Law & Practice

SINGAPORE: No Room for Two to Tango

Published: October 6, 2021

max-ng

Max Ng Gateway Law Corporation Singapore INTA Panel of Trademark Mediators

Phuong Tran Gateway Law Corporation Singapore Anticounterfeiting Committee—East Asia and Pacific Subcommittee

Verifier

Daniel Lim Joyce A. Tan & Partners LLC Singapore INTA Panel of Trademark Mediators

A recent case before the Principal Assistance Registrar (PAR) reinforces that the use of a house mark is just one of the factors to be considered in the assessment of a similarity and likelihood of confusion analysis. Accordingly, a junior user of a mark cannot expect to obviate the likelihood of confusion between otherwise similar marks by simply appending a house mark.

Tango marksHardwood Private Limited (applicant) (part of the Orang Tua Group) applied to register OT TANGO (Trademark Application No. 40201810134U) on May 31, 2018, in Class 30 for chocolate and cocoa products, among others. The application was opposed by GCIH Trademarks Limited (opponent), the proprietor of the TANGO marks (right) in Class 30 for chocolate and cocoa products.

In its decision issued on June 3, 2021, the PAR found the applicant’s OT TANGO mark and the opponent’s TANGO mark to be similar to a strong degree and the goods of interest of the competing marks identical, as they both relate to chocolate and cocoa products. Further, the PAR indicated that the strength of the similarities between the marks and the identical goods strongly points toward a finding of likelihood of confusion and that there are no other relevant factors in play that would materially diminish the likelihood of confusion.

It is noteworthy that the applicant argued but failed to convince the PAR that the addition of the OT element was sufficient to distinguish OT TANGO from TANGO. The opposition therefore succeeded under Section 8(2)(b) of the Singapore Trade Marks Act. Section 8(2)(b) provides that a trademark shall not be registered if “it is similar to an earlier trademark and is to be registered for goods or services identical with or similar to those for which the earlier trademark is protected, [and] there exists a likelihood of confusion on the part of the public.”

In addition, the PAR found that the classic elements of the tort of passing off (goodwill, misrepresentation, and damage) were established, thereby preventing the use of OT TANGO in Singapore. Firstly, the opponent’s evidence showed that it had used and advertised its TANGO marks in Singapore in connection with chocolate and confectionery for a number of years pre-dating the applicant’s filing date. The applicant did not contest this and made no submission as to the opponent’s goodwill in Singapore. Secondly, the PAR found that the presence of TANGO in OT TANGO communicates and misrepresents to average consumers that the goods offered under OT TANGO are that of, or commercially connected to, the opponent. Lastly, as the products are in direct competition, the misrepresentation is likely to result in damage to the opponent’s goodwill through diversion of sales or loss of sales.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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