Law & Practice

SINGAPORE: Strong Reputation Reduces Likelihood of Confusion

Published: June 15, 2020

Gladys Mirandah Mirandah Asia Singapore INTA Bulletins Committee - Asia-Pacific Subcommittee

Discovery Communications, LLC (opponent), of “Discovery Channel” fame, opposed A-Star-Education Discovery Camps Pte. Ltd.’s trademark application, (application mark), in Classes 9, 16, and 43 under Singapore Trademark No. 40201714407Q.

On March 6, 2020, the Principal Assistant Registrar (PAR) held that the opposition failed on every ground.

The opponent relied upon its earlier registered trademarks in the proceedings (opposition marks):

 No.  Trademark   Class 
 1.    9, 38, 41
 2.  DISCOVERY EDUCATION  9, 16, 28
 3.  DISCOVERY GO  9, 38, 41
 4.  DISCOVERY KIDS  9, 18, 41
 5.  DISCOVERY CHANNEL  16
 6.  DISCOVERY KIDS  16
 7.  DISCOVERY ADVENTURES  39, 41
 8.  DISCOVERY CHANNEL  41
 9.    41

On the issue of whether the marks and goods were similar, the PAR first noted there was a low level of inherent distinctiveness in the word “DISCOVERY,” as (1) the meaning of the word has some nexus to the goods concerned; and (2) there are many other registered trademarks in use containing the said word. She found the competing marks to be generally more similar than dissimilar due to the dominance of the word “DISCOVERY,” except numbers 1, 8, and 9 of the opposition marks were visually more dissimilar due to the globe device (opposition marks 1 and 9) and the word “THE” (opposition mark 8). She also found some similarity between the goods of the competing marks in Classes 9 and 16.

Notwithstanding her observations above, the PAR held that opposition would fail as there was no likelihood of confusion. The grounds were (1) there was little distinctiveness in the word “DISCOVERY”; (2) the opponent’s strong reputation reduced the likelihood of confusion; and (3) consumers would exercise fastidiousness in selecting the goods and services covered by the application mark.

The PAR rejected the opponent’s argument that its marks form a larger family of “DISCOVERY” marks and consumers would associate the application mark as one of its family of marks.

While the opponent’s marks are considered well-known in Singapore, the PAR found there was no likelihood of confusion. The opponent also failed to prove the extensive use and promotion of its marks, which was prerequisite to show that its marks were “well known to the public at large in Singapore” (thereby obviating the need to show confusion).

An appeal against this decision is currently pending before the High Court.

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