Australia: Not a tango dance, but a dispute over cocoa and chocolate brands
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This article examines the recent decision of the Intellectual Property Office of Singapore (IPOS) in the case of a trademark application filed by Hardwood Pte Ltd and subsequent opposition by GCIH Trademarks Limited  SIGPOS 6.
This case involves opposition proceedings initiated by GCIH Trademarks Limited (the “Opponent“) against Singapore’s trademark application for “OT TANGO” in Class 30 filed by Hardwood Pte Ltd.
The Opponent is in the food production business and holds trademark registrations in many countries around the world, including Singapore, for a range of “TANGO“word and composite marks which have been used in connection with chocolates and confectionery since 1991. In the meantime, the applicant is part of the Orang Tua Group (“OT Group”) based in Indonesia and producing a range of daily necessities, including food and drink. Plaintiff argued that their “OT TANGOThe brand was originally launched as a wafer brand in Indonesia in 1994 and first used in Singapore in 2000.
In this dispute, the Opponent alleged that “OT TANGO“looks too much like the Adversary’s”TANGO“trademarks likely to confuse the relevant public and would constitute an offense of passing off. They also claimed that”TANGO” is a well-known mark in Singapore and the registration of “OT TANGO” in class 30 is likely to harm their interests.
The opposition was successful because the Principal Assistant Registrar (“PAR”) was satisfied that the marks are similar to a large extent, as they share a common denominator and the element “TO” would not serve to distinguish them. The tort of passing off was successfully established by the Opponent, but the well-known status of the Opponent’s mark was not decided by the Registrar since the Opponent had already obtained successful on two of his three claims.
In assessing the similarity of the marks, the Registrar concluded that the goods covered by the marks were identical in that they relate to “chocolate and cocoa related goods” in Class 30 and were visually , phonetically and conceptually similar to a significant extent, so these elements point towards a finding of likelihood of confusion. As the goods were considered as general use products which did not attract much attention, the average consumer would be misled into thinking that “TO“is the manufacturer of”TANGO“chocolate/confectionery or that the two entities are commercially linked.
The presence of the additional text element “TOdid not assist the Applicant in his arguments that the marks are dissimilar. However, we would like to point out two important issues that were raised and clarified at this part of the decision (the mark comparison stage) which may of interest to trademark practitioners:
- whether evidence of acquired distinctiveness can be taken into account when assessing the similarity of marks; and
- whether the inclusion of a house brand can help reinforce the differences between two potentially conflicting brands.
With respect to the first question, the Opponent had advanced sales and advertising figures and maintained that “TANGO“enjoyed greater distinctiveness because it had been using the mark in Singapore since 1991 and its wares were sold in various well-known supermarkets in Singapore. The Opponent argued that the evidence strengthened the case of similarity of the marks against the Mark applied for, but this argument was rejected by PAR as it should be reserved at the confusion assessment stage.
Therefore, we now understand that evidence of acquired distinctiveness has a bearing at the confusion assessment stage because such evidence relates to the look-alike effect as perceived by consumers, and not at the similarity assessment stage.
With respect to the second issue, the Applicant argued that the presence of “OT” introduces the idea of a brand identity which was the distinguishing factor between the marks. However, the RAP was of the opinion that “TO” and “TANGO” were found to be equally distinctive in relation to the goods and “TO“was not enough on its own to distract consumers from the common denominator”TANGO“.”TO“, on its own, did not communicate to the average consumer a commercial source indicating that it actually meant “Orang Tua”. The result would have been different if the mark at issue was a house mark followed by a descriptive term or not distinctive.
The Opponent’s passing off claim was also successful since the Opponent had established a likelihood of confusion for like wares. The element of goodwill was established by the Opponent’s evidence of the use of its “TANGO“marks in Singapore relating to chocolate and confectionery for several years prior to the date of application of”OT TANGO“, May 31, 2018. Finally, the prejudice was established because the products were in direct competition and the misrepresentation was likely to lead to the diversion of sales or the loss of sales by the Opponent.
As detailed above, this decision provides two important points for all practitioners and businesses. First, it addresses the appropriate time at which evidence of acquired distinctiveness may be presented for consideration by the Registrar in an opposition based on similarity of marks. Second, it provides additional guidance for practitioners and businesses to assess whether the incorporation of a house mark may be sufficient (or insufficient) to reinforce the differences between two potentially competing marks before filing an application.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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