In a recent decision by the Intellectual Property Office of Singapore (IPOS), Sunrider Corporation, a multi-level marketing company from the US, successfully opposed the trademark applications of Sunrise Plus, a distributor of sports and health products in Asia. IPOS refused registration based on likelihood of confusion and Passing Off in relation to some of the goods.
The Dispute
Sunrider Corporation, known for its range of nutritional supplements and health products, challenged Sunrise Plus’s attempt to register two trademarks. The trademarks were intended for various goods, including nutritional supplements, dairy products, and retail services.
Key Arguments
Sunrider argued that the trademarks proposed by Sunrise Plus were too similar to their own, which could confuse customers. They also claimed that their brand was well-known in Singapore and that Sunrise Plus’s trademarks could damage their reputation.
The Marks and Goods in Dispute
- Sunrider Corporation’s Mark: SUNRISE and Goods: Herbal drinks included in Class 5.
- Sunrise Plus’s Mark and Goods:
: Nutritional supplements for humans, dietary supplements, vitamins, and minerals in Class 5.- : Dairy products, chocolate products, and retail services in Classes 29, 30, and 35.
IPOS finds the Marks and Goods to be Similar
IPOS found that the trademarks were visually and conceptually similar to a large extent and aurally identical. The dominant component of the Sunrise Plus marks was the word “Sunrise”, which is visually similar to Sunrider’s SUNRISE. Although the Sunrise Plus mark included a device depicting the sun, the judge concluded that the overall dominant component was still the word “Sunrise”.
In terms of the goods, the judge found that:
- The goods in Class 5 (nutritional supplements, dietary supplements, vitamins, and minerals) were similar to Sunrider’s herbal drinks because they both serve the purpose of supplementing a diet and providing health benefits.
- The goods in Classes 29 and 30 (dairy products and chocolate products) were dissimilar to Sunrider’s herbal drinks.
- The services in Class 35 (retail services for health food products and supplements) were similar to Sunrider’s goods because they could be sold in the same retail environment.
The Decision
The IPOS agreed with Sunrider on several points:
- The trademarks were found to be visually and conceptually similar, and aurally identical.
- The goods and services in question were similar enough to cause confusion among consumers.
However, Sunrider fail to prove that their brand was well-known in Singapore, so that part of their argument didn’t hold up. The arguments in relation to Passing Off was accepted. Costs were awarded to Opponent.
Comment
It has become quite difficult to win an opposition before IPOS. Most oppositions are rejected and the bar to show similarity is quite high. Here the marks are identical. But, even when the marks’ literal elements are identical, IPOS found that the Class 29 and 30 goods were not similar to the Class 5 goods. While the analysis is on a case-by-case basis it appears that IPOS is taking a narrow view and was relying on the fact that Class 5 uses are mainly for health reason (citing the Explanatory Note for Class 05). The finding does not seem to be made in relation to the actual use of the goods and the actual channels of trade for these particular goods and by the particular parties. Nutritional supplements and vitamins are edible, and their health benefits can range. They are quite often sold side by side with other food products that claim health benefits. In addition, the identity of the marks could also be considered to have an effect on the scope of goods which are to be found as similar. Be that as it may the result is reasonable even though it may be considered as a narrow application of the test for likelihood of confusion.
While IPOS found the ground of opposition in relation to Well-known status of Opposer’s mark fails it did accept that the ground of Opposition for misrepresentation (Passing Of) was found. While IPOS accepted and held that Opponent’s marks did not enjoy reputation in Singapore they did have goodwill in Singapore stating that goodwill is concerned with the business as a whole. The Opponent only manufactured in Singapore. Does this mean that a party would have reputation in a mark it never used in Singapore but only manufactured it and sold it overseas? This remains unclear especially since the relevant section requires the unregistered mark to be used in the course of trade. In addition, IPOS found that likelihood of misrepresentation exists since likelihood of confusion exits. The decision is silent on the differences between confusion and misrepresentation. The Singapore High Court has stated that initial interest confusion is insufficient for passing off and that for misrepresentation, confusion must be shown at the point of purchase. (See TMRG Pte Ltd et. al. v. Caerus Holding Pte Ltd et. al (the Luke Case)) Finally, IPOS determined that a likelihood of damages is all that is needed to complete the showing of misrepresentation. This part is also without an explanation and may be difficult to understand given the Luke Case stating that even confusion per se (let alone likelihood thereof) is not equivalent to damage. The result is that Passing Off for the purposes of Trademark Opposition in Singapore can be made out once there is likelihood of confusion between the competing marks and the Opponent has some business goodwill in Singapore generally.