By Annette Wong
Mention rum and one might have visions of pirates and their grog-drinking ways. Sea-faring adventures aside, rum was interestingly also part of a recent trademark case in Singapore. Rum Creation and Products Inc. (“Applicant”) had applied to protect the following three trademarks in Class 33 for Rum:
Applicant’s mark 1
Applicant’s mark 2
Applicant’s mark 3
The applications were subsequently published and then opposed by Ex Hacienda Los Camichines (“Opponent”), owners of the trademark registration for the word mark “GRAN CENTENARIO” for Tequila, also in Class 33. The opposition was made on the following grounds:
- Likelihood of Confusion may arise due to similarity between all the Applicant’s marks and the Opponent’s mark;
- Law of Passing Off is applicable as the Opponent’s mark has generated goodwill which the Applicant’s marks 2 and 3 will likely be misrepresented to confuse the public to believe that their goods emanated from the Opponents and this misrepresentation caused damages to the Opponent; and
- The Opponent’s mark is an earlier trademark, which is well known in Singapore. The Applicant’s marks 2 and 3 are considered identical or similar to the Opponent’s mark and therefore, the registration of both the Applicant’s marks would indicate a link between their goods and is likely to damage the interests of the Opponent.
As there were no evidences of use in Singapore adduced from either party, the Learned Registrar took into account the co-existence and registration of the marks in other parts of the world. Additionally, she compared the goods represented by the marks and found that although both are alcoholic drinks, the similarities ends there as there are many differences between tequila and rum, from the source they are derived from to the different taste of the drinks.The Learned Registrar sought to compare the marks in question and although she found the Applicant’s mark 1 was visually and conceptually similar to the Opponent’s mark, she also found the Applicant’s marks 2 and 3 completely dissimilar to the Opponent’s mark, especially in view of the extensive devices added to the marks. The crucial turning of the tides in the Applicant’s favour lies in the assessment by the Learned Registrar on the type of consumers who are likely to purchase the Applicant’s and Opponent’s goods. Based on the evidences cited, it was concluded that rum and tequila were “not cheap consumerables that are bought without much thought” and thus, the Learned Registrar was persuaded to find that the “reasonably well-informed, reasonably observant and circumspect” consumer will “exercise considerably more care and intelligence” when purchasing the respective goods and is therefore less likely to make hasty purchasing decisions. As such, there is less likelihood of the consumer confusing the Applicant’s and the Opponent’s marks. In light of the above, the Learned Registrar concluded on the whole that the opposition failed on all grounds and hence, allowed the Applicant’s marks to proceed to registration, with the Applicant also awarded costs.
Food for thought
Interestingly, the Applicant had also applied to register the mark at the same time as Applicant’s marks 2 and 3 above, but this was not opposed to by the Opponent in this case. Moreover, the word “GRAN” in the Opponent’s mark “GRAN CENTENARIO” was disclaimed whereby they had no exclusive right over the said word. As such, it is understandable that they would have wanted to protect the word “CENTENARIO” in their mark. This case demonstrates how important it is to register the mark with a wider – as opposed to narrow – description of goods. The Opponent’s description of goods were limited solely to tequila and tequila-based products, which is dissimilar to rum, albeit both being alcoholic beverages. As such, the Learned Registrar rightly established that a reasonably well-informed consumer is able to differentiate the said goods.