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Case Summary: The “Stars” War in Singapore

KASS International Sdn. Bhd. Malaysia


Oppositions are not peculiar proceedings in a trademark application process, as seen in the clash between two Spanish beer giants in Singapore. In this battle of stars, the opposition is between Hijos de Rivera, S.A. (the “Applicant”) and Sociedad Anonima Damm (the “Opponent”).

 

Both the Applicant and the Opponent are beer manufacturers from Spain. The former was founded in 1906 in Spain and carries the beer’s name “ESTRELLA GALICIA” while the latter is known for its beer “ESTRELLA DAMM” and was founded in 1876 in Barcelona. These companies have coexisted in Spain and across various European countries and the United Kingdom, but not without contention. The phrase 'not in a month of Sundays' aptly describes the rarity of their peaceful coexistence, as they have a notable history of opposing each other’s trademark applications in various jurisdictions.

 

 

In 2011, the Opponent penetrated the Singapore market, registered its word mark “ESTRELLA DAMM” (the “Opponent’s Registered Mark”), and thereafter started commercializing its beer under the said trademark. A little while later, the Applicant entered the Singapore market but only applied the application to register the composite mark “” (the “Application Mark”) on 24 April 2019. An opposition was then filed by the Opponent against the Application Mark.

 

The grounds of opposition were based on

 

  • Section 8(2)(b), for the likelihood of confusion due to the similarity of the marks in dispute,
  • Section 8(4)(b)(i), concerning the protection of earlier well known trade marks and
  • Section 8(7)(a), which is related to the tort of passing off, of the Trade Marks Act 1998.

 

The Opponent in its arguments for Section 8(2)(b) asserted that the Application Mark is aurally, visually and conceptually similar to the Opponent’s Registered Mark. In addition, the Opponent argued that the word “ESTRELLA” is not common in Singapore since it is a Spanish word meaning “star” (this is the reason why these two stars were at war in Singapore!). Thus, “ESTRELLA” protrudes as the dominant and distinctive element in the Opponent’s Registered Mark, and is also more prominent in the Application Mark. Hence, confusion would arise if the Applicant used the same word in the course of trade.

 

The Applicant admitted the inherent distinctiveness of the word “ESTRELLA” when it is in combination with the word “DAMM”. However, the Applicant denied that “ESTRELLA” dominates the other elements in the marks. In this regard, the Registrar had applied the legal principles on marks-similarity assessment and found that the Application Mark and the Opponent’s Registered Mark “ESTRELLA DAMM” are visually dissimilar, aurally dissimilar and not conceptually similar. Furthermore, each of the textual elements in the Application Mark namely, “ESTRELLA” and “GALICIA”, and “ESTRELLA” and “DAMM” in the Opponent’s Registered Mark is equally dominant.

 

Under Section 8(4)(b)(i), the Opponent contended that the relevant sector of the public would be the actual and potential traders, distributors and consumers in respect of the beer beverage industry in Singapore.  Since the debut of “ESTRELLA DAMM” in 1876, the Opponent emphasized that the Opponent’s Registered Mark is well known in this sector because the mark has been used endlessly and broadly. The Opponent has invested heavily in marketing and promotion of the “ESTRELLA DAMM” to be known as “the beer of Barcelona” and served in the world’s top restaurants.

 

The Applicant stated that their position on the relevant sector of the public is the same as the Opponent but disagreed that the Opponent’s Registered Mark is well known. This includes the volume of the Opponent’s sales of products bearing the Opponent’s marks in Singapore are low. Also, the Applicant asserted that the Opponent has failed to prove how their oversea registration made their mark well known in Singapore. In his assessment, the Registrar was also of the view that the Opponent’s evidence is insufficient to establish that the Opponent’s Registered Mark is well known.

 

With regard to Section 8(7)(a), three elements of passing off namely, (i) goodwill (ii) misrepresentation and (iii) damage to goodwill were assessed. When the Application Mark and the Opponent’s Registered Mark are compared, there exist no similarity between the marks thus, pointed away from a likelihood of confusion. Moreover, the Opponent did not make any specific argument on to the reputation of the Opponent’s marks. Therefore, passing off was found to have failed as misrepresentation was not established.

 

After considering all the pleadings, evidence filed and the submissions made in writing and orally, the Intellectual Property Office of Singapore (IPOS) ruled that the opposition fails on all grounds thus, decided in the Applicant’s favor. IPOS is in the opinion that both the Application Mark and the Opponent’s Registered Mark are aurally, visually and conceptually dissimilar. Although the marks have co-existed for 7 years in the market, there was no evidence of confusion adduced.

 

This case on war of the “stars” shows that even though marks share the same element, the marks are not necessarily similar which could lead to confusion. What’s important is to protect your trademark at the earliest and seek advice from the cognoscente of the IP.

 

KASS International Sdn. Bhd.



About the Firm

KASS International Sdn. Bhd.

AddressSuite 8-13A-2, Menara Mutiara Bangsar, Jalan Liku, Off Jalan Riong, Bangsar, 59100 Kuala Lumpur, Malaysia
Tel60-3-2284 7872
Fax
Contact PersonDiana Lourds
Emailkass@kass.asia
Linkwww.kass.asia


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