A-STAR-EDUCATION DISCOVERY CAMPS PTE. LTD. V DISCOVERY COMMUNICATIONS, LLC [2020] SGIPOS 4
DISCOVERY COMMUNICATIONS, LLC ("the Opponent") opposed the trade mark application of A-STAR-EDUCATION DISCOVERY CAMPS PTE. LTD. ("the Applicant") for its “Discovery CAMPS” Device Mark for goods and services in classes 9, 16 and 43. The Opponent submitted that the Applicant’s mark was similar to the Opponent's well-known “DISCOVERY” and “DISCOVERY”-formative trade marks.
The Applicant is a local Singaporean education company focusing on educational development, improvement, innovation and growth for its students. It has operations in Asia Pacific, Europe, the United States of America and the United Kingdom serving more than 15,000 students worldwide. “Discovery Camps” is one of the Applicant’s brands that offers a wide range of enrichment camps for kids of all ages in Singapore only.
The opponent is one of the world’s leading non-fiction media companies with over 3 billion subscribers in over 220 countries and territories, including Singapore. The Opponent is the proprietor of the DISCOVERY and DISCOVERY-formative marks which has been used extensively in Singapore and worldwide.
Interestingly, the counsel for the Applicant likened this opposition as a David and Goliath clash, alluding to the face-off between a corporate giant in the media world and a much smaller Singapore incorporated company being the underdog.
In this opposition, the Opponent relied on Sections 8(2)(b), Section 8(4)(a) read with 8(4)(b)(i), Section 8(4)(a) read with 8(4)(b)(ii)(A) and (B), Section 8(7)(a) and Section 7(6) of the Trade Marks Act in the opposition.
To oppose the mark, four arguments were made by the Opponent:
1) Similarity of the Marks
The crux of the case for this opposition centered on whether the Application Mark was similar to the Opponent’s DISCOVERY and DISCOVERY-formative marks. In assessing the similarities between the marks, the Hearing Officer paid particular attention to: (1) the dominance of the “DISCOVERY” component in the marks, (2) the distinct feature of the D-plus-globe device in the Opponent’s Primary Earlier Trade Mark, (3) the nature of the goods and services which required a greater degree of fastidiousness and attention on the part of prospective purchasers when buying the goods, the consumers who would pay more attention and care in their choice of the goods and services, and in particular, the strong reputation of the Opponent arising from the widespread and constant exposure it has on television.
After thorough analysis, the Hearing Officer found that the word “DISCOVERY” is not the distinctive and dominant component in the Opponent’s Earlier Trade Marks. Moreover, she found that although the marks were more similar than dissimilar, the similarity resides in the word “DISCOVERY”, which is of low technical distinctiveness. With regards to the similarity of goods and services, the Hearing Officer found that while there is similarity of the Class 9 and class 16 goods, there was only some similarity of services in classes 39 and 41, and class 43.
As a result, the Hearing Officer concluded that when considering all the facts and
circumstances, a likelihood of confusion did not exist.
2) Well-known Mark
Next, the Opponent made arguments that its marks are well known in Singapore and well known to the public at large in Singapore, and thus taking into account Sections 8(4)(a) of the Singapore Trade Mark Act, the Application mark should not be registered.
In order to succeed under the above-mentioned ground, the Opponent had to establish that: (1) the Application mark was similar or identical to its earlier marks, (2) its earlier marks are well known in Singapore and well known to the public at large in Singapore, (3) the use of the Application mark would indicate a connection between the Applicant’s goods/service with the Opponent’s goods/services, and that (4) the use of the Application mark would damage the interest of the Opponent.
After going through the Opponent’s submission and evidence filed, the Hearing Officer found that the Opponent’s earlier marks were indeed well known in Singapore, although she was not able to make a similar finding that it was “well known to the public at large” based on the Opponent’s evidence.
Nevertheless, as the Hearing Officer had found that there was no likelihood of confusion between the competing marks, she was unable to find that a confusing connection had been established by the Opponent.
Hence, the ground of opposition under Section 8(4)(a) read with 8(4)(b)(i) and 8(4)(b)(ii)(A) and (B) failed.
3) Passing Off
In addition, The Opponent argued the grounds of passing off under Section 8(7) (a) of the Singapore Trade Mark Act.
To succeed under this ground of opposition, the opponent must establish the classical trinity of goodwill, misrepresentation and damage. Having reviewed the Opponent’s evidence under the different grounds of opposition, the Hearing Officer was convinced that the Opponent had goodwill in Singapore. However, as the Hearing Officer had found that there was no likelihood of confusion between the competing marks, it followed that there could not be any misrepresentation that is sufficiently likely to deceive the public into thinking that the Applicant’s goods are those of the Opponent’s.
Therefore, as the Hearing Officer did not find any misrepresentation, she did not deal with the damages requirement.
4) Bad Faith
Finally, the Opponent argued that the Applicant's application was filed in bad faith under Section 7(6) of the Singapore Trade Mark Act and thus the Application Mark should not be registered.
Here, the Opponent advanced arguments that the Applicant is intending to unfairly benefit from the association with the Opponent and seeking to take advantage of the Opponent’s goodwill and reputation in the Opponent’s “DISCOVERY” mark(s). Moreover, the Opponent drew the Hearing Officer's attention to the fact that the Applicant had filed for a name change twice since the subject application was filed, and argued that the name changes were done to give the subject mark “a veneer of legitimacy”.
However, taking into account that an allegation of bad faith is a serious claim that must be supported by the evidence, the Hearing Officer indicated that the Opponent had not filed any evidence to support its claim that the Applicant had acted in a manner that falls short of the standards of acceptable commercial behaviour, nor were there evidence to show that the Application Mark was filed with the intention of unfairly benefitting from the association with the Opponent and to take advantage of the Opponent’s goodwill and reputation in the Opponent’s “DISCOVERY” marks.
Thus, the bad faith argument was rejected as well.
Eventually, after considering all the pleadings, evidence filed and the submissions made in
writing and orally, the Hearing Officer concluded that the opposition failed on all grounds and the Applicant's mark was allowed to proceed to registration. The Opponent has appealed against this decision, and currently the appeal to High Court is pending.
One noteworthy observation can be found at [25] of the decision where the Hearing Officer mentioned:
“It bears noting that the Opponent does not have any registration for the plain word
“DISCOVERY” on its own.”
These comments are an important reminder that applicants should always consider protecting both their logo (as device mark) and their brand name (as word mark) in plain words. Registration of a word mark provides broader protection and protects the wording of the mark regardless of its style.
To view the Grounds of Decision, click here.
By: Prathashini Rague, Biro Oktroi Roosseno Singapore