The SEIKI trademark was recently granted registration in Singapore despite an opposition from the proprietors of the SEIKO mark. The Registrar dismissed the opposition despite finding that SEIKO is a well-known mark and that the two marks are similar. A closer examination of the Registrar’s reasoning, however, reveals that the decision is not as incongruous as it may seem at first glance.
The mark SEIKI (“century” or “regular” in Japanese) has been used by Choice Fortune Holdings since 2010. Choice sought to register the SEIKI mark for Class 9 with respect to televisions and disc drives.
On the other hand, the mark SEIKO (“success” or “precise workmanship” in Japanese) has been used by Seiko Kabushiki Kaisha since 1924. The said mark is registered in Singapore in Class 9 with respect to a variety of goods, including apparatus for recording, transmission or reproduction of sound or images magnetic data carriers, recording discs.
The opposition in this instance was based on the following grounds:
1. The similarity of the SEIKI mark to the earlier-in-time SEIKO mark registrations, as per Section 8(2)(b) of the Singapore Trademark Act, and
2. The unfair dilution of the earlier-in- time, well-known “SEIKO” mark(s), as per Section 8(4)(ii)(A) the Singapore Trademark Act.
Similarity to an earlier trademark
The Registrar considered the similarity of the marks and the similarity of the goods before considering the likelihood that confusion would occur. However, the Registrar’s decision was primarily influenced by extraneous factors.
The Registrar firstly concluded that the contending marks were ‘marginally’ similar when viewed in their totality for the following reasons: (i) the marks are only visually similar to a low degree despite a single differing letter; (ii) the marks are aurally similar to a low degree despite a single differing vowel; and (iii) the marks are not conceptually similar despite sharing similar origins (i.e. merely being ‘Japanese’ in origin was not enough as the feature would have different connotations for different users).
The Registrar further concluded that the goods covered by the contending marks overlap with each other.
Lastly, despite concluding that the marks and the goods were similar, the Registrar determined that there was no reasonable likelihood of confusion. This was because the average consumer could reasonably be expected to devote considerable attention to the selection and purchase of the goods with respect to which the said marks are used. The relatively high cost of said goods makes the probability of confusion rather unlikely.
Dilution of a well-known mark
In Singapore, proprietors of well-known marks have a right to prevent the dilution of their marks, even if there is no likelihood of confusion. However, as illustrated below, proprietors would be well-advised to resort to this ground only if they are capable of establishing that the SEIKI mark will call to mind the SEIKO mark.
In the present case, Seiko failed to establish that dilution would occur due to use of the SEIKI mark in relation to televisions and disc drives as (i) the marks were only marginally similar when observed in totality; (ii) there was little similarity between the Application goods and the goods for which the SEIKO mark was well-known in Singapore (i.e. timepieces); and (iii) it was therefore not ‘extremely likely’ that consumers would connect the SEIKI mark to the SEIKO mark.
In conclusion, a successful opposition does not simply rest on the similarity between the marks and the goods claimed. Rather, due consideration should be given to the various other factors which may have an impact on the likelihood of confusion requirement.
Additionally, it should be stressed that the dilution ground requires the opponent to prove similarity with respect to the goods for which the mark is well-known as opposed to the goods for which the mark is registered. Proprietors should thus be cautious not to commit to such proceedings merely upon the basis of their mark registrations and may wish to conduct thorough preliminary market surveys before opposing an application on the said ground.
This article first appeared in Asia IP. For further information please visit http://www.asiaiplaw.com.