ATMD WELL-KNOWN MARK FAILS IN OPPOSITION - Bird & Bird

ATMD
Alban Tay Mahtani & de Silva LLP
WELL-KNOWN MARK FAILS IN OPPOSITION
Sheena Jacob
Partner
IP and Technology Group
sheena@atmdlaw.com.sg
+65 6428 9801
John Lim
Associate
IP and Technology Group
JohnLim@atmdlaw.com.sg
+65 6428 9883
Taffirmed
the decision of the Principal Assistant Registrar
he Singapore High Court in Mobil Petroleum Company
Inc. v. Hyundai Mobis [2008] SGHC 104, recently
of the Intellectual Property Office of Singapore (IPOS) in
dismissing Mobil’s opposition against the application for
registration of the mark “MOBIS” by Hyundai Mobis.
The South Korean automotive parts company, Hyundai
Mobis, had applied to register the stylized mark “MOBIS”
in Class 12 in Singapore for automotive parts and equipment.
Hyundai Mobis is the parts and service arm of Hyundai
Motor Company and Kia Motors. Mobil, a subsidiary of
Mobil Corp which is owned by Exxon Mobil, is the registered
proprietor of the stylized mark “MOBIL” in various classes
including in Class 4 for oil lubricants and fuels generally.
Mobil had unsuccessfully opposed the MOBIS registration
and appealed to the High Court of Singapore against the
Registrar’s decision.
Section 8 (2) – Similar mark and similar goods
Mobil firstly argued that the marks MOBIL and MOBIS were
similar, and that the goods which were sought to be protected
under the MOBIS mark in Class 12 were similar to the goods
of the MOBIL mark in Class 4. MOBIL was not registered
in Class 12. Section 8(2) of the Singapore Trade Marks Act,
provides that a trade mark shall not be registered if it is
similar to an earlier registered trade mark and the trade
mark is to be registered for goods which are similar to those
for which the earlier trade mark is protected, thereby resulting
in a likelihood of confusion.
The High Court considered the physical nature of the MOBIL
and MOBIS marks in their respective graphical
representation, together with dissimilarities in font,
capitalisation and colours, and affirmed the finding of the
Registrar that although aurally and visually similar, the
marks were conceptually not similar.
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The High Court further agreed that the goods sought to
be protected under the respective marks were not
physically similar in nature, because they were quite
different in physical terms and type of application. The
question was whether consumers would consider the
goods to be similar. In this instance, consumers would
not perceive oil lubricants and fuels, on one hand, and
automotive parts and equipment on the other, to be
similar goods and therefore the goods were not similar.
The Court also agreed with Hyundai Mobis that once
it was found that the goods were not similar, it was not
necessary to consider the issue of a likelihood of
confusion as the likelihood of confusion had to be caused
by similarity of the marks and/or the goods. The
opposition therefore failed under section 8(2) of the
Singapore Trade Marks Act.
Section 8(3) – Well known mark
Mobil also sought to oppose the registration of the mark
MOBIL on the basis that the MOBIL mark is a wellknown
trade mark and that and that use of the MOBIS
mark on the goods would indicate a connection between
such goods and Mobil, resulting in likelihood of confusion
thereby damaging Mobil’s interests. Under Section 8(3)
of the Singapore Trade Marks Act, a trade mark
application filed prior to 1 July 2004 shall not be
registered if it is similar to an earlier trade mark, provided:
i) The earlier mark is well known in Singapore;
ii) The use of the later trade mark in relation to the
goods for which the later trade mark was sought to be
registered would indicate a connection between those
goods and the proprietor of the earlier mark;
iii) There was a likelihood of confusion on the part
of the public because of such use; and
iv) The interests of the proprietor of the earlier mark
are likely to be damaged by such use.
It was accepted by the Court that the MOBIL mark was
a well-known trade mark and the issue to be determined
was whether the use of the MOBIS mark in relation to
the goods would indicate a connection between such
goods and Mobil. The High Court accepted that the term
‘connection’ was to be construed widely but emphasized
that the determination of ‘connection’ had to be made
by reference to the similarities of the marks. Where two
marks were visually very close, then the likelihood of
connection and confusion would be higher. The Court
agreed with the Registrar that the use of the MOBIS mark

would not indicate a ‘connection’ between those goods
and Mobil, because the resemblance between the marks
was limited by the differences in their font, capitalization
and colour.
The opposition under Section 8(3) of the Singapore
Trade Marks Act therefore failed as the requirement of
a ‘connection’ was not established. The Court therefore
did not find it necessary to determine whether the other
factors in Section 8(3) were established as the Court.
Section 8(4) – Passing off
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Alban Tay Mahtani & de Silva LLP
Mobil similarly did not succeed on the ground of
opposition that the registration of a mark is liable to be
prevented by the law of passing off in view of the
findings of the High Court that the goods were not
similar and that there was no connection or confusion.
Mobil’s opposition under Section 8(4) of the Singapore
Trade Marks Act, which provided that a trade mark shall
not be registered, if its use in Singapore is liable to be
prevented by virtue of the law of passing off, was
unsuccessful, as the Court had already decided that
there was a limited degree of resemblance between the
marks and no connection between the goods of the
Alban Tay Mahtani & de Silva LLP
39 Robinson Road, #07-01 Robinson Point, Singapore 068911
Tel: 65 6534 5266 Fax: 65 6223 8762 www.atmdlaw.com.sg
MOBIS mark and Mobil existed. There was therefore no
basis on which the Court could establish an actionable
misrepresentation.
Section 7(6) – Bad faith
The opposition to the registration of the MOBIS mark
on the basis that the application was made in bad faith
under Section 7(6) of the Singapore Trade Marks Act
was also unsuccessful. The High Court held that the
burden lay on Mobil to prove that the application was
made in bad faith, and Mobil had not adduced evidence
to substantiate its allegation. The two marks were not
so close as to lead to an inference of bad faith. The
High Court accepted Hyundai Mobis’ explanation of
how the mark Mobis came to be derived and in the
absence of evidence was not prepared to make a finding
of bad faith.