The decision by the Intellectual Property Office of Singapore (IPOS) in Carolina Herrera, Ltd v. Lacoste ([2014] SGIPOS 3 (Feb. 20, 2014)) shows that the Registry may not be exceedingly enthusiastic about allowing a trademark proprietor to claim exclusive rights over a common element in a family or series of marks by virtue of the trademark registration of these family marks, where the registration of the common element has not been applied for independently.

Lacoste applied for the registration of the mark L.12.12 (see below) for goods in Classes 3, 8 and 25. (Application No. T1100417A, filed Dec. 2, 2010.) Carolina Herrera, Ltd opposed the mark based on its prior-registered series of trademarks, all of which contained the element 212 together with a word element.

The opponent argued that, although it had not applied for the registration of the mark 212 simpliciter, it had the exclusive claim over the common element of the subject mark, that is, 212, by virtue of its earlier trademarks (namely, 212 ON ICE, 212 VIP, 212 SEXY and 212 BY CAROLINA HERRERA). It argued further that the element 212 formed the distinctive and dominant element of its earlier marks, which therefore constituted a series or a family of marks, all containing the element 212; consequently, the public recognized the entire family of marks as belonging to the opponent, and registration of the applicant’s mark would lead to confusion as to the trade origin in the marketplace.

The applicant contended that since the opponent did not register the mark 212 simpliciter, it should not be granted a monopoly over the use of the mark. It argued, further, that the opponent’s marks were never referred to as 212 independently but were always denoted by an additional element (i.e., one of the word elements SEXY, VIP, ON ICE and BY CAROLINE HERRERA). This demonstrated that although 212 formed an element of the opponent’s mark, the public did not recognize 212 simpliciter as belonging to a family or series of marks.

The Registrar of Trade Marks, on a careful assessment of the evidence adduced by both parties and the relevant jurisprudence, held that the opponent did not have the exclusive right over the element 212. She opined that the registration of the marks containing a common element did not ipso facto give rise to a presumption that the public perceived the marks as belonging to a family. In order to claim monopoly over a common feature, the opponent had to advance sufficient evidence that consumers perceived and remembered the marks as belonging to a family of marks, containing common characteristics and associated with each other in terms of source of trade.

In conclusion, the Registrar also held that there was no visual, aural or conceptual similarity between the mark applied for and the opponent’s marks and that the element 212 simpliciter would not be considered an “earlier trademark” under the Trade Marks Act.

 

This article first appeared in the INTA Bulletin.  For further information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx .