Singapore – SingTel Strikes First Blow In “Mio” Trade Mark Suit

In a recent judgment, the Singapore High Court upheld the validity of Singapore Telecommunications Ltd’s (SingTel) trade marks and accordingly acquitted SingTel of trade mark infringement against Mitac International Corporation’s (Mitac) registered trade marks.

Background

Mitac is a company incorporated in Taiwan and is in the business of providing computed products, internet appliances, wireless communication products and photoelectric applications. The trade marks said to be infringed upon relate to the word “mio” in stylized form (“the Mio Trade Mark”) as well as a second mark additionally comprising the words “Digi Walker” (“the Mio Digi Walker Trade Mark”), also in stylized form. Both are registered in Class 9, with the former registered in respect of computers, MP3 players, PDAs, GPS devices, portable media players, video game machines for use with televisions, LCD television sets, mobile phones and cellular phones. The latter is registered in respect of CRTs, computer printers, disc drives, computer keyboards, computer mouse, add-on cards, PCB modules, modems, power supplies, monitors, application specific ICs, scanners, fax machine for use with computers, leather cases for cellular telephones, cases for cellular telephones, hands-free handsets for cellular telephones used in cars, holders for cellular telephones used in cars, computers, computer software, PDAs, telephones, telephone answering machines mobile telephones and cellular telephones.

SingTel is the leading telecommunications group in Singapore, and is the owner of various trade marks in Classes 9 and 37 including “Mio Box” in Class 9 in respect of computer modems to enable connection to the Internet, “Mio TV” in Class 9 in respect of set-top boxes to enable connection to the Internet and “Mio Plan” in Class 37 in respect of installing, maintaining and repairing apparatuses, instruments, units, devices and machines relating to the field of electronics, computing, on-line facilities, communications and telecommunications. In addition, SingTel had also been promoting and/or selling goods carrying the unregistered marks “mio mobile”, “mio” and “Generation mio”.

A suit claiming infringement of the Mio Trade Mark and the Mio Digi Walker Trade Mark and the invalidity of SingTel’s “mio” marks was subsequently filed and consolidated to be heard together.

The Decision

Mitac’s suit predominantly revolved around 3 claims:

a) That SingTel had infringed their trade marks under s27(1) of the Trade Marks Act by using in the course of trade in Singapore signs which were identical with their trade marks in relation to goods which were identical to goods for which they were registered.

b) That SingTel had infringed their trade marks under s27(2) of the Trade Marks Act by using in the course of trade in Singapore signs which were identical with their trade marks in relation to goods and services which were similar to goods for which they were registered, and/or using in the course of trade in Singapore signs which were similar to their trade marks in relation to goods and services which were identical with or similar to goods for which they were registered, such that there existed a likelihood of confusion on the part of the public.

c) That SingTel had infringed their trade marks under s31(5) by using, in relation to goods and/or services, counterfeit trade marks which were identical with or so nearly resembling their trade marks as to be calculated to deceive.

Identity and/or similarity of marks

In comparing the marks, the Court found that the marks, even without the generic words in SingTel’s ‘mio” marks, were neither identical nor similar, and the claims as above therefore could not stand.

The Court further held that while there was indeed aural similarity, there was no visual identity, which was necessary for the marks to be found identical. It was also found that the marks were not similar under s27(2); the script, font, size, stylizing and general layout of the individual letters all serving to distinguish the marks sufficiently. Further, there was no conceptual similarity in the use of the word “mio” in relation to the parties’ goods, since it was found that SingTel’s use of its marks pertained to its services provided and not the goods themselves. While this would be sufficient to strike out all of the above claims, the Court nonetheless went on to consider the other issues raised.

Whether there was use of the mark in relation to certain goods

The Court also rejected Mitac’s arguments that SingTel’s “mio” marks were used in relation to laptops, mobile phones, telephones and other goods covered in the specification of Mitac’s trade marks. (This argument was based on the fact that the said goods had appeared in SingTel’s newspapers advertisements and television commercials together with SingTel’s said marks.) Again, since the Court had found the advertisements and commercials to be aimed at promoting SingTel’s umbrella of services as opposed to the goods themselves, the marks could not be said to be used in relation to the goods above. Further, the Court also found that SingTel’s maintenance and installation services were not provided under the “mio” marks. This was because, (despite the mark appearing on Mio Box and the Mio TV set-top box), , the attire of the SingTel Representative, Service Report and Confirmation of Job Done all bore the SingTel logo instead of SingTel’s “mio” marks.

Whether there was a likelihood of confusion

Having found that SingTel had not used its “mio” marks in relation to the aforesaid goods, the Court then proceeded to find whether the use of the marks in respect of the Mio Box and the Mio TV set-top box had resulted in a likelihood of confusion. Since both of the products were effectively modems and carried SingTel’s “mio” marks on their surfaces, use in relation to these goods was not disputed. However, the Court found that Mitac had failed to discharge its burden of proof to show likelihood of confusion, while SingTel’s marketing efforts had served to educate consumers sufficiently on their marks. As such, no likelihood of confusion was found.

In the circumstances, the Court dismissed Mitac’s suit against SingTel. This decision is currently under appeal.

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