Updated: Jan 25, 2021
Rolex S.A. v FMTM Distribution Ltd  SGIPOS 6
On 5 April 2018, Rolex S.A. ("the Opponent") filed its Notice of Opposition to oppose the trademark application of FMTM Distribution Ltd ("the Applicant") for its "MARINER" word mark for goods in Class 14. The Opponent submitted that the Applicant's mark was similar to the Opponent's mark "SUBMARINER".
The Applicant, a member of the Franck Muller group, is a company selling high-end luxury watches, and they own amongst others, the "Franck Muller" trademark for watches. The Opponent is a leading luxury watch manufacturer in the world, producing over 2,000 watches per day that generate sales of over 7 billion dollars each year. The Swiss-based Company manufactures, services, and distributes wristwatches under the Rolex and Tudor brand through authorized dealers. It was founded in 1905 by Hans Wilsdorf and Alfred Davis in England and was recently ranked 57 on the world's most powerful brands. The brand today produces industry icons such as the Rolex Submariner, Daytona, and GMT-Master. It competes with other leading luxury watch companies like Patek Philippe, Omega, and Panerai and sponsors many major sports events in tennis, golf, yachting, and racing.
In this opposition, the Opponent relied on Sections 8(2)(b), 8(4)(b)(i), 8(4)(b)(ii) and Section 7(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”) in this opposition.
In the opposition, three arguments were made:
1) The similarity of the Marks
In their written submissions, the Opponent submitted that the marks share a common distinctive and dominant feature of "MARINER". In contrast, the Applicant argued that the respective dominant and distinctive components were "SUBMARINE" for the Opponent's Mark and "MARINE" instead for the Application Mark. However, by the time of the hearing, the Applicant was submitting instead that the prefix "SUB" was the dominant component of the Opponent's Mark.
Following assessments of the distinctiveness of the Opponent's Mark as a whole, the Hearing Officer found that Opponent's Mark possessed only a medium degree of inherent distinctiveness, and does not enjoy a high threshold before a competing sign is considered dissimilar to it. However, he found that the Application Mark is visually, aurally, and conceptually more similar than dissimilar to the Opponent's Mark. Moreover, as both parties had applied for protection for "horological instruments", the element of goods-similarity was satisfied.
Thus, the Hearing Officer concluded that the marks are more similar than dissimilar and that the similarity was substantial.
Next, in assessing the likelihood of confusion, the Hearing Officer took into account the factors relating to the impact of the marks-similarity and the factors relating to the impact of the goods-similarity. The Hearing Officer concluded that there is a likelihood of confusion between the Application Mark and the Opponent's Mark, both over the origin of the goods and in the belief that the users of the competing marks are economically linked.
As a result, the ground of opposition under Section 8(2)(b) succeeded.
2) Well-known Mark
Next, the Opponent argued that its marks are well known in Singapore and well known to the public at large in Singapore, thus taking into account Sections 8(4)(a) of the Singapore Trade Mark Act, the Application Mark should not be registered.
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, by causing dilution or unfair advantage.
While the Opponent was able to convince the Hearing Officer that the marks were substantially similar, they struggled to prove that their earlier mark was well known in Singapore as the Opponent's evidence did not support a finding that the Opponent's Mark is well known in Singapore. Notwithstanding this, given that the likelihood of confusion was established above, the element of confusion was satisfied.
As for the third requirement, the likelihood of damage, the Hearing Officer decided that since there was an overlap between the goods and it is clear that the parties are in direct competition with each other, he would have found that a real likelihood of damage to the Opponent's interests existed, had the Opponent established all the preceding elements of this ground of opposition.
Moreover, the Hearing Officer felt that the Opponent's submissions amounted to a bare assertion that "the Applicants may benefit unfairly from the reputation, attraction, and prestige associated with the Opponent's "SUBMARINER" mark as no evidence has been adduced by the Opponent in support of this claim, whilst the Applicant had been using its mark in Singapore for the past ten years.
In view of the above, the ground of opposition under Section 8(4)(b)(i) and 8(4)(b)(ii) failed.
3) Passing Off
Additionally, 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 same evidence the Opponent provided for the supposed acquired distinctiveness of the Opponent's Mark, the Hearing Officer was satisfied that the Opponent's evidence – particularly concerning its established network of retailers throughout Singapore – demonstrates goodwill in the Opponent's business as a whole.
Further, given the Hearing Officer's findings above that the element of "connection" under Section 8(4)(b)(i) is made out, he was satisfied that, on a balance of probabilities, there is a likelihood of misrepresentation that the Applicant and the Opponent are the same or that they are economically linked.
Lastly, the Hearing Officer clarified that a likelihood of damage by blurring is readily inferred where parties are in direct competition with each other, as the Opponent and the Applicant are, and accordingly accepted that since the Opponent succeeded in establishing goodwill, there would have been a real likelihood of damage to that goodwill.
Therefore, the Hearing Officer found that the ground of opposition under Section 8(7)(a) succeeds.
After considering all the pleadings, evidence filed, and the submissions made in writing and orally, the Hearing Officer concluded that the opposition succeeds on Section 8(2)(b) and Section 8(7)(a). Accordingly, the Application Mark shall not proceed to registration. The Opponent is to have 70% of the costs of the opposition, having regard to the fact that the opposition succeeds under Section 8(2)(b) which formed a larger part of the opposition as well as Section 8(7)(a) but failed under Section 8(4)(i) and Section 8(4)(b)(ii).
To view the Grounds of Decision, click here.
By: Prathashini Rague, Biro Oktroi Roosseno Singapore