Intellectual Property Singapore Newsletter February 2018 In This Issue: Guccitech Industries (Private Ltd) v Guccio Gucci SpA [2018] SGIPOS 1 Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co [2017] SGHC 322 For more information, please contact: Andy Leck +65 6434 2525 andy.leck@bakermckenzie.com Lim Ren Jun +65 6434 2721 ren.jun.lim@bakermckenzie.com Abe Sun +65 6434 2547 vasan.abe.sun@bakermckenzie.com Guccitech Industries (Private Ltd) v Guccio Gucci SpA [2018] SGIPOS 1 Facts This decision stems from an opposition action before the Trade Marks Registry of the Intellectual Property Office of Singapore. The Applicant, Guccitech Industries (Private Ltd), is a Singapore-incorporated company engaged in the business of, among other things, designing and manufacturing household appliances. The Applicant applied to register the trade mark ("the Applicant's Mark") in Singapore in Class 11, in respect of an extremely detailed list of appliances and other goods used in or as part of the process of cooking or preparing food. The application was accepted and published for opposition. The Opponent, Guccio Gucci SpA, is the owner of the globally-renowned brand GUCCI. While the Opponent is most known for its bags, shoes and clothing, the Opponent claims that the range of products on which the GUCCI trade mark is used today extends to beauty and cosmetic products, lifestyle products, food and beverage services, games products, and products used in the technology area such as mobile phone covers and USB devices. Grounds of Opposition The Opponent filed an opposition to the registration of the Applicant's Mark, on the following grounds: (1) Section 8(2)(b) of the Trade Marks Act - that the Applicant's Mark is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, and there exists a likelihood of confusion on the part of the public. (2) Section 8(4) of the Trade Marks Act - that the Applicant's Mark is identical with or similar to the Opponent's earlier trade mark which is well-known in Singapore; and (a) the use of the Applicant's Mark in relation to the goods for which the Applicant's Mark is sought to be registered would indicate a connection between those goods or services and the Opponent, and is likely to damage the Opponent's interests; or (b) if the Opponent's trade mark is well-known to the public at large in Singapore, the use of the Applicant's Mark would cause dilution in an unfair manner of the distinctive character of the
Opponent's mark, or would take unfair advantage of the distinctive character of the Opponent's mark. (3) Section 8(7)(a) of the Trade Marks Act - that the registration of the Applicant's Mark is liable to be prevented by virtue of the law of passing off. (4) Section 7(6) - that the application of the Applicant's Mark is made in bad faith. The Registrar found in the Opponent's favour and allowed the opposition. Similar Marks, Similar Goods and a Likelihood of Confusion Section 8(2)(b) of the Trade Marks Act The Opponent is the registered proprietor of several registered trade marks in Singapore. The Opponent relied in particular on its registrations for the word "GUCCI" in Class 21, for "Porcelain and ceramic articles; drinking glasses and glass flasks", and Class 35 for various wholesale and retail services, including retail services relating to the sale of glassware, porcelain and cutlery. The Registrar found in favour of the Opponent on this ground. First, in terms of similarity of marks, the Registrar found that the marks are "very similar visually, aurally and conceptually". The Registrar took into account that the dominant and distinctive part of the Application Mark is the word "GUCCI", notwithstanding the addition of the descriptive "-TECH" suffix and the presence of the strapline INNOVATION SAVES SPACE in much smaller lettering. Further, the Registrar considered that the marks are aurally similar. The Registrar rejected an approach of conducting a simple syllable count. Again, the Registrar found that the dominant and distinctive part of the Applicant's Mark is GOO- CHEE, as the addition of the other matter is either descriptive or without trade mark significance. As regards conceptual similarity, the Registrar found that in view of the Italian connotation of the word GUCCI, the marks are conceptually similar. Next, in terms of similarity of goods and services, the Registrar found that there is "requisite similarity of goods". The Registrar candidly stated that his "initial reaction on this issue was that the goods are not similar". However, the Registrar emphasised that a determination of similarity of goods and services in the context of trade mark law must take into account the marketplace in which the goods and services are likely to be purchased and used. Applying this assessment framework, the Registrar reviewed the specification of goods of the Applicant's Mark, and "identified a subset which is most likely to be sold at wholesale and retail outlets in proximity to porcelain and ceramic articles and/or drinking glasses covered by the Opponent s registered mark". In this regard, the Registrar found that goods "are similar in the sense that they are all 2 IP Newsletter February 2018
goods complementary or used in the process of preparing food by whatever means and in that food s subsequent consumption." Third, in terms of likelihood of confusion, the Registrar found that there is a real possibility that an average consumer would naturally assume that goods sold under the Applicant's Mark come from a source that is in some way economically linked with the Opponent. The Registrar gave due weight to the fact that the goods in question are relatively inexpensive items, and therefore the average consumer of such goods would pay a normal degree of attention to their purchase. Conflict with Well-Known Trade Mark Section 8(4)(b)(i) of the Trade Marks Act In Section 8(4)(b)(i) of the Trade Marks Act, the first sub-ground of refusal is that the Applicant's Mark is identical with or similar to the Opponent's earlier wellknown trade mark, and use of the Applicant's Mark would indicate a connection between the Applicant's goods or services and the Opponent, and is likely to damage the Opponent's interests. On this ground, the Registrar readily found that the mark GUCCI is well-known in Singapore, on the basis of the voluminous evidence tendered by the Opponent, and the uncontested fact that the mark GUCCI has been used in Singapore since 1979. The Registrar then made the finding that the use of the Applicant's Mark in relation to at least some, if not all of the goods for which it is sought to be registered, would likely be taken by the average consumer of those goods to indicate some trade connection with the Opponent. The basis for this finding is the same as the reasons that the Registrar was satisfied that there is a likelihood of confusion above. The Registrar was further satisfied that such a connection would "inevitably result in damage to the Opponent's interests as it would mean that the Opponent would lose its present exclusivity in the use of the word GUCCI as a trade mark". The Registrar took cognisance of the fact that the Opponent had 30 separate and unchallenged registrations for the GUCCI mark in Singapore, which is indicative of the extent of the Opponent's actual or potential business activities. Section 8(4)(b)(ii) of the Trade Marks Act The second sub-ground of refusal in Section 8(4)(b)(ii) of the Trade Marks Act is available to proprietors of earlier trade marks which have attained the "coveted" status of being well-known to the public at large in Singapore. A trade mark shall not be registered if its use would cause dilution in an unfair manner of the distinctive character of the earlier trade mark; or would take unfair advantage of the distinctive character of the earlier trade mark. On this ground, the Registrar was satisfied that the Opponent's GUCCI mark is well-known to the public at large in Singapore, taking into account the extensive 3 IP Newsletter February 2018
advertising and promotion, as well as the widespread editorial and social media coverage of the mark. The Registrar rejected the Applicant's submission that the Opponent had not submitted survey evidence as to the degree to which the GUCCI mark is well known to the public at large in Singapore. The Registrar emphasised that there is "far more than sufficient evidence" before the tribunal, and "it is of no further assistance to adduce yet more". In addition, the Registrar found that the use of the Applicant's Mark would "dilute the distinctiveness of the Opponent's marks by depriving the Opponent of the exclusivity it currently has in the registration and use of the word GUCCI as an indication of origin of goods and services". The Registrar was also satisfied that the Applicant would obtain an unfair advantage as a result of the public misapprehension when seeing the word GUCCI within the Applicant's mark. Passing Off The third ground of opposition was that the use of the Applicant's Mark would be liable to be prevented through the law of passing off. The Registrar applied the classical trinity of establishing goodwill, misrepresentation and damage to found a passing off claim. In so doing, however, the Registrar emphasised that the assessment of passing off in an opposition action is a notional exercise. The Registrar must consider, on the basis of the facts before it, whether a passing off action brought by the Opponent in respect of the notional and fair use of the Applicant's Mark would be likely to succeed. First, in terms of goodwill, the Registrar took into account not only the Opponent's registered trade marks, but also "the full extent of the Opponent's position in the marketplace at the relevant time". The Registrar gave due consideration to the Opponent's ownership of a number of 'GUCCI[plus]' registered trade marks, such as GUCCI TIMEPIECES, GUCCI RUSH and GUCCI FLORA. Importantly, the Applicant did not contest that the evidence shows that the Opponent is the owner of valuable goodwill in Singapore. Second, the Registrar found that the element of misrepresentation has been established. The basis of the Registrar's finding was the same as that for the finding that there is a likelihood of confusion above. Naturally, the Registrar was then also satisfied that there is a "real tangible risk of substantial damage" being caused to the Opponent as a result of such misrepresentation. 4 IP Newsletter February 2018
Bad Faith Finally, the Opponent contended that the Applicant had applied for its Mark in bad faith. The Registrar was not satisfied on the evidence that there was bad faith on the Applicant's part. The Registrar commented that the Applicant "has gambled on how the law and the facts would be interpreted, as does any business that uses in whole or in part another s trade mark", but "it was not so unreasonable a gamble as to justify a finding of bad faith". Costs Notwithstanding that the Registrar found in the Opponent's favour, the Registrar chose to depart from the usual order that costs follow the event, and declined to award costs to the Opponent. The Registrar instead ordered that each party bears its own costs in the proceedings. The Registrar considered that the case was "albeit perhaps unintentionally, a potentially oppressive use of the opposition procedure", on account of the voluminous exhibits (comprising 6,852 pages) tendered by the Opponent, a significant part of which the Registrar found was "has no relevance to these proceedings or is needlessly excessive and duplicative". The Registrar warned against the "impulse to bury the tribunal and the opposing party in material that is irrelevant or excessive". Comments This case is significant not only in terms of the legal principles that it affirms, but also as a timely reminder to clients and their solicitors not to use a sledgehammer to crack a nut in legal proceedings. Such observations are particularly applicable to actions before the Intellectual Property Office of Singapore, which is intended to be a low cost tribunal for the effective resolution of intellectual property disputes. This decision also provides helpful clarification that survey evidence is not a prerequisite in cases where it is asserted that a particular trade mark is well-known or well-known to the public at large in Singapore. In fact, the Registrar commended the Opponent's counsel for resisting the temptation to adduce survey evidence. Once there is sufficient relevant evidence before the tribunal on the basis of which it can conclude that a particular trade mark is well-known, it is of no further assistance to adduce yet more. 5 IP Newsletter February 2018
Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co [2017] SGHC 322 This decision stems from an application by way of Originating Summons before the Singapore High Court, to rectify the register of patents. It is the first case that the issue of corrections to forms and priority data has arisen in the Singapore courts. Facts The parties are pharmaceutical companies. The Applicant, Novartis (Singapore) Pte Ltd ("Novartis"), applied for a product licence under the Medicines Act to market and sell a certain pharmaceutical product. The Respondent, Bristol-Myers Squibb Pharma Co ("BMS"), the proprietor of five patents in Singapore, then commenced a High Court suit against Novartis, seeking a declaration that the acts for which Novartis' product licence was sought would infringe BMS' patents, and an injunction to prevent the same. In the High Court suit seeking the declaration and injunction, BMS claimed the priority date of 11 June 1988, which derives from an earlier US patent application for a similar invention. In its defence, Novartis argued that BMS is not entitled to rely on the claimed priority date, because the document cited in support of the claimed priority date relates to a completely different invention from the inventions set out in the asserted Singapore patents. After the defence was filed, BMS invested the prosecution history and discovered that in the international application under the PCT, the wrong US patent application number was entered in the relevant forms when claiming priority. Instead of "US 60/088,981", what was entered was "US 60/089,981". BMS thus filed requests to the Registrar of Patents to correct the entries in the patents register so as to reflect the correct US patent application number in support of the claimed priority date. The Registrar of Patents granted the requests and made the corrections. Novartis took the position that the Registrar of Patents should not have allowed the corrections, and commenced an Originating Summons in the High Court for rectification of the register pursuant to Section 44 of the Patents Act. Section 44(1) of the Patents Act states that "the court may on the application of any person aggrieved, order the register to be rectified by the making, or the variation or deletion, of any entry in it". Section 44(2) further provides that "the court may determine any question which may be necessary or expedient to decide in connection with the rectification of the register". 6 IP Newsletter February 2018
Decision The High Court found in Novartis' favour, and allowed a rectification of the Register by deletion of the correction that was granted by the Registrar. In other words, the priority application number of BMS' patents reverted to the incorrect one as filed. Proper Procedure to file Request for Rectification The parties' first contention was as regards the proper procedure by which BMS should have filed the request for rectification to the Registrar of Patents. BMS made its requests pursuant to Rule 58 of the Patents Rules. Rule 58(1) provides that "a request for the correction of each error in the register or in any document filed at the Registry in connection with registration shall be made on Form CM4". Novartis argued that the filing of the requests was procedurally irregular as they should have been made under Rule 91, not Rule 58 of the Patents Rules. Rule 91 provides for requests for correction of translation and transcription errors, and clerical errors or mistakes in a patent specification, a patent application, and any document filed in connection with a patent or such an application. Just like Rule 58, a request pursuant to Rule 91 is also to be made on Form CM4. However, a key difference between Rule 58 and Rule 91 is that Rule 91 provides for an opposition procedure. Rule 91(3) provides that the Registrar may advertise the proposed correction made under Rule 91, and third parties can then give notice of opposition within the time frame allowed. Novartis asserted that it should have been made aware of BMS' application for correction, and the Registrar should have been informed of the existing High Court proceedings in which the priority date of the claims was highly significant. However, since BMS' request was made under Rule 91, it was only after the correction was made by the Registrar of Patents that BMS informed Novartis that the application had been made and granted. The High Court found that BMS' request for correction was properly made under Rule 58. The Court noted that BMS was not making a request for correction of a form lodged in connection with the patent application, such as the form on which the priority data is stated. BMS simply requested correction of the entries in the Register, leaving the errors uncorrected in the forms and the file. The Court traced the genesis of Rule 58, to implement or flow from Section 42(2)(d) of the Patents Act, which provides that the Patents Rules may make provision for the correction of errors in the register and in any document filed at the Registry in connection with registration. Accordingly, the Court found that "it is clear on the basis of s42(2)(d) of the Patents Act that [BMS] was entitled to use r 58 to make this request": [108]. 7 IP Newsletter February 2018
Proper Exercise of Discretion under Rule 58 However, the Court found that the Registrar's direction was wrongly exercised under Rule 58. The Court was satisfied that there was no error in the entries in the Register. The entries accurately set out the earlier priority application number as contained in the published applications and forms. The error or mistake was in the application number as set out in the forms, but BMS had not made a request to correct such error. The Court accepted Novartis' observation that correcting the entry in the Register without correcting the priority document application number in the relevant forms and documents in the patent file, would result in a confusing state of affairs. In fact, such a limited correction might be seen as meaningless. Proper Exercise of Discretion under Rule 91 An alternative argument raised by BMS is that the requirements of Rule 91 would have been fulfilled, if an application should have properly been made under Rule 91. The Court found that even if a request had been made to correct the entries in the patent forms under Rule 91, the request should be refused, as it was made far too late, and was not supported by exceptional grounds. The Court observed that even though the original error was clerical in nature, it dated all the way back to the filing of the international patent application under the PCT on 10 June 1999. The Court considered the impact of the error (and the late request for correction) on the rights and interests of third parties. The Court referred to decisions by the European Patent Office, which held that it is important for priority details as set out in published patent applications to be reliable, as such information may have an impact on a third party's decision as to whether pre-grant opposition proceedings should be commenced. www.bakermckenzie.com Baker McKenzie Wong & Leow 8 Marina Boulevard #05-01 Marina Bay Financial Centre Tower 1 Singapore 018981 Tel: +65 6338 1888 Fax: +65 6337 5100 Although there is no pre-grant opposition procedure in Singapore, the Court found that third parties will be put on notice by the publication of the application that their interests are already provisionally affected by the pending patent. This is "undoubtedly a serious matter that affects the public as a whole". It would not have been apparent even on an inspection of the files as to what was the correct earlier US application intended to have been relied upon. Comments This case demonstrates the potentially far reaching impact that a clerical error can have on future proceedings and in various jurisdictions, particularly if the error is made in an international application that forms the parent of other divisional or national applications. Care should therefore be taken in ensuring that details are properly entered in patent applications. 2018 Baker & McKenzie. All rights reserved. Baker & McKenzie.Wong & Leow is a member of Baker & McKenzie International, a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a "partner" means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an "office" means an office of any such law firm. 8 IP Newsletter February 2018 This may qualify as "Attorney Advertising" requiring notice in some jurisdictions. Prior results do not guarantee a similar outcome.