3 Trademark Case Studies and Why Trade Mark is Important

1) Polo/Lauren Co LP v US Polo Association [2016] SGHC 32

 The plaintiff, Polo/Lauren (“PRL”) is a company who retails in luxury apparel and is the owner of the Opposition Mark registered in Class 9 for “spectacles, spectacle frames, sunglasses and parts and fittings therefor”. The defendant, United States Polo Association (“USPA”) is the governing body of the the sport of polo in the US and expanded into the business of selling consumer products such as eyewear, luggage and clothing. USPA also applied to register its trade mark in Class 9, in Singapore. PRL opposed to USPA’s application on the grounds of confusing similarity under S8(2)(b) of the Trade Marks Act (“TMA”). In essence, S8(2)(b) of the TMA states that a trade mark can not be registered if it is it 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, importantly, there exists a likelihood of confusion on the part of the public.

The application to oppose was dismissed by the Intellectual Property Office of Singapore and the decision was upheld on appeal to the High Court. The High Court applied the test laid down in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide Inc (the “Staywell test”) [2014] 1 SLR 911.

The High Court found there was no confusion on the part of the public under S8(2)(b) of the TMA. The High Court said that visually the marks were dissimilar due to the different number of polo players and their positions as well as the dominance of the word element “USPA” in the Application Mark. The Court also took the view that the two marks could not be compared aurally where one of the marks has no aural component (PRL). In coming to this decision the High Court took into account the low degree of similarity between the trade marks and the greater attention that an average consumer was likely to pay when purchasing eyewear. Eyewear is considered to be highly personal in nature and is bought infrequently and not an item that would be purchased in a hurry. The High Court therefore concluded that a consumer would pay a high level of attention to the differences between the marks and could therefore distinguish between the goods of PRL and USPA.

This case highlights that if trade mark owners wish to show that their marks have acquired a higher degree of distinctiveness in relation to a certain type of good amongst traders, they should illustrate evidence of the use of their marks relating to the goods in question. Evidence of use of a trade mark otherwise may not be sufficient to show the trade mark has acquired such distinctiveness in relation to that type of good, as experienced by PRL.

2) Singapore approves first loan application using IP collateral

On 2 June 2016, the Intellectual Property Financing Scheme (IPFS) disbursed its first loan backed by patents to a Singapore-owned footwear company. The Intellectual Property Office of Singapore (IPOS), which oversees the scheme, said that the loan disbursed to Masai Group International was supported by DBS Bank, one of the scheme’s three participating financial institutions. The other two are UOB and OCBC. While using tangible assets such as machinery and inventory to apply for loan financing is common practice for companies, using intangible assets in the form of patents is a recent development.

The Importance of IP Protection

IP is an intangible, though critical, asset. All across the globe, companies ensure that they secure their rights to their patents, copyrights, trademarks and even trade secrets in order to protect their business’ competitive edge. Owning IP rights such as these makes it difficult for competitors to imitate one’s products without receiving a “cease and desist” letter. By protecting one’s ideas and know-how, entrepreneurs, innovators and businesses can also be further encouraged to produce new inventions and creations. Customers, in turn, can count on IP to ensure that they are purchasing safe, authentic products.

Singaporean businessman Andy Chaw, who bought Masai from its Swiss owners in 2012, said the company will use the financing from the IPFS scheme to support its research and development efforts in new technologies and product development, as well as invest and strengthen its brand marketing and global IP portfolios.

For instance, besides helping customers identify its products easily, the protection of Masai’s trademarks, comprising its distinctive symbols and words, grants Masai the exclusive right to mark their products and makes it easier for the firm to take action against counterfeiters. As Masai continues to build on its reputation as a trusted footwear innovator, its trademarks would likewise develop an intrinsic value over time. DBS also recognises that acquiring Masai’s patents, which prevents other companies from making or selling similar products, would essentially translate to future earnings.

Changes to Loan Scheme

IPOS also unveiled a string of changes lined up for the IPFS in the coming two years. The first to be implemented will be the expansion of the scheme from covering just patents to other IP asset classes such as registered trademarks and copyrights from 1 July 2016. The scheme will also be extended for another two years until 31 March 2018, as IPOS expects the number of applications to increase.

IPOS has cited an “all-time high” in the number of IP filings in Singapore, with 44,203 trademarks and 10,814 patents filed in 2015 which is an indication of the “current buoyant innovation climate”. To meet this expected surge in demand for IP loan financing, IPOS has appointed AFC Merchant Bank as its fourth participating financial institution, and increased the panel of IP asset valuers for the scheme from three to seven. This move will allow companies to work with more financial institutions and competent IP valuers for successful loan applications, IPOS said.

IPOS is stepping up efforts to help local companies and entrepreneurs realise that IP “is not just about protection of their legal rights; it is about using it to grow their business”. With this in mind, entrepreneurs and start ups are encouraged to safeguard their IP rights and take advantage of the financial assistance backed by the Registry. It also demonstrates that cash for intellectual property through loan financing is now a reality for businesses.

3) GrabTaxi Rebrands to Grab to Reflect Market Dominance in Southeast Asia

On 28 January 2016, “Grabtaxi” rebranded its services to “Grab” to reflect its diversification beyond taxi booking services to “private cars, carpooling, delivery services”. This move essentially brought together all transport services under one brand- “Grab”. The rebranding represents the growing platform of on-demand services to serve the transport industry as a whole and has given Grab a clear idea of the image they wish to portray in the market and what their brand stands for. This outlook is important for any start up or business that owns IP and wishes to protect its brand name.

The new logo was designed with freedom at its core. The dual lines are inspired by roadways and they represent the endless road of possibilities. They symbolise the new journey Grab is taking in parallel with its passengers, drivers, employees and society at large.

Rebranding is undertaken to demonstrate the importance of brand presence in the market and how businesses wish to differentiate their business or service in the minds of their target market. Similarly, trade mark protection enables a business to identify and distinguish themselves from other traders in the market. Once a business becomes successful and its business reputation grows, a trade mark will hold significant value.