By Louis Teo
Pets here, pets there, pets everywhere! According to the 2015-2016 APPA National Pet Owners Survey by the American Pet Products Association, the number of households with pets in the US is 79.7 million and of those, the households that own at least one pet is 42.9 million. As some household have more than one feline in them, the estimated number of pet cats in US is 85.8 million.
Such staggering figures reveal that the pet industry, in and out of US, is not one to be disregarded. In a recent trademark opposition in Singapore, two manufacturers and exporters of animal feed battle their trademark rights in a catfight.
The Applicant, B2K Pet Products Pte Ltd, (“B2K”) was established in 2008, while the Opponent, Pets Global Pte Ltd (“Pets Global”), who produces the same goods, animal feed, was founded in 2006.
B2K’s trademark application was accepted by IPOS (The Intellectual Property Office of Singapore) and subsequently published for opposition purposes. Within the two month opposition period, Pets Global filed a “Notice of Opposition” against the registration of B2K’s mark citing grounds of confusion and passing-off Pets Global claimed that the following similarities causes confusion in the market:-
- both marks were depictions of a signboard
- both marks contained the words ‘Cat’ and “PREMIUM”
- both had confusingly similar stylizations, if not identical, of the word “PREMIUM” in gold font and the word “Cat” in cursive writing.
Having heard both parties arguments, Ms Sandy Widjaja (Principal Assistant Registrar of Trade Marks) the hearing officer held that Pets Global’s opposition had failed on the grounds of confusion as the marks are not similar in the visual, aural or conceptual aspects whereby they were both different depictions of a signboard and also consist of other textual component. Further, the Applicant’s mark makes an overt allusion to the chocolate brand “Kit Kat” rather than “Kit” being construed as reference to “kittens” as submitted by the Opponent.
The Hearing Officer in reaching her decision also reiterated and applied established principles and tests i.e. the “3 Steps Approach”. The 3 requirements consider mainly the Similarity of marks (visually, aurally and conceptually), similarity of goods or services and the likelihood of confusion arising from the similarities. Decision must also be made based on whether the marks when observed in their totality are similar rather than dissimilar.
With regard to passing-off, Opponent had failed to establish goodwill as the Opponent’s claim is not substantiated by sufficient evidence including sales figures, marketing and promotion of its mark in Singapore which prove extensive and long use of its mark as at the relevant date.
This decision in Singapore is an unsurprising one as the elements that were identical between the marks were “CAT” and “Premium”, the former being a descriptive word and the latter being a generic, common or even a laudatory word. Brand owners who want to stay ahead of their competitors and stay unique and have strong claws to scratch their competitors with, should therefore select and use marks that are very distinctive, one-of-a-kind. Justifications for use of any elements in the mark then becomes questionable……
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