Ozone Community Corp v Advance Magazine Publishers Inc

Woo Bih Li J:

[1] This was an appeal by Ozone Community Corporation (“Ozone”), a company incorporated and existing under the laws of Japan, against the decision of the Principal Assistant Registrar of Trade Marks (the “PAR”) in Advance Magazine Publishers Inc. v Ozone Community Corporation [2009] SGIPOS 4. Ozone had applied to register the trade mark, “HYSTERIC GLAMOUR” (ie, a word mark), in Class 16 (Trade Mark Application No T02/03173J), in respect of the following goods (“Ozone’s goods”):

[2] The application was opposed by Advance Magazine Publishers Inc. (“AMP”), a company incorporated and existing under the laws of New York, United States of America. AMP is the registered proprietor of the following prior marks in Singapore:

[3] Before the PAR, AMP based its opposition on the following grounds:

(a) section 8(2)(b) of the Trade Marks Act (Cap 332, 1999 Rev Ed) (“TMA”);

(b) section 8(3) TMA; and

(c) section 8(4) TMA.

AMP’s opposition under ss 8(3) and 8(4) TMA failed but its opposition succeeded under s 8(2)(b) TMA.

[4] In allowing AMP’s opposition to succeed under s 8(2)(b) TMA, the PAR found that there was a “likelihood of confusion” between Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark in Class 16 covering “Magazines, books and publications” (ie, the second entry in the table at [2] above), see [79] of the PAR’s Grounds of Decision (“GD”).

[5] In Ozone’s appeal before me, only two grounds were canvassed by the parties, viz, ss 8(2)(b) and 8(4) TMA. Counsel for AMP confirmed that AMP was not relying on s 8(3) TMA.

[6] After hearing the parties’ oral submissions and considering their written submissions, I reversed the decision of the PAR and allowed Ozone’s Trade Mark Application No T02/03173J for the “HYSTERIC GLAMOUR” word mark in Class 16 to proceed to registration (see [1] above). I now give the reasons for my decision. To facilitate understanding, I have set out the schematic arrangement of the contents herein as follows:

[7] With respect to AMP, the PAR set out the following background facts at [11]–[17] of his GD:

[8] With respect to Ozone, the following background facts were set out at [18]–[23] of the GD:

[9] As ss 8(2)(b) and 8(4) TMA were raised in this appeal before me (see [5] above), I shall set out the PAR’s findings vis-à-vis these two sections only.

[10] Section 8(2)(b) TMA states:

[11] With respect to AMP’s opposition under s 8(2)(b) TMA, the PAR observed (at [62] of the GD) that AMP had the burden of proving that the following criteria were satisfied:

(a) that AMP had earlier trade mark registrations as defined in s 2 TMA;

(b) that Ozone’s mark (viz, “HYSTERIC GLAMOUR”) and AMP’s earlier trade marks (viz, “GLAMOUR”) were similar;

(c) that the goods of Ozone’s mark (viz, “HYSTERIC GLAMOUR”) and AMP’s earlier trade marks (viz, “GLAMOUR”) were identical or similar; and

(d) there was a likelihood of confusion by virtue of the similarity of the marks and the goods.

[12] The several earlier trade mark registrations in favour of AMP (see [2] above) were not disputed by Ozone (see [64] of the GD). The PAR considered whether Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark were “similar” within the meaning of s 8(2)(b) TMA. As correctly noted by the PAR, there are three aspects to similarity, viz, visual similarity, aural or phonetic similarity, and conceptual similarity.

[13] The PAR found that Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark were visually dissimilar on a simple visual analysis and that there was no dominant element in either of the word marks:

[14] The PAR also found that Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark were aurally dissimilar:

[15] Having found that Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark were visually and aurally dissimilar, the PAR then found that the words marks were however conceptually similar:

[16] On the basis of such conceptual similarity alone, the PAR concluded that Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark, though visually and aurally dissimilar, were nevertheless “similar” within the meaning of s 8(2)(b) TMA. The PAR then proceeded to consider whether the goods bearing Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark were “similar”.

[17] The PAR found that there was similarity in respect of only the Class 16 goods specified by Ozone (ie, Ozone’s goods: see [1] above) and AMP (ie, AMP’s goods: see [2] above):

[18] The PAR then considered whether there was a likelihood of confusion on the part of the public in respect of AMP’s and Ozone’s Class 16 goods. He noted at [74] of the GD, referring to [66] of the Court of Appeal’s decision in McDonald’s Corp v Future Enterprises Pte Ltd [2005] 1 SLR 177 (“McDonald’s (CA)”) that:

[19] Following that, the PAR identified the relevant segment of the public to be “the entire group of women who read magazines for leisure and [who] are fashion conscious”. As Ozone had “not submitted very much on the intended use of the goods other than the specifications” (see [76] of the GD), the PAR considered notional use by Ozone of the “HYSTERIC GLAMOUR” mark in assessing the likelihood of confusion. In this aspect, the PAR noted that given the similarity of goods (see [17] above) and because it was “reasonable to speculate” (since Ozone had not submitted any evidence of the actual or intended use of its goods) that any use by Ozone of the “HYSTERIC GLAMOUR” mark would not fall far from their core business of “design and retailing of fashion apparel and accessories for both men and women”, this “may result in a situation where both the marks will be used on similar goods”. The PAR rejected AMP’s submission that the public would see Ozone’s “HYSTERIC GLAMOUR” mark as a subsidiary or spin-off of AMP’s “GLAMOUR” mark purely by the application of the conceptually similar marks onto similar goods and was of the view that there was no calculated attempt to deceive because Ozone’s and AMP’s “advertising retain their own special flavour, with no attempt to copy each other’s style” (see [78] of the GD). Nevertheless, the PAR concluded at [79] of the GD:

[20] Section 8(4) TMA states:

[21] Under this section, the PAR first observed, at [96] of the GD, that to succeed in an action for passing off under s 8(4) TMA, AMP had to satisfy three criteria, viz, that:

(a) AMP’s goods and services had acquired a goodwill or reputation in the market and are known by some distinguishing feature;

(b) there was a misrepresentation by Ozone (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by Ozone were goods or services of AMP; and

(c) AMP had suffered or was likely to suffer damage as a result of the erroneous belief engendered by Ozone’s misrepresentation.

[22] With regard to the first element of goodwill or reputation, the PAR observed that although AMP claimed that its use of the “GLAMOUR” mark in Singapore started from 1984, apart from a table and random invoices that did not date beyond the year 2000, there was no “good evidence” that AMP’s magazine started selling in Singapore from 1984. The PAR also noted that the highest circulation of AMP’s magazine at 903 copies in Singapore was unimpressive and was a “number that [was] disproportionately low for the population of Singapore that [was] around 3 million at that time” (see [88] of the GD). The PAR then concluded that the circulation numbers however indicated that AMP had “some goodwill and reputation in Singapore”. Since the further point as to whether the goodwill rested in AMP or the distributor of its magazine was not argued before the PAR, he concluded that the goodwill should belong to AMP in the absence of any challenge (see [98] of the GD).

[23] On misrepresentation, the PAR noted that the mere fact that a likelihood of confusion was found under s 8(2) TMA (see [18]–[19] above) did not automatically lead to the finding that there would be misrepresentation under passing off (see [99] of the GD); the element of misrepresentation “require[d] more than just a likelihood of confusion in the sense understood under trade mark law” (see [100] of the GD). Relying on his earlier observation (see [19] above) that there was no evidence that Ozone’s “HYSTERIC GLAMOUR” mark was a subsidiary or spin-off of AMP’s “GLAMOUR” mark and that Ozone’s and AMP’s advertising retained their own special flavour, with no attempt to copy each other’s style, the PAR concluded that:

[24] Having found that the second criteria of “misrepresentation” was not made out (see [23] above), the PAR then considered it “natural that there cannot be any case to damage that has occurred or that is likely to occur” (see [102] of the GD). However, the PAR also considered the alternative position where “confusing similarity” under s 8(2) TMA may be seen as a misrepresentation. In this aspect, he noted that he was unconvinced by AMP’s argument that its magazine was a “class publication” to prove damage:

[25] Accordingly, the PAR concluded that because the elements of passing off were not made out, AMP’s ground of opposition under s 8(4) TMA failed.

[26] Having set out the grounds for the PAR’s decision, I now proceed to summarise the parties’ main contentions in the appeal before me (see [27]–[28] below), before elaborating further on the parties’ arguments in my decision below.

[27] Ozone raised five arguments to contend that the PAR had erred in holding that its “HYSTERIC GLAMOUR” mark was “confusingly similar” to Ozone’s “GLAMOUR” mark pursuant to s 8(2)(b) TMA (see [10]–[19] above), viz, that the PAR had erred in:

(a) finding that its “HYSTERIC GLAMOUR” mark was conceptually similar to Ozone’s “GLAMOUR” mark (see [15] above);

(b) finding that its “HYSTERIC GLAMOUR” mark was “similar” to Ozone’s “GLAMOUR” mark on the basis of conceptual similarity alone;

(c) not considering the lack of distinctiveness of AMP’s earlier “GLAMOUR” mark (see [64] below);

(d) finding that Ozone’s goods, excluding “printed matter” (viz, “paper and cardboard; industrial packaging containers of paper; towels of paper; table napkins of paper; hand towels of paper; handkerchiefs of paper; paper patterns; tailors’ chalk; table cloths of paper; blinds of paper; banners of paper; flags of paper; baggage tags…paintings and calligraphic works; photographs, photographs stands; playing cards; stationery and study materials”) were similar to AMP’s goods (viz, “magazines books and publications”) ( see [17] above); and

(e) finding that there was a likelihood of confusion between its “HYSTERIC GLAMOUR” word mark and AMP’s “GLAMOUR” word mark (see [18]–[19] above).

[28] On its end, AMP submitted that the PAR had not erred except in three respects, viz, that the PAR had erred in holding that:

(a) its “GLAMOUR” mark was not visually similar to Ozone’s ”HYSTERIC GLAMOUR” mark (see [13] above);

(b) its “GLAMOUR” word mark was not aurally similar to Ozone’s ”HYSTERIC GLAMOUR” word mark (see [14] above); and

(c) the law of passing off would not prevent Ozone’s use of the “HYSTERIC GLAMOUR” word mark pursuant to s 8(4) TMA (see [20] –[25] above).

[29] As stated above at [5], the parties’ contentions before me related only to the PAR’s decision on the applicability of ss 8(2)(b) and 8(4) TMA. Before elaborating on the law and the parties’ respective arguments, it would be useful to first examine the standard of review applicable in the present proceedings.

[30] In Future Enterprises Pte Ltd v McDonald’s Corp [2007] 2 SLR 845 (“Future Enterprises”), the Court of Appeal was of the view that appeals from a decision of the PAR “are not in the nature of a rehearing” and the PAR’s findings of fact should be disturbed only where there is a “material error in principle”, ie, a “significant departure from a proper assessment of the law or the facts” (see [5]–[7] of Future Enterprises):

[31] The abovementioned approach in Future Enterprises, viz, that appeals from a decision of the PAR “are not in the nature of a rehearing,” however, differs from that stated in O 87 r 4(2) of the Rules of Court (Cap 322, R5, 2006 Rev Ed) (“ROC”), which applies to appeals against the decision of the Registrar of Trade Marks pursuant to s 75(2)(a) TMA. Counsel for both AMP and Ozone confirmed that the present application before me was made pursuant to s 75(2)(a) TMA read with O 87 r 4(2) of the ROC. The latter provision states as follows:

[32] The Court of Appeal in Future Enterprises did not appear to have considered the effect of O 87 r 4(2) of the ROC.

[33] This apparent omission to consider O 87 r 4(2) of the ROC was noted by Lee Seiu Kin J in the recent decision of MediaCorp News Pte Ltd v Astro All Asia Networks PLC [2009] 4 SLR 496 (“MediaCorp”):

[34] O 87 r 4(2) of the ROC was also covered by Chan Seng Onn J in Valentino Globe BV v Pacific Rim Industries Inc [2009] 4 SLR 577 (which was subsequently affirmed by the Court of Appeal in Civil Appeal No 46 of 2009) although neither Future Enterprises nor MediaCorp was mentioned. Chan J said:

[35] Be that as it may, as in MediaCorp, in view of my findings as set out below, it would make no difference whether or not the appeal is to be by way of a rehearing. I now turn to examine the two grounds raised in this appeal, viz, ss 8(2)(b) and 8(4) TMA.

[36] To successfully oppose Ozone’s “HYSTERIC GLAMOUR” mark under s 8(2)(b) TMA, AMP must show that the following three conditions are satisfied in a “step-by-step” fashion (see the Court of Appeal’s decision in The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] 2 SLR 690 (“The Polo/Lauren Co (CA)”):

(a) that Ozone’s “HYSTERIC GLAMOUR” word mark and AMP’s earlier “GLAMOUR” word mark are similar (“Condition 1”);

(b) if Condition 1 is satisfied, then that Ozone’s “HYSTERIC GLAMOUR” word mark is to be registered for goods identical with or similar to those for which AMP’s earlier “GLAMOUR” word mark is protected ( “Condition 2”); and

(c) if Condition 1 and Condition 2 are both satisfied, then that there exists a likelihood of confusion on the part of the public by virtue of the similarity of the marks (ie, Condition 1) and of the goods (ie, Condition 2) (“Condition 3”).

[37] With respect to these three conditions, the following observations at [8] of The Polo/Lauren Co (CA) are instructive:

[38] I now proceed to consider these respective conditions against the facts of this case in accordance with this framework.

[39] At the outset, it must be borne in mind that the word marks compared in this appeal were devoid of any stylisation, embellishment or device, and were as follows:

[40] As mentioned at [12] above, there are three aspects to similarity, viz, visual similarity, aural or phonetic similarity and conceptual similarity (see The Polo/Lauren Co (CA) at [10]). Whether there is a similarity of marks in these three aspects of similarity is essentially a question of fact (see Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp) [2007] 1 SLR 1082 (“Johnson & Johnson”) at [9]). The law does not however require all three similarities to be made out before the finding that the two marks are similar can be made (see MediaCorp at [32]). In this aspect, the observations of Bently and Sherman in Intellectual Property Law (Oxford University Press, 3rd Ed, 2009) (“Bently & Sherman”) at pp 863-866 are also apposite (footnotes omitted):

[41] A useful case in point is that of Mystery Drinks GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs), Karlsberg Brauerei KG Weber Intervening [2004] ETMR 217 (which was cited with approval in Johnson & Johnson at [13]), where “Mystery” was refused registration for non-alcoholic drinks as the mark “Mixery” had already been registered for beer. The learned authors of Bently & Sherman note at footnote 51, pp 864-865 that although the:

[42] Accordingly, the relative importance of each type of similarity will thus vary with the circumstances in hand, in particular the goods and the types of mark. The fact that one type of similarity is made out does not necessarily mean that the marks are similar. Also, regard should be had to the type of marks being compared (see MediaCorp at [32]).

[43] The distinctiveness in the earlier trade mark (ie, “GLAMOUR” in this case) is also one important factor in the inquiry into the similarity between the marks under s 8(2)(b) TMA. In this vein, Ng-Loy Wee Loon in Law of Intellectual Property in Singapore (Sweet & Maxwell Asia, 2009) (“Law of Intellectual Property in Singapore”) observes as follows (footnotes omitted):

[44] The learned authors of Bently & Sherman note further at pp 866-868 (footnotes omitted):

[45] That this is the approach adopted in Singapore case-law can be seen from the High Court’s decision in The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2005] 4 SLR 816 (“The Polo/Lauren Co (HC)”):

[46] While the italicised words in [26] of The Polo/Lauren Co (HC) (reproduced above at [45]) seem to suggest that the distinctiveness of the earlier trade mark is an important factor in the inquiry into the likelihood of confusion (as opposed to similarity between the marks: see [43] above), those in [27] (viz, “I first have to consider whether the plaintiff’s mark can be considered to be so distinctive that the differences would not negate the similarity” [emphasis added] and[28] (viz, “the differences between the plaintiff’s mark and the defendant’s sign are sufficient so that the latter does not capture the distinctiveness of the registered mark and is therefore not similar to the defendant’s mark” (emphasis added)) of the decision make it clear that the distinctiveness in an earlier trade mark is an important factor in the inquiry into the similarity between the marks under s 8(2)(b) TMA.

[47] In any event, the Court of Appeal’s subsequent decision in The Polo/Lauren Co (CA) does indicate that the distinctiveness in an earlier trade mark is an important factor to be considered in the inquiry into the similarity between the marks under s 8(2)(b) TMA and is not confined to the analysis of the likelihood of confusion:

[48] In accordance with this approach, I now proceed to examine whether Ozone‘s “HYSTERIC GLAMOUR” mark is “similar” to AMP’s “GLAMOUR” mark under s 8(2)(b) TMA.

[49] In the case of word marks, a determination of visual similarity typically involves looking at the (see Bently & Sherman at p 865):

[50] When comparing two marks visually, one must also bear in mind the “imperfect recollection” of the consumer (ie, that the consumer may not be able to remember a mark perfectly) (see Nautical Concept Pte Ltd v Jeffrey Mark Richard [2007] 1 SLR 1071 at [30]). The average consumer only rarely has the chance to make a direct comparison between the marks, and so must place his trust in the “imperfect picture of [the two marks] that he has kept in his mind” (Lloyd Schuhfabrik Meyer v Klijsen Handel BV, Case C-342/97 [1999] 2 CMLR 1343, 1358-9). Accordingly, where at first glance two marks may appear to be dissimilar, when the possibility of imperfect recollection is taken into account, the two marks may in fact be similar (see Bently & Sherman at p 865). Hence, the court will not compare the two marks side by side and examine them in detail because “the person who is confused often makes comparison from memory removed in time and space from the marks” (Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International) [2006] 2 SLR 669 at [55] per Tay Yong Kwang J). The court should also not take into account “any external added matter or circumstances” as the comparison is mark for mark.

[51] I have already set out at [13] above the PAR’s reasons for holding that Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark were visually dissimilar. While the PAR’s statement by itself that:

is inaccurate given that the inquiry into the similarity between the marks under s 8(2)(b) TMA must also necessarily consider, if any, the distinctive components of the marks (see [43]–[47] above), this was nevertheless done because the PAR also noted in the same paragraph that:

[52] The PAR’s approach (viz, by looking at the word marks and considering whether the language represented by the letters in Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark were so unusual or descriptive that there should be any dominant element) was consistent with that adopted by the High Court in The Polo/Lauren Co (HC) (see [45] above), which was affirmed on appeal in The Polo/Lauren Co (CA).

[53] In the present instance, although the word marks of Ozone and AMP share one common denominator, viz, the word “GLAMOUR”, I agreed with the PAR’s observation that there were:

Furthermore, given that the word “HYSTERIC”, which appears at the beginning of Ozone’s word mark, is almost of equal length to the word “GLAMOUR”, I could not see how it would be entirely overlooked or overshadowed by the word “GLAMOUR”. That Ozone’s word mark has two words was to my mind a visual difference. Thus, even if “GLAMOUR” is the more common word of the two (ie, “HYSTERIC” and “GLAMOUR”) and may come to mind more quickly than “HYSTERIC”, the consumer with an imperfect recollection (see [50] above) would still remember that Ozone’s word mark has an additional word to “GLAMOUR”. In these circumstances, I saw no reason to disturb the PAR’s finding that Ozone‘s “HYSTERIC GLAMOUR” mark was visually dissimilar to AMP’s “GLAMOUR” mark.

[54] I have already set out at [14] above the PAR’s reasons for holding that Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark were aurally dissimilar. It is worth noting that in Aristoc, Ld v Rysta, Ld (1943) 60 RPC 87, Luxmoore LJ’s dissenting judgment stated, at 108:

This statement was cited with approval in the House of Lords by Viscount Maugham in Aristoc, Ld v Rysta, Ld (1945) 62 RPC 65 at 72.

[55] In Bently & Sherman at p 865, the learned authors noted that:

In these circumstances, I was of the view that the PAR’s approach in dealing with the question of aural similarity was entirely consistent with the foregoing approach.

[56] In this case, both “HYSTERIC” and “GLAMOUR” were English words, although the latter could be said to be the more common English word. However, it must be borne in mind that Ozone’s word mark starts with the entirely separate word “HYSTERIC” preceding the word “GLAMOUR”. Also, Ozone’s “HYSTERIC GLAMOUR” word mark would be read and pronounced as two separate and distinct words, in the order of “HYSTERIC” and “GLAMOUR”. AMP’s “GLAMOUR” word mark, on the other hand, would be read as a single word. The comparison in this case was between a two-word mark and a single word mark, so that even if the actual word “HYSTERIC” was forgotten, it would not be forgotten that there was an additional word in Ozone’s word mark. While I did not agree entirely with the reasons of the PAR, I also concluded that the words marks were aurally dissimilar.

[57] With regard to the requirement of conceptual similarity, Bently & Sherman note at p 866 (footnotes omitted):

AMP’s “GLAMOUR” word mark in the present case clearly relied on the orthodox meaning of “glamour”.

[58] In this instance, the PAR had held that Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark were conceptually similar. Ozone contended that the PAR, who had found the word marks both visually and aurally dissimilar, had then subsequently erred in his finding that the word marks were similar on the basis of conceptual similarity alone. To this end, it referred to the following passage in the decision of the High Court in McDonald’s Corp v Future Enterprises Pte Ltd [2004] 2 SLR 652 (McDonald’s (HC)) (an appeal against which was dismissed by the Court of Appeal in McDonald’s (CA):

[59] Reading the entire passage as a whole, it must be appreciated that the observation in McDonald’s (HC) at [44] that:

which was preceded by the observation that:

referred to conceptual similarity not being “overriding or determinative” of the likelihood of confusion between the marks therein (ie, Condition 3: see [36(c)] above) and not to whether the words marks were similar (ie, Condition 1: see [36(a)] above). In these circumstances, Ozone’s reading of McDonald’s (HC) was incorrect in that it conflated Condition 1 and Condition 3, which as observed in The Polo/Lauren Co (CA), are separate conditions.

[60] The observation of the Australian Federal Court in Sports Café Ltd v Registrar of Trade Marks (1998) 42 IPR 552 (“Sports Café”) at [557] that:

also merits closer scrutiny. This observation was made by the Federal Court in Sports Café after reviewing an extract from the earlier decision of Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 (“Cooper Engineering”). In Sports Café, the Federal Court stated at 556-557 that:

[61] I could not agree with the narrow approach in Cooper Engineering. While I agreed that one should be slow to refuse registration of a mark simply on the basis of conceptual similarity alone, I was also of the view that it would be wrong to say that conceptual similarity would be relevant only if there was visual or aural similarity. As mentioned (at [42] above), the relative importance of each type of similarity must necessarily vary with the circumstances in hand, in particular the goods and the types of mark being compared. The fact that one type of similarity is made out also does not necessarily mean that the marks are similar. To adopt an overly generalised and restrictive principle that conceptual similarity is only relevant to determining similarity between marks when either visual or aural similarity has been made out would be to ignore the fact that each aspect of similarity can vary in different degrees vis-à-vis each other depending on the circumstances, and trade-offs are entirely possible between the three aspects of similarity – for example, conceptual similarity can offset visual and aural dissimilarities. A similar approach was also adopted in Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [2000] FSR 77 (a decision which was followed by the High Court in Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd [2006] 1 SLR 401) at 84:

In these circumstances, I was of the view that, in this instance, despite the word marks being visually and aurally dissimilar, conceptual similarity nevertheless deserved consideration.

[62] The PAR’s reasons for holding that Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark were conceptually similar have already been set out above at [15]. Against this, Ozone contended however that the two marks were conceptually dissimilar. It pointed out that while the word “GLAMOUR” was defined in the online Merriam-Webster dictionary as “an exciting and often illusory and romantic attractiveness”, the usage of the word “HYSTERIC”, which was defined in the Longman Dictionary of the English Language as “someone suffering from hysteria”, changed the complexion of the word “GLAMOUR”. According to it, although the concept of “GLAMOUR” was still present in “HYSTERIC GLAMOUR”, the concept had varied because one does not associate “HYSTERIC” with “GLAMOUR”. To support its position, it cited the case of Itochu Corporation v Worldwide Brands, Inc [2007] SGIPOS 9 (“Itochu”), where the marks under comparison were “CAMEL” and “SWEETCAMEL”, as being “closely analogous” to the present factual matrix. In holding that these marks were conceptually dissimilar, the PAR in that case made the following observations at [37]:

The decision in Itochu was upheld on appeal by the High Court.

[63] In the present instance, while the PAR was of the view that the word “HYSTERIC” did modify the concept of “GLAMOUR” to a “certain point”, the main concept of “GLAMOUR” had not been “completely reversed” as in Itochu. In this aspect, the PAR observed:

[64] I saw no reason to disturb the PAR’s holding that the word marks in this case were “in some way” (as opposed to completely or to a large extent) conceptually similar. As Ozone conceded, the concept of “GLAMOUR” was still present in “HYSTERIC GLAMOUR”.

[65] The inquiry however does not stop here. The distinctiveness of AMP’s “GLAMOUR” mark must also be considered at this stage.

[66] In the present case, the PAR did not find it:

because he was of the opinion that:

[67] This approach is however contrary to that set out above at [43]–[47] where the distinctiveness of the earlier trade mark is an important factor in the inquiry into the similarity between the marks under s 8(2)(b) TMA.

[68] In these circumstances, I was of the view that the PAR had erred in failing to go further after considering the visual, aural and conceptual similarity of the word marks to consider the level of distinctiveness of AMP’s “GLAMOUR” word mark in his inquiry into the similarity between the marks under s 8(2)(b) TMA.

[69] In the present instance, there was no evidence before me to show that the word “GLAMOUR”, which is an ordinary English word (see [62] above) and not an inventive word, is inherently distinctive. The word “GLAMOUR”, the title of AMP’s magazine, in fact describes the very nature of the content in AMP’s magazine, which is described, on its website, as a magazine for young women interested in fashion, beauty and a contemporary lifestyle and which contains a number of photographs and advertisements displaying fashionable clothing and accessories. In my view, the word “GLAMOUR” is not inherently distinctive.

[70] Has the word mark “GLAMOUR” then acquired distinctiveness through use in Singapore? To my mind, based on the limited and unsatisfactory evidence tendered by AMP which did little to support its claim that the “GLAMOUR” mark was extensively used in Singapore, this question must be answered in the negative. As evidence in support of its circulation figures between 1990 - 2002 (see [14] of the GD), AMP tendered nine invoices from STP Distributors Pte Ltd dated:

[71] It may readily be observed that these nine invoices related only to sales in specific months in the limited period from 2000 to 2002. They did not reflect a monthly distribution from 1984 (the year AMP claimed its use of the “GLAMOUR” mark in Singapore started) and neither did they correspond to the total distribution figures submitted by AMP (see [14] of the GD). For example, although the invoice dated 24 August 2001 reflected only the sale of 30 copies of the September 2001 edition of the “GLAMOUR” magazine to TIMES, AMP claimed a distribution figure of 823 in September 2001. The nine invoices adduced supported only a fraction of the distribution figures claimed by AMP. Furthermore, the nine invoices related only to the distribution of the “GLAMOUR” magazine to one branch of TIMES (viz, the Centrepoint outlet) and a single supermarket. There was nothing in evidence to support the promotion and/or subsequent sale of the “GLAMOUR” magazine to the Singapore public. In these circumstances, given the paucity of AMP’s evidence, I was of the view that it could not be said that the “GLAMOUR” mark had acquired distinctiveness through use in Singapore.

[72] AMP sought to argue, without raising any relevant authority, that its “GLAMOUR” word mark was distinctive by virtue of the fact that it was a registered trade mark under the Act. However such a line of argument was rejected by the Court of Appeal in The Polo/Lauren Co (CA):

[73] Given my conclusion that Ozone’s “HYSTERIC GLAMOUR” word mark and AMP’s “GLAMOUR” word mark was visually and aurally dissimilar, but conceptually similar, and that “GLAMOUR” was merely descriptive and neither inherently distinctive nor distinctive by use, I was of the view that there was no similarity between the marks under s 8(2)(b) TMA. Strictly speaking, having arrived at this conclusion, it was not necessary, for the purposes of s 8(2)(b) TMA to go on to consider Condition 2 (see [36(b)] above) and Condition 3 (see [36(c)] above). Nevertheless, for the sake of completeness, I shall do so.

[74] With regard to this requirement, the learned authors of Bently & Sherman note at p 869:

[75] The relevant factors for assessing similarity of goods covered by Ozone’s “HYSTERIC GLAMOUR” word mark and AMP’s “GLAMOUR” word mark are (see British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (“British Sugar”) at 296–297):

(a) the respective uses of the respective goods;

(b) the respective end users of the respective goods:

(c) the physical nature of the goods;

(d) the respective trade channels through which the goods reach the market;

(e) in the case of self-serve consumer items, whether in practice they are respectively found or likely to be found on the same or different shelves; and

(f) whether the respective goods are competitive or complementary. This inquiry may take into account how those in trade classify goods, for instance whether market research companies who act for industry put the goods or services in the same or different sectors.

These factors were adopted in Johnson & Johnson at [14] and MediaCorp at [41]. These factors need not all be satisfied before the goods can be treated as similar (Johnson & Johnson at [18]).

[76] The learned authors of Bently & Sherman explain at pp 869-870 (footnotes omitted) how these factors were applied in British Sugar vis-à-vis a non-distinctive mark (as I had adjudged “GLAMOUR” to be (see [66]–[72] above) :

[77] As noted above at [17], the PAR however saw no reason to decide along the lines of the British Sugar factors (see [75] above) in coming to his conclusion that:

[78] The PAR had also referred to an apparent concession by Ozone that “there may be an overlap [between AMP’s goods and] the goods that [Ozone is] applying for”. For convenience, it would be useful to set out the nature of the parties’ respective goods:

In the course of the hearing before me, Ozone pointed out that its concession of an overlap with AMP’s “magazines, books and publications” was only limited to “printed matter” and did not extend to “paper and cardboard; industrial packaging containers of paper; towels of paper; table napkins of paper; hand towels of paper; handkerchiefs of paper; paper patterns; tailors’ chalk; table cloths of paper; blinds of paper; banners of paper; flags of paper; baggage tags…paintings and calligraphic works; photographs, photographs stands; playing cards; stationery and study materials” (“Ozone’s other goods”), which according to Ozone were “very different” from “magazines, books and publications”. Ozone submitted that Ozone’s other goods could “be broadly classified into stationery, hygiene paper products labels/banners/blinds made of paper and photographs” and that applying the British Sugar test, Ozone’s other goods were different in function from “magazines, books and publications”. Ozone contended that the parties’ respective target consumers were also different as people buying magazines would not be purchasing “stationery, hygiene paper products labels/banners/blinds made of paper and photographs” as alternatives and accordingly the compared goods were not in competition. The trade channels were also different. While AMP’s “magazines, books and publications” were likely to be sold at newsstands and bookstores, Ozone’s other goods would be sold at supermarkets, furniture stores or bookstores and that even if Ozone’s other goods were sold in the same stores, they would be placed at different sections of the store as “magazines are not usually placed together with stationery, hygiene paper products labels/banners/blinds made of paper and photographs”.

[79] Ozone referred to the decision of In the Matter of Application No 2242582A by the Secretary to the Quorn Hunt to register a series of trade marks in Classes 9, 13, 16, 18, 21, 25 and 41 and In the Matter of Opposition No 90056 by Marlow Foods Limited (O-319-04) (“Marlow Foods”) where the respective goods in Class 16 being compared were as follows (see para 28):

The compared marks were similar (ie, Condition 1 was satisfied). The hearing officer found that the goods “printed matter, “cards”, “calendars” and “diaries” were similar to the Opponent’s goods but allowed the Applicant’s mark to proceed to registration in respect of the remaining goods, viz, “…stationery, writing and drawing instruments, cards, postcards photographs, pictures, …coasters, posters [and] instruction manuals” which were considered dissimilar.

[80] I found Ozone’s arguments and the approach in Marlow Foods practical and sensible. In these circumstances, I was of the view that although “printed matter” in Ozone’s goods were similar to AMP’s goods (viz, “magazines, books and publications”), Ozone’s other goods were dissimilar. Accordingly, I was of the view that the PAR had erred in finding that Ozone’s other goods were similar to AMP’s goods (viz, “magazines books and publications”). Accordingly, I was of the view that Condition 2 was thus satisfied only to the extent as described. I now move on to examine Condition 3.

[81] As stated above at [37], even where the marks are similar and the goods are similar, this does not mean that there will ipso facto be confusion in the mind of the public. There is no presumption of confusion even where these two aspects of similarity are made out (The Polo/Lauren Co (CA) at [8]).

[82] The learned authors of Bently & Sherman elaborate at p 872 (footnotes omitted) as to what the public must be confused about:

[83] As to what constitutes “likelihood of confusion”, these principles, as distilled from previous cases, were succinctly laid out in MediaCorp (which had similarly dealt with s 8(2)(b) TMA) at [43]:

[84] It appears that the court is entitled to look outside the mark and the sign, as well as the articles, to assess whether there exists a likelihood of confusion. This proposition was in fact extracted from The Polo/Lauren Co (CA) (which was a trade mark infringement action under s 27(2)(b) TMA), which had, in turn, relied on Kellogg Co v Pacific Food Products Sdn Bhd [1999] 2 SLR 651 and McDonald’s (CA), both of which were trade mark registration oppositions pursuant to s 15 of the Trade Marks Act (Cap 332, 1992 Rev Ed). The Court of Appeal in The Polo/Lauren Co (CA) stated that:

[85] Ozone also referred to the decision of Kitchin J in the English High Court decision of Julius Sämaan Ltd v Tetrosyl Ltd [2006] FSR 42 (“Julius Säamaan”), which involved, inter alia, a trade mark infringement action. The relevant portion of the decision, at 872, reads:

[86] As may be seen, the approach advocated in Julius Säamaan to determining the likelihood of confusion, which does not look outside the marks, is different from that adopted in The Polo/Lauren Co (CA) which “look[s] outside the mark and the sign, as well as the articles, to assess whether there exists a likelihood of confusion”. This difference was in fact noted at [18]-[20] of The Polo/Lauren Co (HC), with reasons offered as to why the latter approach (ie, that adopted in The Polo/Lauren Co (CA)) should be favoured:

[87] Although The Polo/Lauren Co (CA) was a trade mark infringement action under s 27(2)(b) TMA, the Court of Appeal in that case was of the view that s 8(2)(b) of the TMA should be similarly construed:

Nevertheless, where, as in the present case, there was not much evidence as to how Ozone intends to apply its mark or to distinguish its goods from AMP’s in Singapore, the consideration of factors other than the marks themselves would be limited, although the consideration of other factors was in principle permissible.

[88] In the course of the hearing before me, AMP produced a copy of a magazine, which was a “25th anniversary book” bearing the “HYSTERIC GLAMOUR” word mark, which had been purchased from a bookstore in Singapore in September 2009. However, in my view, this itself did not constitute much evidence about Ozone’s intentions in Singapore with its mark.

[89] As stated above at [19], the PAR had identified the relevant segment of the public to be “the entire group of women who read magazines for leisure and [who] are fashion conscious.” I agreed with this classification. However, I would add that as noted at [36] of The Polo/Lauren Co (HC):

[90] Furthermore, in the context of the average consumer of magazines and their purchasing habits, it has been noted in In the Matter of Application No 2136517A in the name of IPC Magazines Limited to register a trade mark in Classes 9, 16 & 35 and In the Matter of Opposition thereto under No 50532 by Liberty Media for Women LLC that:

[91] In these circumstances, given my conclusion that there was no similarity between Ozone’s “HYSTERIC GLAMOUR” mark and AMP’s “GLAMOUR” mark under s 8(2)(b) TMA (see [73] above), and bearing in mind the characteristics of the average consumer who would be likely to buy the goods of Ozone and AMP (see [82]-[83] and [89] above) and who would “exercise some care and good sense in making his purchases” (see [83] above), I was of the view that even for “printed matter”, let alone Ozone’s other goods, the ordinary Singaporean would have little difficulty discerning that Ozone’s goods bearing the “HYSTERIC GLAMOUR” mark are not from the same trade source or origin as AMP’s goods bearing the “GLAMOUR” mark. In this aspect, it would be useful to refer to In the Matter of Application No 1568121 in the name of Global Spa and in the matter of Opposition thereto under No 45679 in the name of Advance Magazine Publishers Inc. Here, the United Kingdom Intellectual Property Office Hearing Officer, adopting a similar stance, observed as follows:

I should add that this observation was made even though the opponents in that case, AMP, had claimed, as in this case (see [7] above), that the “GLAMOUR” mark had been registered in several other countries. Furthermore, it bears mention also that, as stated at paras 10 and 11 of the statutory declaration declared in Japan on 5 December 2006 by Mr Noriyuki Yamagani (see [8] above), that AMP’s “GLAMOUR” mark in Class 16 covering:

and Ozone’s “HYSTERIC GLAMOUR” mark in Class 16 covering:

have in fact co-existed on the United Kingdom Trade Marks Register since 2001.

[92] For all the foregoing reasons, I was thus of the view that AMP’s opposition to the registration of Ozone’s “HYSTERIC GLAMOUR” word mark in Class 16 pursuant to s 8(2)(b) TMA should not succeed. The PAR’s decision on this provision was accordingly reversed. I now proceed to examine AMP’s opposition pursuant to s 8(4) TMA.

[93] As stated above at [28], AMP contended that the PAR had erred in holding that the law of passing off would not prevent Ozone’s use of the “HYSTERIC GLAMOUR” word mark pursuant to s 8(4) TMA.

[94] It is trite that for AMP to succeed in an action for passing off, it had to prove the following classical trinity of elements, viz:

(a) a goodwill or reputation attached to the goods and services it supplies in the mind of the purchasing public by association with the identifying “get-up”, such that the “get-up” is recognised by the public as distinctive specifically of AMP’s goods or services;

(b) a misrepresentation by Ozone to the public (whether or not intentional) leading or likely to lead the public to believe that the goods offered by Ozone are the goods of AMP; and

(c) that it is likely to suffer damage by reason of the erroneous belief engendered by Ozone’s misrepresentation that the source of its goods is the same as the source of those offered by AMP.

(See the decisions of the Court of Appeal in Novelty Pte Ltd v Amanresorts Ltd and another [2009] 3 SLR 216 (“Amanresorts”) at [36]-[37] and City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2009] SGCA 53 (“City Chain”)). As these three elements were correctly identified by the PAR (see [21] above), I needed only to examine whether the PAR had erred in applying these three elements to the facts of the present case.

[95] In the submissions before me, goodwill and reputation were referred to interchangeably. For present purposes, I will refer to goodwill only. The two essential features of goodwill, which is a question of fact, were summarised recently in City Chain as follows:

[96] It bears mention that where a case involves indicia which are descriptive of the goods or services in question (as in this case: see [69] above), the law imposes a higher burden on the plaintiff (ie, AMP) when proving the existence of his goodwill. The leading decision in this aspect is that of the Court of Appeal in Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd (trading as ONE.99 SHOP) [2000] 2 SLR 766 (“Lifestyle 1.99”). The facts of and principles stated in that case have been helpfully summarised in Law of Intellectual Property in Singapore at p 209 as follows:

[97] In a similar vein, in Johnson & Johnson, where the registered mark was “Carefree” and the mark sought to be registered was “Careree”, the court noted:

[98] In the present case, bearing in mind the greater burden of proof on AMP (in light of my earlier finding that the “GLAMOUR” word mark is purely descriptive: see [69] above), I was of the view that the PAR had erred in concluding that there was goodwill (see [22] above). Given the unsatisfactory nature of the evidence tendered by AMP to show volume of sales (viz, the nine invoices: see [70] above) as elaborated above at [71] and the lack of evidence of any promotions or advertisements undertaken by AMP in Singapore, it cannot be said that the “GLAMOUR” word mark has acquired a “secondary meaning”. As the PAR observed:

[99] The paucity of evidence in the present case must be contrasted with the ample evidence in Lifestyle 1.99 of the plaintiff’s goodwill. As stated in Law of Intellectual Property in Singapore at pp 210-211:

[100] In these circumstances, I was of the view that AMP had failed to establish the element of goodwill (see [94(a)] above). In the light of this conclusion, there was no need for me to set out my views on the second element of misrepresentation (see [94(b)] above) but I shall do so for the sake of completeness.

[101] With regard to the element of misrepresentation, the learned author of Law of Intellectual Property in Singapore notes at p 225 (footnotes omitted):

[102] It would also be useful to refer to Amanresorts which confirms that confusion is an essential element of the tort of passing off. As stated in the headnote:

[103] Be that as it may, where a descriptive mark is adopted by a plaintiff, a slight difference between the plaintiff’s mark and the defendant’s mark is sufficient to distinguish them and to undo any possibility of confusion in the mark (see Law of Intellectual Property in Singapore at p 211, para 17.1.18, and Lifestyle 1.99 at [39]).

[104] In the present case, the PAR had concluded that there was no misrepresentation because Ozone was not attempting to “mislead or deceive the public as to the origin of the goods”:

[105] The PAR had made his ultimate finding that there was no misrepresentation on the basis that there was no attempt on the part of Ozone to mislead or deceive the public as to the origin of the goods. This basis of the PAR’s conclusion was incorrect because with regard to the element of misrepresentation, what the courts are concerned with is the effect of Ozone’s conduct on the actual and potential audience of AMP (see [102] above) and there can be a misrepresentation even if it was made innocently (see Johnson & Johnson at [25]). On the other hand, Ozone’s state of mind would have been a relevant consideration in finding an increased likelihood of confusion if Ozone had been found (there was no evidence of this in this case) to have had an intention to mislead or deceive. As noted in Law of Intellectual Property in Singapore at pp 230-231:

[106] AMP contended that the PAR had “committed a further material error of principle by restricting his analysis to whether there was any confusion…to the origin of the goods as evident from his conclusion that `there is no attempt where [Ozone was] trying to mislead or deceive the public as to the origin of the goods’. [emphasis added]. According to AMP, the “PAR’s restriction of the analysis as such defies established law that confusion under the law of passing off is not limited to confusion as to the origin of [Ozone’s] goods”.

[107] I accepted the general principle that the nature of the confusion may relate to the trade source of the goods or services or to the quality of the goods. As stated in Law of Intellectual Property in Singapore at pp 226-228:

[108] At [96] above, I had stated that because the present case involved indicia which was descriptive of the goods in question, a higher burden was imposed on AMP in proving the existence of goodwill. This higher burden of proof is also extended to the element of misrepresentation, as noted in Law of Intellectual Property in Singapore at pp 230-231:

[109] In my view, it was clear however that contrary to AMP’s contention (see [106] above), the PAR had not restricted his analysis to only whether there was any confusion to the origin of the goods but had also considered and rejected AMP’s argument that there had been a misrepresentation as to quality, albeit in the context of the third element of “damage” (see [103]-[105] of the GD cited at [24] above). Bearing in mind the higher burden of proof on the shoulders of AMP and the PAR’s finding in this aspect, I was of the opinion that there had been no misrepresentation as to quality. I now move on to consider whether there had been a misrepresentation as to the trade source of the goods.

[110] In this case, while I accepted that the proximity of a defendant’s field of activity to a plaintiff’s is a relevant consideration in deciding whether there is likelihood of confusion (see Law of Intellectual Property in Singapore at p 231, para 18.4.8 and Amanresorts at para 84), and that there was some proximity between Ozone’s field of activity (viz, the design and retailing of fashion apparel and fashion accessories for both men and women: see [8] above) and AMP’s field of activity (viz, the “GLAMOUR” mark primarily being used in conjunction with the “GLAMOUR” magazine which is devoted to the reporting and portraying of, inter alia, contemporary women’s fashion and beauty: see [7] above) in that both relate to “fashion”, given that:

(a) the word marks of Ozone and AMP were visually dissimilar (see [53] above) and aurally dissimilar (see [56] above);

(b) “GLAMOUR” is merely descriptive and not inherently distinctive nor distinctive by use (see [73] above);

(c) a higher burden of proof is imposed on AMP (see [108] above); and

(d) Ozone’s other goods were different from AMP’s goods (viz, “magazines books and publications”) (see [80] above),

I was of the opinion that the element of misrepresentation was also not satisfied vis-à-vis Ozone’s other goods.

[111] With regard to “printed matter”, bearing in mind Ozone’s concession of an overlap between “printed matter” and AMP’s “magazines, books and publications” but taking into account [110(a)]-[110(c)], I was of the view that, on balance, the element of misrepresentation was also not made out.

[112] With regard to the element relating to the question of damage, this was accepted by Ozone if the first two elements were made out.

[113] For all the foregoing reasons, I saw no reason to disturb the PAR’s eventual conclusion that AMP’s ground of opposition under s 8(4) TMA was not made out and must fail.

[114] Given my conclusion that AMP’s opposition pursuant to ss 8(2)(b) and 8(4) TMA must fail , I allowed Ozone’s appeal and reversed the PAR’s decision dated 16 March 2009. In so doing, I ordered that:

(a) Ozone’s Trade Mark Application No T02/03173J for the “HYSTERIC GLAMOUR” word mark be allowed to proceed to registration;

(b) the costs awarded to AMP in the hearing before the PAR be set aside; and

(c) the costs of this appeal and the costs of the hearing before the PAR be paid by AMP to Ozone.