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

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
ATMD
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
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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.