be used to create the transliteration. For example, “McDonald”
is known as “Mai Dang Lao” (麥当劳) to local Chinese consumers…
3.

Combine a literal and phonetic translation

The best trade marks are those which sound the same and also make reference to adefining characteristic of your brand or have a positive meaning in Chinese culture.
For example…Coca Cola finally settled with “Ke Kou Ke Le” (可口可乐), whichmeans “taste and be happy”…
[Emphasis in italics mine]
67 As mentioned above, aside from the visual attributes of the various elements of amark, the meaning of the mark also affects the visual appreciation of a mark 45 . This
necessarily means that the visual perception of the Subject Mark is influenced by thelanguage of the different constituents of a mark.
68 As there is no clear guide in relation to the comparison of marks consisting /containing Chinese characters and Roman letters in the local context, I turn to the Hong
Kong Intellectual Property Department (HKIPD) Work Manual 46. In the chapter Foreign
words, letters or characters:
45

In this regard, there is some overlap with the issue of conceptual similarity.

46

https://www.ipd.gov.hk/eng/intellectual_property/trademarks/registry/Foreign_words_letters_or_characters.pdf- 22 -Examination on prima facie basis
In examining applications for registration of trade marks which include foreign
words, letters or characters on prima facie basis, we will generally consider thefollowing factors:▪

Meaning generally known?

There are no grounds for refusing registration of trade marks on the basis that they
are relevantly descriptive or non-distinctive in a language which is unlikely to beunderstood by the relevant Hong Kong consumers of the goods or services inquestion…
On the contrary, trade marks which include foreign words, letters or characters which
are descriptive or indistinctive of the applied-for goods or services and are generally
known to the relevant consumers of such goods or services in Hong Kong areunregistrable. For example, the word “ICHIBAN” meaning “the best” in Japanese isunregistrable in respect of any types of applied-for goods or services since theaverage consumer in Hong Kong will understand this laudatory meaning.
[Emphasis in italics mine]
Therefore, a key consideration is whether the language of the words/characters in question(of the various constituents of a mark) will be understood by the relevant consumer.
69 Having regard to the demographics of Singapore, I am of the view that Chinese will
be understood in the local context such that it is not likely that 柏•伟诗酒店 will be viewed
simply as a decorative element 47. Nonetheless, having regard to the fact that English is theworking language in Singapore, I am also of the view that 柏•伟诗酒店 are of secondary
significance in comparison to “PARK REGIS”.
70 As acknowledged by the learned PAR in Seiko48 “English is the working languagein Singapore…[and]…is spoken by the majority as a first language”. I also take judicial
notice of the following excerpt from Wikipedia 49:…English became the lingua franca due to British rule of Singapore, and was madethe main language upon Singaporean independence. Thus, English is the medium of
instruction in schools, and is also the main language used in formal settings such as
in government departments and the courts. As President Halimah Yacob said during
47

In the recent case of Inner Mongolia Little Sheep Catering Chain Co. Ltd. v Grassland Xiao Fei Yang Pte
Ltd [2018] SGIPOS 6, where the marks at issue were “XIAO FEI YANG” and “小肥羊” , the learned AR
commented, albeit obiter dicta that:[70(c)] …In Singapore, the demographics are such that a large majority of the population is of Chinese
ethnicity or descent. And, apart from ethnicity, a large proportion of the public in Singapore would
have at least a basic command of Mandarin Chinese…
48
At [45]; see above discussion.
49
https://en.m.wikipedia.org/wiki/Languages_of_Singapore 11/ [viewed on 9 July 2018.]- 23 -

her 2018 speech, “Through the education system, we adopted a common working
language in English.”…
71 I agree with the Proprietor that Singapore is a multi-ethic and multi-lingual societyof which the majority are Chinese ([4] of the Proprietor’s 1 st SD) who are literate in both
Chinese and English ([5] of the Proprietor’s 1 st SD). I refer to 2 publications from theSingapore Department of Statistics, Population Trends 2016 and General Household
Survey 2015 (at [4] and [5] of the Proprietor’s 1st SD). Both were published after the
Relevant Date. Nonetheless, they do include some figures for the year 2010, which can beused as an approximate50.
72 Pages 23 and 24 of Exhibit 2 of the Proprietor’s 1st SD contain extracts of Population
Trends 2016. In 2010, the local population stood at 5.1 million, of which 3.8 million wereresidents. With regard the ethnic composition of the population, there are only figures for2006 and 2016 (page 24 of Exhibit 2 of the Proprietor’s 1st SD). I will refer to the 2006
figures rather than the 2016 figures having regard to the Relevant Date 51. In 2006, 75.3%of the population were Chinese, while 13.8 % were Malays, 8.6% were Indians and 2.3%
were indicated as “others”. Therefore, the Chinese made up about ¾ of the population in
Singapore52.
73 Pages 26 and 27 of Exhibit 2 of the Proprietor’s 1st SD contain extracts of the General
Household Survey 2015. In 2010, 66.5% of the total number of Chinese residents in
Singapore were literate in 2 or more languages, of which 58% were literate in both English
and Chinese53. Following the above, the second most widely understood language in thelocal context is Chinese, after English, which is the official working language of Singapore.
74 Both parties also argued about the language proficiency of tourists in Singapore. On
the one hand, the Applicants argued that “[i]nsofar as the likely users of the services ofboth parties are going to be foreign tourists, a significant portion of such tourists would notunderstand Chinese” ([43] AWS1). On the other hand, the Proprietors argued “[o]ver theyears, Singapore has maintained its attraction to Chinese-speaking tourists, particularly
those from China, Hong Kong and Taiwan ([20] PWS1; see also [30] of the Proprietor’s
2nd SD 54 and Exhibit 7 of the same).

75 There is no need to dwell too much into this issue. Even if there is an influx ofChinese-speaking tourists in recent years, the proportion of this group in relation to thetotal annual number of visitors to Singapore would still appear to be relatively low55.
50

It is unclear if the population figure takes into account the whole of the calendar year of 2010.
Nonetheless, it is still a close approximation.
51
Nonetheless, it is observed that the dividing lines across the 4 main ethnic groups remain largely stablebetween 2006 and 2016.
52
This has remained more or less consistent between 2006 and 2016, above.
53
This translates to about 40% of the population.
54
Figures which occurred after the Relevant Date will be ignored.
55
See page 450 of Exhibit 7 of the Proprietor’s 2nd SD which pertains to the year 2009. The proportion of“Chinese-speaking tourists” is 263,825 (including China, Hong Kong and Taiwan) / 1,301,268 = 0.2 or 20%.

- 24 -

76 In summary, using the learned PAR’s explanation in Seiko at [45], “[t]he tendency
is to refer to [PARK REGIS] because English is the working language in Singapore, isspoken by the majority as a first language and people in general will gravitate towards thelanguage most familiar to them”.
77 This conclusion does not detract from my agreement with the Proprietor’s argumentthat “consumers who are literate in English and Chinese are capable of recognising the
Chinese characters” and “are unlikely to ignore” them ([16] Proprietor’s 1 st SD). However,it does mean, and I disagree with the Proprietor to this extent,56 that the Chinese characterswill be seen as secondary in the Subject Mark. This is because literacy in a language does
not equate with significance accorded to the same. In my opinion, this conclusion is buoyedby the position of the Chinese characters below the English characters.
78 I now come to the meaning of the Chinese characters 柏•伟诗酒店. As mentioned
above, I am inclined to accept the transliteration clause in the Register 57 as a more accurate
indication. Nonetheless, even if I were to accept the transliteration and translation of 柏•
伟诗酒店 as provided in the Proprietor’s 1 st SD above, the Chinese characters 柏•伟诗酒
店 are still “ineffective to obscure the similarity” between the Subject Mark and theApplicants’ Earlier St Regis Mark.
79 For ease of reference, the transliteration and translation as per the Proprietor’s
evidence58 is replicated below:
S/N
1
2
5
4

Chinese character
柏
伟
诗
酒店

Transliteration
bai
wei
shi
Jiu dian

Translation
CypressGreat
Poetry, poem
Hotel

The reason is that the characters 柏•伟诗酒店 do not possess any fixed meaning59 as aphrase (see above) while sounding similar to “PARK REGIS” at the same time. Thus, 柏•伟诗酒店 would be understood, first and foremost, as a phonetic transliteration of “Park
Regis”.
80

This is underscored by the description below: 60

See [16] of the Proprietor’s 1st SD.
See Exhibit 2 of the Applicants’ 3rd SD. The clause reads:
The transliteration of the Chinese characters appearing in the mark is “Bai” which means “Cypress”.
“Wei Shi” which has no meaning and “Jiu Dian” which means “Hotel”.
[Emphasis in italics mine]
58
Proprietor’s 1st SD at [7].
59
See Proprietor’s 1st SD at [7].
60
See the Applicants’ 3rd SD at Exhibit 1, pages 12 – 14.
56
57- 25 -

3.

Combine a literal and phonetic translation

The best trade marks are those which sound the same and also make reference to adefining characteristic of your brand or have a positive meaning in Chinese culture.
For example…Coca Cola finally settled with “Ke Kou Ke Le” (可口可乐), whichmeans “taste and be happy”…
[Emphasis in italics mine]
The methodology is clear. First, find Chinese characters which sound aurally similar to
PARK REGIS. From the wide range of similar sounding characters, select thosecharacters, which, when put together, imbue a positive meaning to the brand.
81 I agree that the Chinese name of the Proprietor is not a mere transliteration ortranslation of PARK REGIS. The final product is clearly more than just a transliteration
or translation of PARK REGIS per se. Nonetheless, the Chinese characters which were
“cobbled together by the Proprietor 61” ([36] PWS2), must, as a matter of prerogative, soundaurally similar to “PARK REGIS”.
82 The need to draw an association with the original brand name62 is obvious for it is an“old brand” which draws custom. As explained in The Commissioners of Inland Revenue
v Muller & Co's Margarine, Limited [1901] AC 217 at 223 – 224 (“Muller “)63, custom is“the one thing which distinguishes an old-established business from a new business at its
first start… it [is the] power of attraction sufficient to bring customers.” The need to draw
the link to the original mark is highlighted by the description above:
1.

Create a literal translation

A literal translation works when the trade mark has a distinctive meaning. For
example, Apple computers chose the brand name “Ping Guo” ( 苹果), which is
Chinese for ‘apple’…The disadvantage of this method is that the Chinese characterswill sound different from your original trade mark. This means that marketing timeand money will need to be spent on building association between your Roman
character trade mark and the Chinese character trade mark.
[Emphasis in italics mine]
83 Together with the size of the font and the positioning of the characters, 柏•伟诗酒
店 is clearly subsidiary and it would not significantly erode any distinctiveness exuded by“Regis”.

In comparison to the PARK REGIS brand, which “has been continuously put in use…since 1968 by the
Proprietor’s and the Proprietor’s predecessors…” ([7] of Proprietor’s 2 nd SD).
62
In this case, the Proprietor originates from Australia (see [22] of the Proprietor’s 2nd SD), an English
speaking country.
63
Albeit in the context of the meaning of goodwill.
61- 26 -

84

For the avoidance of doubt, the cases raised by the Proprietor 64 can be distinguished:(i)

In Raffles Fine Arts Auctioneers Pte Ltd v Raffles Corporate Consultants Pte
Ltd65, the word “Raffles” is “peculiar to Singapore…as the name of the founderof Singapore and is common (sic) used in trade…the public, being accustomed
to names incorporating “Raffles” in trade are likely to be more discerning ofmarks consisting the word “Raffles” and will focus on the dissimilar aspects.”([16(a)] AWS2).

(ii)

Multi Access Limited v Guangzhou Pharmaceutical Holding Limited 66 isdistinguishable as both marks are device marks where the Chinese characters
therein appear in a different order ([16(b) AWS2]).

(iii) In Eley Trading Sdn Bhd v Kwek Soo Chuan,67 the device is large in size andis prominently placed, serving as a clear distinguishing factor.
(iv) In Mitac International Corp v Singapore Telecommunications Ltd 68, both theword marks are highly stylised, acting as a differentiating factor.
(v)

Last but not least, decisions emanating from China (see [60] and [61] PWS1)
must be read with caution. In addition to differing laws, the demographics ofthe 2 countries are also different 69.

Conclusion
85

I have concluded above that:(i)the size of the components relative to the Subject Mark are as follows:
(a)
(b)
(c)

device – 20%;
the words Park Regis – 45%; andthe Chinese characters 柏•伟诗酒店 - 35%.

(ii) 柏•伟诗酒店 is positioned below “Park Regis”.
(iii) the fleur-de-lis device will only be viewed as a decorative element. If any
connotation is warranted, it is that of royalty, which simply accentuates“Regis”.
(iv) “Park” is descriptive of the service and thus accorded low weight in the
distinctiveness spectrum.
[59] – [61] PWS1.
[2010] SGIPOS 1
66[2017] SGIPOS 13
67[2017] SGIPOS 15
68[2009] 4 SLR(R) 961
69
While the majority of the population in Singapore are Chinese, of which a large proportion has someproficiency in Chinese, English is still the common working language in Singapore (above).
64
65- 27 -

(v)the Chinese characters 柏•伟诗酒店 will, in the main, be understood as aphonetic transliteration of “PARK REGIS” and thus be of subsidiarysignificance.

86
In light of all the above, I am of the view that the fleur-de-lis device, the word PARKand the Chinese characters 柏•伟诗酒店 are “ineffective to obscure the similarity” between
the Subject Mark and the Applicants’ Earlier St Regis Mark as a result of the common
distinctive element REGIS.
87 In coming to this conclusion, I am mindful that the assessment of marks is based on
the overall impression given by the marks. However, bearing in mind the distinctive anddominant component, I am of the view that visually, the marks are more similar thandissimilar to some degree.
Aural Similarity
88 With regard to aural similarity, Staywell Court of Appeal stated at [31] and [32] that
there are two approaches. One approach is to consider the dominant component of themark (“Dominant Component Approach”).
89

As alluded to above, Staywell Court of Appeal held at [31]:[31] …At least in relation to hotels and hospitality services, “Regis” enjoys asubstantial degree of technical distinctiveness. In relation to both the competingmarks “Regis” is the element that is distinctive in the non-technical sense because itis what will stand out in the imperfect recollection of the consumer. The Judge wastherefore entitled to find this is the common dominant element of both marks inassessing the question of whether the competing marks as a whole were similar. The
Judge found on this basis that the marks were aurally similar and we agree.

[Emphasis in italics mine]
90 As in the case of the discussion on visual similarity, the only issue left is whether the
addition of Chinese characters 柏•伟诗酒店 in the Subject Mark will result in a different
conclusion.
91 Applying the Dominant Component Approach, and having regard to my conclusion
with regard to the issue of visual similarity, the answer clearly must be a “no”. As alluded
above, the dominant element remains as REGIS and the Chinese characters 柏•伟诗酒店
70 are ineffective to obscure the similarity between the Subject Mark and the Applicants’
Earlier St Regis Mark.

70

The device is not taken into account for aural similarity.

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92 There is of course, the alternative approach which simply involves asking thequestion whether competing marks have more syllables in common than not (“Quantitative
Assessment Approach”).
93

The Proprietor argued at [71] – [73] PWS1:[71] The Proprietor’s Mark reads as seven separate and distinctive words, in the orderof “PARK”, “REGIS”, “柏”, “伟”, “诗”, 酒店”, and is pronounced as “PARKREGIS BAI WEI SHI JIU DIAN”.
[72] In comparison, the textual components in [the Applicants’ Earlier St Regis
Mark] are the words, “ST. REGIS”. It reads as two separate and distinctive words inthe order of “SAINT”, “REGIS”.
[73] On a quantitative assessment of the marks, it is evident that there are clear
differences in the enunciation of the respective marks when though both marks
contain the word, “REGIS”. Such pronounced differences in the pronunciation of the
textual components in each mark renders the marks aurally dissimilar.

94 I do not think that a strict application of the Quantitative Assessment Approach isappropriate in this instance. For example in Han’s (F&B) Pte Ltd v Gusttimo World Pte
Ltd [2015] 2 SLR 825 (“Han’s”),71 the High Court provided:[136] The Defendant argues that the Han’s trade marks contain only a single syllable.
The HAN sign, on the other hand, consists of seven syllables (“HAN Cuisine of
Naniwa”)…
[137] In my view, there is phonetic similarity between the HAN sign and the Han’strade marks. The main phonetic component of the HAN sign is “HAN”. “Cuisine of
Naniwa” is subsidiary. It is doubtful that the average consumer would make constantreference to the seven-syllable “HAN Cuisine of Naniwa” phrase every time he refers
to it…There is, therefore, phonetic similarity between the HAN sign and the Han’strade marks.
95 I am of the view that the above principle is applicable to the current case. To
paraphrase Han’s: “[t]he main phonetic component of the [Subject Mark] is [“PARKREGIS”]. [“柏•伟诗酒店”] is subsidiary. It is doubtful that the average consumer would
make constant reference to the seven-syllable [“PARK REGIS 柏•伟诗酒店”] every time
he refers to it…”
71

This was decided after Time Inc v Li San Zhong [2014] SGIPOS 14 (“Time Inc”) (see [70] PWS). In any

case, Time Inc can be distinguished. The subject mark in Time Inc was. Having regard to
the prominence of the both the Chinese characters and English letters, it is no wonder that the learned PAR
came to the conclusion that both English and Chinese components were to be taken into account whenassessing aural similarity. This in contrast to the current case.

- 29 -

Conclusion
96 In light of the above, applying the Dominant Component Approach, the marks areaurally more similar than dissimilar to a fair extent.
Conceptual Similarity
97

Staywell Court of Appeal 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 mark as a whole…Greater care is therefore needed in considering what theconceptually dominant component of a composite mark is, because the idea connotedby each component might be very different from the sum of its parts…

[Emphasis in italics mine]98

The Court of Appeal in Staywell Court of Appeal provided:[35] …we do not agree that “Regis” was a dominant component on a conceptual
analysis…
[37] However, we find that there is some conceptual similarity between the marks
but for a different reason. There is some strength in the Opponents’ argument thatboth the Applicant and Opponent Marks evoke the idea of a place or location.
Although the ST. REGIS mark might conjure the image of a saintly person, in
Singapore by far the most common manifestation of saintly names is in relation toplaces…many of which have no particular association whatsoever with the saintly
character whose name they have adopted. Similarly, the word “Park”, as noted by theJudge, connotes the idea of a geographical location though not necessarily of any
particular type (see [26] of the GD). Therefore, in the Singapore context, the marks
share a tendency to connote a place or location or building which, as between thecompeting marks in question, are linked by the common reference to “Regis”.

[Emphasis in italics mine]
99 Similarly, the issue is whether the inclusion of the Chinese characters 柏•伟诗酒店
will result in a different conclusion. Again, the answer must be a “no”. As alluded above,
the English portion will stand out more than the Chinese characters. This is because they
are of a larger font and placed more prominently than the Chinese characters. Further, theEnglish characters will capture the attention of most of the population since it is theworking language in Singapore.

- 30 -

100 In fact the meaning of the individual Chinese characters 72 which literally translates
into “Cypress Great Poetry Hotel,” simply enforces the concept of “a park (Cypress) or aplace (Hotel) of grandeur (Great), elegance and culture (Poetry)”. For the avoidance of
doubt, the inclusion of the fleur-de-lis device completes the imagery of royalty, emanatingideas of a geographical location bearing some class and prestige.73
101 Taking all of the above into consideration, I am of the view that the marks areconceptually more similar than dissimilar to a fair extent.
Conclusion on the similarity of marks
102 It is to be recalled that:
(i)

(ii)

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
between the three aspects of similarity.
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.

103 I have concluded that the Applicants’ Earlier St Regis Mark in comparison to the
Subject Mark is visually similar to some degree and aurally and conceptually similar to afair extent, such that overall, the marks are more similar than dissimilar 74.
Identity of Services
104 The Court of Appeal in Staywell Court of Appeal clarified the applicable principles
as follows at [40] and [41]:[40] The comparison before us was between the services falling under [theProprietor’s] intended Class 35 and Class 4375 registrations, and [the Applicants’]existing [Class 42 76] registration. In relation to the Class 43 [or Class 42] registration,
we agree with the Judge’s observation that the fact that the parties’ hotel services
were branded for different market segments did not render the services dissimilar…
See above; as deposed by the Proprietor, there is no mention of the phrase 柏•伟诗酒店 as an example (i.e.
used in a phrase when that character is conjoined with other characters) in connection with each of thecharacter in the Subject Mark.
73
See above discussion in relation to the device.
74
All that is required is that the marks are more similar than dissimilar. See Staywell Court of Appeal at[17].
75
See http://www.wipo.int/classifications/nice/en/preface.html
About the Nice Classification…The Committee of Experts has, since the entry into force of the Nice Agreement, on April 8,
1961…revised class 42 with the creation of classes 43 to 45 (in 2000)…
76
As above.
72- 31 -

[41] …Where a good or service in relation to which registration is sought falls within
the ambit of the specification in which the incumbent mark is registered, thecompeting goods or services would be regarded as identical…
[Emphasis in italics mine]
105 For ease of reference, the services are as follows:
Subject Mark

Applicants’ Earlier
St Regis MarkClass 42

Services for providing food and drink; temporary accommodation;
hotel services; motel services; tourist homes; resort hotel services;
hotel accommodation services; hotel catering services; hotel
reservation services; hotel restaurant services; provision of hotel
accommodation for business exhibitions, business fairs,
conferences, congresses, lectures and meetings; providing
facilities [accommodation] for conducting conferences,conventions, exhibitions, fairs and holidays; rental of meetingrooms; hospitality services [accommodation]; hospitality suites[provision of accommodation, food or drink]; holiday informationand planning relating to accommodation; inn keeping [bar,restaurant and accommodation]; restaurants; cafes; bar andcatering services; advisory, information and consultancy services
relating to all the aforesaid; all the aforesaid services also provided
on-line from a computer database or via the global
communications network; all included in Class 43

Hotel, motel, resort,restaurant,
bar,
cocktaillounge,food and beverage
services.

Class 43

The identical services are set out in italics above. Clearly this element has been satisfied.
Likelihood of confusion
106 The law in relation to this issue is as follows (Staywell Court of Appeal at [60], [65],[95] and [96]):(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 ([60]Staywell Court of Appeal).

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(ii)The similarity of marks and that of the goods or services are threshold questions
but they are not determinative questions; in short these are necessary but not
sufficient conditions. The plain words and the scheme of the Act do notpreclude the court’s discretion to consider extraneous factors to the extent thatthese inform the assessment of the effect of the required similarity on consumer
perception ([65] Staywell Court of Appeal).

(iii) The permissible factors are those which (a) are intrinsic to the very nature of
the goods and/or (b) affect the impact that the similarity of marks and goods
has on the consumer. The impermissible factors are those differences between
the competing marks and goods which are created by a trader’s differentiating
steps. ([95] Staywell Court of Appeal).
(iv) The following represents a non-exhaustive list of factors which we regard as
admissible in the confusion inquiry ([96] Staywell Court of Appeal):(a)

Factors relating to the impact of marks-similarity on consumer
perception:
A.
B.
C.
D.

(b)

the degree of similarity of the marks themselves;
the reputation of the marks77;
the impression given by the marks;
the possibility of imperfect recollection of the marks.

Factors relating to the impact of goods-similarity on consumer perception:
A.
B.
C.

D.

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

107 Staywell Court of Appeal then proceeded to analyse the facts in that case as follows[99], [101] to [103]:[99] …Confusion in trade mark law extends to consumers believing that the users of
the competing marks are economically linked…78
77

A strong reputation does not necessarily equate to a higher likelihood of confusion, and could in fact havethe contrary effect (Mobil Petroleum Co, Inc v Hyundai Mobis [2010] 1 SLR 512 at [74]).
78
Thus the Proprietor’s argument at [135] PWS1 that “[w]hile the marks are registered for use in the sameclass, it is unlikely that the Proprietor’s services and the Applicants’ services are in competition with or are
substitutes for each other. A luxury accommodation cannot be substituted with or be in competition with a
4-star accommodation and vice versa.” does not apply.

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[101] As to the similarity of the marks, we have already observed that there is novisual similarity, some degree of conceptual similarity, and a significant degree ofaural similarity. On the whole, we have found that the marks were similar. We also
agree that “Regis” is the dominant component of the mark on an aural analysis.
[102] Turning to the likelihood of confusion…we find it not unlikely that the publicwould be induced by the similarity of the marks and the common industry in which
they are used into believing that there is at least some economic link between the ST.
REGIS Singapore and the Park Regis Singapore. This is especially so given that it iscommon for large hotel chains to operate differently branded hotels carrying different
logos, united only by use of a common denominator in their names. This signals tothe public that the various hotels, though pitched at different segments of the market,
are economically linked…The common denominator serves as an assurance ofsource and therefore quality. Examples areor[103] In our view, therefore, the similarity arising from the use of the common
denominator “Regis” in both marks takes on particular significance and there is
ample ground for finding that there is a sufficient likelihood of confusion as to theexistence of an economic link between the two hotels in question.
[Emphasis in italics mine]
108 I have already concluded above that the Applicants’ Earlier St Regis Mark incomparison to the Subject Mark is visually, aurally and conceptually more similar thandissimilar and the services are identical. Given the Court of Appeal’s finding as to the stateof the hotel industry, which remains applicable as at the Relevant Date, I am of the viewthat there is a likelihood of confusion in that consumers would believe that the Applicants
and the Proprietor are economically linked.
109 The Proprietor argued that it is unlikely for there to be a likelihood of confusion (see[98(i) – (iv)] PWS1). For example, the Proprietor argued that hotel stays are expensive
purchases which tend to command greater attention ([98(ii)] PWS1). However, as
discussed in Staywell Court of Appeal above, the type of confusion envisaged here is that
the Applicants have expanded from 6-star to 4-star hotels, catering to a different market
segment.
110 Importantly, the Proprietor vehemently argued ([100] and [101] PWS1) that it is “St
Regis” and not “Regis” which forms the core identity of the Applicants. The Proprietor
submitted that this is borne out in the evidence. The Applicants was / is always referred to- 34 -

as “St Regis” and not “Regis” alone. The Proprietor argued that in light of the above, thecomparison should be made between PARK REGIS and ST REGIS.
111 Further, the Proprietors pointed out 79 that in all the examples cited in [102] of
Staywell Court of Appeal (above), the brands were replicated entirely. For example, HyattRegency versus Grand Hyatt versus Park Hyatt. Following this logic, any expansion by
the Applicants should be in the format of, for example, [prefix] ST REGIS.
112 The issue has been definitively dealt with by Staywell Court of Appeal (see [31]80):[31] …[the Proprietor’s] argument that the Judge erred in considering the dominanceof “Regis” because [the Applicants] had never used or registered the component“Regis” alone was misconceived simply because, as we have pointed above, acomponent can clearly be dominant even if it is part of the mark as a whole and is
not and has never been used on its own…[the Proprietor’s] argument that any
distinctiveness of [the Applicants’] mark lay in “St. Regis” as a whole rather thanin “Regis” overlooked the permissibility of examining the distinctive components ofthe competing marks in both the technical and nontechnical senses.
[Emphasis in italics mine]
113 In light of the above, the Proprietor’s arguments do not stand 81. In conclusion, on
balance, taking into account the permissible extraneous factors, I find that there is areasonable likelihood of confusion.
114 The ground of opposition under Section 8(2)(b) therefore succeeds.
Ground of Invalidation under Section 8(4)115 The relevant provisions in the Act are:23(3) The registration of a trade mark may be declared invalid on the
ground —(a) that there is an earlier trade mark in relation to which —(iii) where the trade mark has been registered pursuant to an application
for registration of the trade mark made on or after 1st July 2004, theconditions set out in section 8(4) apply…

79

See [101] PWS1.
In their analysis of aural similarity.
81
The Proprietor also argued that ‘“REGIS” is a common word used in the names of hotels’ in otherjurisdictions (see [102] PWS1). This fact is irrelevant for the purposes of this decision, having regard to theprinciple of territoriality.
80- 35 -

unless the proprietor of that earlier trade mark or other earlier right has consented to
the registration.
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 theinterests of the proprietor of the earlier trade mark…
(ii)if the earlier trade mark is well known to the public at large in
Singapore;(A) would cause dilution in an unfair manner of the distinctive
character of the earlier trade mark…
Decision on Section 8(4)(b)(i)Similarity of marks
116 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)(see Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA [2013] 1 SLR 531 (“Sarika”) (at[70] and [71])). I have already found that the Applicants have satisfied this element.
Well known in Singapore
117 The critical question is whether the Applicants’ Earlier St Regis Mark is well knownin Singapore as at the Relevant Date.
118 The starting point for this inquiry is Section 2(7), (8) and (9) of the Act. 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;- 36 -

(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) 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;(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.
119 The 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 because Section 2(8) deems atrade mark to be well known in Singapore where it is determined to be wellknown to any relevant sector of the public in Singapore (see [139] of Novelty
Pte Ltd v Amanresorts Ltd and another [2009] 3 SLR (R) 216("Amanresorts")).

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(ii)Aside from Section 2(7)(a), the court is ordinarily free to disregard any or allof the factors listed in Section 2(7) as the case requires and to take additional
factors into consideration (Amanresorts at [137]).

(iii) In relation to Section 2(8), the Court of Appeal in Caesarstone clarified that:[101] …we said in Amanresorts that it is “not too difficult” for a trade
mark to be regarded as well known in Singapore 82…
[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 or the Opponent’s goods or services ([152] Amanresorts).
120 The Applicants submitted at [83], [84], [85] AWS1:[83] It bears highlighting that the Proprietor, in its appeal to the Court of Appeal in
the [Previous Opposition Decision], did not challenge the PAR and High Court
Judge’s finding that the [Applicants’ Earlier St Regis Mark] was well known as at
the date of application of the [Previous Park Regis Mark]. If the [Applicants’ Earlier
St Regis Mark] was well known as at 3 March 2008 83 , it must follow that the[Applicants’ Earlier St Regis Mark] continues to be well known as at the [RelevantDate]84.
[84] Even if the Applicants are wrong in this regard, it is submitted that the[Applicants’ Earlier Marks] and in particular, the [Applicants’ Earlier St Regis
Mark], is well known for the reasons set out…
[85] …Since the opening of the St. Regis hotel in Singapore in 2008, the Applicants
enjoy a gross sales revenue of its (sic) services of amounts in excess of USD 23
million.
82

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).
83
Relevant date in the Previous Opposition Decision.
84
The Applicants are relying on the same mark here.

- 38 -

121 I refer to the Applicants’ 1 st SD at [12]:[12] In the years preceding the application date of the [Subject Mark], the Gross
Revenue for…the ST REGIS in Singapore in particular, were as follows, in excessof the below amount in U.S. dollars [in millions]:
S/N
1
2
3

Year85FY 2008
FY 2009
October 2009 – 7 May 201086

Singapore Sales Revenue
15
15
13.487122 I agree with the Applicants that on the basis that the Proprietor did not challenge inStaywell IPOS and Staywell High Court that the Applicants’ Earlier St Regis Mark waswell known as at 3 March 2008, it is likely that the Applicants’ Earlier St Regis Mark
continues to be well known as at the Relevant Date.
123 In any event, I am of the view that in light of the Singapore sales revenue above,
which amounts to an annual average of SGD 23.3 million88, the Applicants’ Earlier St
Regis Mark is well known to all actual consumers and potential consumers in Singaporeof the Applicants’ services to which the Applicants’ Earlier St Regis Mark has been
applied. For the avoidance of doubt, I come to the above conclusion having regard to the
Court of Appeal’s comments in Caesarstone above.
Confusing connection
124
In relation to this element, Staywell Court of Appeal provided that “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 be satisfied where there is a likelihood of confusion” (see [120] Amanresorts).
125 Thus, I am of the view that there will a confusing connection here for largely thesame reasons that I have provided for my conclusion in relation to the likelihood ofconfusion under Section 8(2)(b).

Likelihood of Damage

Having regard to the Relevant Date, the figures for the period FY 2011 – 2016 are excluded.
It is assumed that the financial year is that of the United States of America, since the quantum is in USD.
This means that FY 2010 includes the period October 2009 – September 2010.
87
As FY 2010 consists of the period October 2009 – September 2010, the figure for the period October 2009
– 7 May 2010 is approximately 23/12 x 7 = USD 13.4 million.
88
The average sales revenue in USD is 15 + 15 + 13.4 = 43.4 / 2.6 = 16.7 million. Using the exchange rateof 1 USD = 1.3957 as at the Relevant Date from XE.com Inc., 16.7 x 1.3957 = SGD 23.3 million.
85
86- 39 -

126 In relation to this element, Amanresorts provided “that the tests to be adopted for the
purposes of …the “likely to damage the [plaintiff’s] interests” requirement in s 55(3)(a) of
the current [Act] would yield the same results as those obtained from applying thecorresponding tests vis-à-vis the Respondents’ claim for passing off” (see [234]
Amanresorts).
127 The Applicants submitted at [99] and [100] AWS1:[99] The Court of Appeal in [Staywell Court of Appeal] recognized that a likely headof damage could be the limitation or restriction on the Applicants’ ability to expand
into the 4-star hotel market in Singapore. Whether the Applicants have any such plans
is irrelevant89…
[100] In this present instance, it is submitted that there is little reason for the Registrar
to depart from the finding of the Court of Appeal in [Staywell Court of Appeal] thatthe businesses of the parties are in “close proximity”…
[Emphasis as underlined the Applicants’]
Having regard to the highly similar circumstances (between the Previous Opposition
Decision and the current action), the above is highly persuasive on me. In any event, I
agree with these findings.
128 Before I leave this element, the Proprietor attempted to argue that the fact that there
were no actual instances of confusion, “goes to show that use of the [Subject Mark] inrelation to the services for which the [Subject Mark] is registered would not indicate aconnection between those services and the Applicants.” 90 91 Clearly this argument does
not stand; it is trite that a likelihood of damage suffices 92.
129 In light of all of the above, the ground of opposition under Section 8(4)(b)(i)succeeds.

Decision on Section 8(4)(b)(ii)(A)

See [126] of Staywell Court of Appeal: “[o]nly if there was no such proximity would the incumbent haveto display a genuine intention to expand into the prospective market”.
90
See PWS1 at [126].
91
Following the Proprietor’s argument above that what is dominant for the Applicants is ST REGIS rather
than REGIS alone, the Proprietor argued at the oral hearing that the Applicants are free to expand into the 4star range of hotels as long as they replicate ST REGIS in its entirety, such that there can be no damage to
the Applicants. This has been dealt with above under the issue of the confusion connection.
92
See Law of Intellectual Property of Singapore (Sweet & Maxwell, 2014 Rev Ed) by Professor Ng-Loy Wee
Loon at [19.1.2]. This paragraph pertains to damage for a passing off action. As indicated above, the tests
are the same.
89- 40 -

130 The critical question is whether the Applicants’ Earlier St Regis Mark is well known
to the public at large (in Singapore) as at the Relevant Date.
Well known to the public at large
131 It is obvious that the relevant provisions and case law which relate to the limb “wellknown in Singapore” (above) apply. Further, the following are pertinent:(i)

The test “well known to the public at large in Singapore” has to mean morethan just “well known in Singapore”. The mark has to necessarily enjoy a muchhigher degree of recognition. It has to be recognised by most sectors of the
public though not so far as to all sectors of the public (City Chain Stores (S)Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 at [13]).

(ii)

A much more extensive level of protection is granted to trade marks which haveattained the coveted status of being “well known to the public at large in
Singapore”. These form a rare and exclusive class, and are entitled toprotection from use of the defendant’s trade mark on dissimilar goods orservices even in the absence of a likelihood of confusion (Amanresorts at[233]).

132 The Applicants submitted at [103] – [106] AWS1:[103] To assist the Registrar in arriving at this finding, we would also compare thereputation of the [Applicants’ Earlier St Regis Mark] in the instant case withprecedent cases where the Court made a finding that a mark was well known to the
public at large. For convenience, we will be highlighting two prior cases i.e. the
SEIKO mark in [Seiko] and the CLINIQUE mark in Clinique Laboratories, LLC v
Clinique Suisse Pte Ltd [2010] 4 SLR 510 (“Clinique”).
[104] With regard to the Applicants’ Revenue (per year), the relevant figures fromthe instant case, Seiko and Clinique are reproduced as follows:

Revenue

Applicants

SEIKO

CLINIQUE

USD15 – [USD 23
million] 93 =S$ 19 – 30 million

S$14 million

S$10 million[105] From the above, it is immediately apparent that the Applicants’ estimatedyearly revenue is more than either of the precedent cases. On this measure, it is

The Applicants did not elaborate how they arrived at the quantum of USD15 – 23.3 million. I venture to
guess that it is the Singapore sales revenue for FY 2008 – FY 2010 (above). If so, the figure for FY 2010 is
USD 23 million and not USD 23.3 million (see [12] of the Applicants’ 1st SD).
93

- 41 -

submitted that the [Applicants’ Earlier St Regis Mark] would qualify to beconsidered as a mark “well known to the public at large”.
[106] In addition to the above:(a)the Applicants have gained widespread news coverage over several local
publications such as the Straits Times, New Paper, Business Times
Singapore, CNA, Today, and The New Paper...

(b)

the Applicants’ St Regis hotels (including the St Regis Singapore) arealso the subject of numerous accolades and awards.

[107] For the reasons set out above, it is submitted that the [Applicants’ Earlier St
Regis Mark] are well known to the public at large as at the Relevant Date.
[Emphasis as underlined the Applicants’]
133 It is observed that this ground of objection failed in Staywell IPOS (see [94]):[94] …The question is, is the Opponents' mark recognised by most sectors of theSingapore public? I do not think so…I am not convinced that the Opponents' mark is
known to the general public, let alone most sectors of the public, bearing in mind
also that this assessment has to be made as at the date of the application for the
Application Mark, i.e., March 2008…the ground of opposition under section 8(4)(a)and (b)(ii) necessarily fails…
[Emphasis in the original]
However, time has elapsed since then and the critical issue is whether the Applicants’
Earlier St Regis Mark is well known to the public at large as at the Relevant Date, that is,about 2 years since March 2008.
134 For ease of comparison, below is a table with the Applicants’ numbers in contrast to
cases where the element has been made out (for the avoidance of doubt, the table is a guideonly):All figures pertain to activities in Singapore
S/
N

1

Expenditure on
marketing"Seiko"Exposure
via physicalsales outlets

More than $4 million 100 opticaleach year for 5 years shops- 42 -

Sales

Survey, if

figuresany$14 million
per annumfor 5 years

70% ofconsumerawareness

2"Clinique"3"Nutella94"

4

Intel95

5

Gucci96$3 million each year
for 4 years

13 stores andcounters$10 million
per annumfor 4 yearsNA
94-98%of 2 million
storesin units ofSingapore"Nutella"that sell food bread spread
items
sold every
year
US$600 million per
US$1 billion
annum for 4 years
per annumfor 7 years- “[I]n the region of
hundreds ofthousands ofeuros”…“for many
years, including in
Singapore"97- Exposure
via
approximately 30
publication.
- Exposure via social
media (Facebook
with 15.9 million
likes; Instagram –17.8
millionfollowers; Twitter– 4.97 million
followers; Youtube–
136,000
subscribers)- Changi
Airport, theParagonshoppingmall in
Orchard
Road, theTakashimaya
department
store in
OrchardRoad and at
The
Shoppesretailcomplex in
Marina Bay
Sands

94

70% ofconsumerawareness

85% ofconsumerawareness“[M]orethan tens of
millions
SGD” for 5
years98

Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd [2011] SGHC 176
Intel Corporation v Intelsteer Pte Ltd [2015] SGIPOS 2
96
Guccio Gucci S.P.A v Guccitech Industries (Private Ltd) [2018] SGIPOS 1 (“Guccitech"). See [75] of
Guccitech:[75]…In my view, there is far more than sufficient evidence on which to find that the GUCCI trade
mark is indeed a member of the rare and exclusive class of trade marks that is well known to the publicat large in Singapore. It would be contrary not only to the weight of that evidence but also tocorroborative common general knowledge (to borrow a term from patent law) to find otherwise…
97
See [14] of Guccitech.
98
See [13] of Guccitech.
95- 43 -

6

St Regis 99- Exposure
via NAapproximately 32
local
publications100.
- Average online hits
from Singapore –779, 710 (in excess
of101)

An average NA
of USD 16.7
(SGD
23.3
million104)
annually fora period of 3
years.

- Starwood Preferred
Guest
(SPG)
(numberofmembers of SPG
who have stayed at
the
St
Regis
Singapore and areresidentsofSingapore – anaverage of 1,921
for the period 2008
– May 2010102- Exposurevia
hostingofconferences(2
events in 2009103)
135 Before I come to a conclusion on this issue, I agree with the Proprietor as argued at
the oral hearing that many of the accolades as attached to Exhibits 3 and 5 of the
Applicants’ 1st SD are (i) not proven as to their circulation in the local market; and (ii)
dated after the Relevant Date (or undated). These will not be taken into consideration.
136 So the question is whether the Applicants’ figures above are comparable to the cases
where this element has been made out. My view is that the answer is no. This is because:
99

Exposure via social media, namely, Facebook, Twitter and Instagram are excluded as they are dated after
the Relevant Date (see [15] of the Applicants’ 1st SD which deposed that the figures were provided “[a]s at
the date of the filing of this action”).
100
Spanning the period January 2006 – April 2008, dealing mainly with the imminent opening (then) of St
Regis Singapore (see Exhibit 4 of the Applicants’ 1st SD).
101
For the years 2008 – 7 May 2010 (each year = calendar year and having regard to the Relevant Date) =>690 000 + 870 000 + [(700 000 x (4/12)) = 1,793,333 / 2.3 = 779,710 (see [14] of the Applicants’ 1st SD).
102
See [18] of the Applicants’ 1st SD. Any period after the Relevant Date are excluded. As the Relevant
Date was 7 May 2010, the calculation is: 870 + 2,800 + [2,500 x (0.3) = 4,420/2.3 = 1,921.
103
See [20] of the Applicants’ 1st SD. Events for the period 2010 – 2016 are excluded as they occurred after
the Relevant Date (events which occurred in 2010 are also excluded as it is unclear if they occurred before
the Relevant Date in 2010).
104
See above computation.

- 44 -

(i)while the quantum of the sales revenue would appear to exceed those of othercases at first blush, having regard to the price per unit, the quantity sold may
not be comparable;(ii) the Applicants had been in the local market for 3 years only as at the Relevant
Date; and(iii) the extent of promotional exposure is not as extensive in contrast to the othercases.
137 In light of all of the above, this element has not been made out. (For the avoidanceof doubt, I make no finding as to whether the Applicants’ Earlier St Regis Mark is wellknown to the public at large today, i.e. some eight years after the Relevant Date.) Thus,
there is no need for me to look at the other limb of dilution.
138 The ground of opposition under Section 8(4)(b)(ii)(A) therefore fails.
Ground of Invalidation under Section 8(7)(a)139 The relevant provisions in the Act are:23(3) The registration of a trade mark may be declared invalid on the ground —(b) that there is an earlier right in relation to which the condition set out insection 8(7) is satisfied…
unless the proprietor of that earlier trade mark or other earlier right has consented to
the registration.
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)140 In relation to this ground, there are three elements to be established:(i) Goodwill;(ii) Misrepresentation; and(iii) Damage.
141 The law in relation to goodwill can be summarised as follows:- 45 -

(i)Goodwill is “the benefit and advantage of the good name, reputation, andconnection of a business…the attractive force which brings in custom” (seeMuller, above).

(ii)

The position in Singapore is still the “hardline” approach 105, albeit having been
softened to include pre-trading activity (Staywell Court of Appeal at [136]).

(iii) The Opponent must establish that they have acquired goodwill as at therelevant date, that is, the date on which the defendant's conduct complained ofstarted. Applying this principle, it is the Relevant Date in this instance (Lawof Intellectual Property of Singapore (Sweet & Maxwell, 2014 Rev Ed) byProfessor Ng-Loy Wee Loon (“Law of Intellectual Property of Singapore”) at[17.2.5]).
(iv) 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”)).
(v)

Evidence of sales and income of the business are a “proxy for the attractive
force of the business” (Singsung at [58]).

(vi) The “get up” can include various aspects of the business, including a mark(Law of Intellectual Property of Singapore at [17.2.10] – [17.2.11]).
(vii) Section 8(7)(a) at the very least requires an opponent to adduce sufficientevidence to establish a prima facie case on goodwill, misrepresentation, anddamage (Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2015]
SGHC 216 at [164]).
142 In Staywell Court of Appeal, the Court of Appeal found that “[t]he evidence ofadvertising activity adduced by the Opponents was insufficient to warrant a finding that
there was an attractive force that would bring custom to the ST. REGIS Singapore as at thedate Staywell applied to register the Applicant Mark” (see headnote (13) of Staywell Courtof Appeal). However, time has elapsed since then 106 and the issue is whether there is
relevant goodwill as at the Relevant Date.

105

See [132] Staywell Court of Appeal:…[t]he traditional position is that for goodwill to exist, it is essential for the trader to have carried on
his trade within the jurisdiction…This has become known as the “hard-line” school of thought.
106
While the decision was issued on 29 November 2013, the relevant date then was 3 March 2008 (date ofapplication of the Previous Park Regis Mark).

- 46 -

143 As alluded to above, the Applicants’ average sales revenue is SGD 23.3 million
annually for a period of 3 years. I am of the view that Applicants have the relevant
goodwill in Singapore.
Misrepresentation
144 In relation to this element, the Court of Appeal in Sarika held that:(20) …The test for the “connection” requirement was similar in substance to thetest for the misrepresentation requirement in passing off, and the findings for themisrepresentation requirement were in turn based on the finding of a likelihood ofconfusion under s 27(2)(b)…
Thus for largely the same reasons that I have found that the element of “confusing
connection” and “the likelihood of confusion” has been made out respectively under
Sections 8(4)(b)(i) and 8(2)(b), I am of the view that misrepresentation has been made outhere as well.
145 Further, as alluded to above, in an action for passing off, it is permissible for the
Applicants to rely on their get-up (which includes the Applicants’ Earlier St Regis Mark).
For ease of reference, the indicia as sought to be registered / used by the Applicants are as
follows:
Subject Mark

Applicants’ Indicia

146 With regard, Staywell High Court commented at [28]:[28] …Further, the device used by the St. Regis Hotel group is designed to look likea crest, with similarly elaborate lettering reminiscent of royal opulence…
[Emphasis in italics mine]- 47 -

In this regard, the Court of Appeal in Staywell Court of Appeal disgreed with the inclusionofat the stage of marks-similarity assessment but not with the inference drawn fromthe same107 (see [36] Staywell Court of Appeal).
147 In light of the above, having regard to the degree of similarity of the indicia and theproximity of the fields of trade (see Amanresorts at [84]), I am of the view that, on abalance of probabilities, there is a likelihood of misrepresentation that the Applicants andthe Proprietor are economically linked.
Damage148 In relation to this element, the test is either “actual or probable damage” to theplaintiff’s goodwill ([94] Amanresorts).
149 As alluded to above, it has been held by the Court of Appeal in Amanresorts “thatthe tests to be adopted for the purposes of …the “likely to damage the [plaintiff’s] interests”
requirement in s 55(3)(a) of the current [Act] would yield the same results as those obtained
from applying the corresponding tests vis-à-vis the Respondents’ claim for passing off”
(see [234] Amanresorts).
150 Therefore, for largely the same reasons for the same element under section 8(4)(b)(i),I am of the view that this element has been made out.
151 One last comment before I conclude the matter. The Proprietor argued that the
Applicants have not suffered any damage as “[t]here is…no evidence that the Applicants
are likely to suffer any financial loss” ([146] PWS1). The Court of Appeal in Amanresorts
has already determined that (see [117] and [118]):[117] We accept the principle that a plaintiff who has established goodwill in one
form of commercial activity (“the established activity”) may be entitled to protection
from passing off vis-à-vis another form of commercial activity which is a natural
expansion of the first (“the extended activity”)…
[118] It is, however, important to stress the close connection which must exist
between the established activity and the extended activity for that connection forms
the foundation for this head of damage…
Thus, regardless of the growth of the Applicants’ revenue, the Applicants can claim an
obstruction of expansion into the 4-star range of hotels as a form of damage.
Conclusion
152 The ground of opposition under Section 8(7)(a) therefore succeeds.
107

In both instances in the context of the analysis of conceptual similarity.

- 48 -

Conclusion
153 Having considered all the pleadings and evidence filed and the submissions made inwriting and orally, I find that the invalidation succeeds on Sections 8(2)(b), 8(4)(b)(i) and8(7)(a) (in accordance with Section 23(10) of the Act, the registration is deemed never tohave been made, although this shall not affect transactions past and closed) but fails on
Sections 7(6) and 8(4)(b)(ii)(A). The Applicants are entitled to costs to be taxed, if notagreed.
Date of Issue: 17 July 2018
[The appeal from this decision to the High Court was dismissed.]- 49 -