McCHICKEN®, McNUGGETS® and McFLURRY® immediately conjure up images of the ‘family of marks’ owned by McDonald’s Corporation. Indeed, the ‘family of marks’ doctrine is well-established in trademark law. Be that as it may, can it be said that there exists a family of marks when they are not owned by the same entity? What needs to be proven in order to qualify as a family of marks? Is mere use sufficient? These are some of the interesting issues that arose in a recent opposition before the Intellectual Property Office of Singapore in Bridgestone Corporation and Bridgestone Licensing Services, Inc. v. Deestone Limited (2018) SGIPOS 5, dated 27th March 2018.
Deestone Limited (‘Applicant’) filed an application for registration of the mark “DEESTONE” (below left) in class 12 for tyres. The Applicant was incorporated in Thailand in 1978. The said application was opposed by Bridgestone Corporation (‘Opponent 1’) which is a multinational corporation founded in 1931 and based in Japan, and Bridgestone Licensing Services, Inc. (‘Opponent 2’) which is a wholly owned subsidiary of Opponent 1. Opponent 1 based its opposition on the mark “BRIDGESTONE” (below right) in class 12 for tyres, whilst Opponent 2 based its opposition on the mark “FIRESTONE” in class 12 for tyres. Opponents 1 and 2 are separate legal entities.
In addressing the aforementioned issues, the Registrar held as follows:
- It is not necessary for trademarks to be owned by the same legal entity in order to be protected as a family of marks.
- Without use of a mark it cannot be established that consumers are aware that there is a common element within the marks owned by a single source which constitutes a family.
- Ultimately the issue is not just whether the marks have been in use but whether consumers associate the marks which bear a common element as originating from a single source such that if there is another mark in the marketplace bearing that common element, the consumer is likely to be confused.
- In this case, the Opponents failed to establish that they had a family of “STONE” marks in the market at the relevant date.
For the said reasons, the opposition failed on all grounds.
