Slightly more than a year from the Opposition proceeding in the Intellectual Property Office of Singapore, it seems that the trademark ownership battle between American hotel giants Starwood Hotels & Resorts Worldwide (“Starwood”), owner of the “ST. REGIS” trademark, and their Australian adversary Staywell Hospitality Group Pty Ltd (“Staywell”), proprietor of the “” mark, continued to rage when Staywell appealed against the decision of the Principal Assistant Registrar of Trade Marks (the “Registrar”) in the Opposition proceeding, and Starwood in turn lodged a cross-appeal.
The facts and decision of the Registrar in the Opposition proceeding can be found at here.
In summary, the Registrar had previously decided in favour of Starwood, opining that the marks “ST. REGIS” and “” were aurally and conceptually similar, and claimed similar services. The Registrar also viewed that Starwood’s mark “ST. REGIS” was well-known in Singapore at the time Staywell had applied to register their mark, and thus, as a whole, there was a real likelihood of confusion to arise in the public with regard to the marks.
Staywell subsequently appealed to the High Court against the verdict of the Registrar on both grounds, and Starwood filed a cross-appeal to some of the Registrar’s findings, including the decision that Starwood had failed to prove the existence of goodwill in their mark in Singapore for their action under the tort of passing off.
Faced with these grounds of appeal, the Learned Judge considered at length the merits of each appeal, and concurred with the Registrar’s view that the marks were, as a whole, similar to each other, and represented similar services.
With regard to the likelihood of confusion, the Learned Judge took a global approach, considering all the relevant surrounding circumstances of the case at hand, including the following:
- the closeness of the services;
- the impression given by the marks;
- the risk that the public may believe that the services emanate from the same source;
- the steps taken by Staywell to differentiate its services from that offered by Starwood; and
- the kind of customer who would likely purchase the services of both parties.
In doing so, although the Learned Judge found that the services were indeed similar and both marks imply a conceptual meaning of royal or luxurious treatment, nevertheless, due to the visual differences in the marks and the fact that both marks are displayed prominently on each party’s website, towels, stationary, hotel lobbies and etc, the impression given by the marks may be mixed.
One of the important factors taken into consideration was how both hotels were marketed, and whether there was a likelihood of confusion arising from customers who book a room in either of the hotels. The Learned Judge identified four methods in which a hotel room is usually booked, which are: booking through the website, through travel agents, telephone bookings and walk-ins. Regarding the websites, it was found that as the layout of the websites were dissimilar, and each website made clear reference to each party without reference to the other, no confusion would arise through this method of booking. As for booking through travel agents and walk-ins, no confusion would arise here either, as any initial misconceived notions could easily be cleared up by the travel agent or hotel staff. The only method of booking that may induce confusion is via telephone booking, but even then, this confusion would be dispelled when the customer checks in to the hotel.
Further, the Learned Judge also found that Staywell had taken steps to differentiate themselves from Starwood through various means, including the attempt to classify the hotel as a 4-star hotel, and marketing their hotel as a business rather than a luxury hotel. Due to this, it was concluded that confusion was not likely to arise in the public should the marks coexist. This was despite Starwood’s marks being found to be well-known in Singapore at the relevant time.
On the issue of goodwill, in the cross-appeal brought by Starwood, the Learned Judge adopted the definition of goodwill as “the attractive force which brings in custom”. Therefore, for Starwood to have acquired goodwill in the mark “ST. REGIS” prior to the date in which Staywell’s application for the “” mark was filed, evidence of actual income or custom needed to be shown. On the facts, the evidence adduced by Starwood was held to be insufficient, as they were considered to be advertisements and marketing efforts. Further, the fact that the St. Regis Group had a good reputation did not tantamount to goodwill, and as goodwill needed to be attached to the St. Regis Singapore hotel in itself, any goodwill garnered from Starwood’s other businesses did not apply either.
Therefore, the cross-appeal failed.
Due to the above, the Court held that although the marks were indeed similar, there was no likelihood of confusion, and accordingly reversed the Registrar’s decision, allowing Staywell’s appeal.
This decision, whilst seeming like bad news to large, globally known corporations, is fair, as it reaffirms the principle that trademark protection is territorial, whether in ascertaining the likelihood of confusion or in granting the additional protection afforded to well-known marks.