Richemont International SA v Goldlion: Trade Mark Opposition - Likelihood of Confusion
Richemont International SA appealed to the High Court of Singapore against the decision of the Principal Assistant Registrar dismissing their opposition to Goldlion Enterprise (Singapore) Pte Ltd's application to register the trademark 'Jean Mercier'. Richemont argued that the mark was similar to their earlier registered trademark 'Baume & Mercier', leading to a likelihood of confusion. Andrew Ang J dismissed the appeal, finding that the marks were dissimilar and that there was no bad faith on the part of Goldlion.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeal dismissed with costs.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Richemont International SA appeals against the registration of 'Jean Mercier' trademark by Goldlion, arguing likelihood of confusion. The court dismissed the appeal.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Richemont International SA | Appellant | Corporation | Appeal dismissed | Lost | |
| Goldlion Enterprise (Singapore) Pte Ltd | Respondent | Corporation | Opposition Dismissed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Andrew Ang | Judge | Yes |
4. Counsels
4. Facts
- Richemont International SA opposed Goldlion's application to register 'Jean Mercier' as a trademark.
- Richemont owns 16 trademark registrations for 'Baume & Mercier' in Singapore, including four in Class 14.
- The Principal Assistant Registrar dismissed Richemont's opposition on all grounds.
- Richemont appealed the decision, arguing similarity of marks and likelihood of confusion.
- The 'Baume & Mercier' mark includes an underscored Greek letter 'phi' when used on goods.
- Goldlion's application was to register 'Jean Mercier' in a series of three marks in Class 14.
- The common element in both marks is the word 'Mercier'.
5. Formal Citations
- Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd, OM 26/2005, [2005] SGHC 208
6. Timeline
| Date | Event |
|---|---|
| Respondent’s Application was advertised in the Trade Marks Journal No 5 of 2002 | |
| Baume & Mercier SA filed a Notice of Opposition to the Respondent’s Application | |
| The Opposition failed on all the grounds raised by the appellant before the PAR | |
| Grounds of appeal set out in the Notice of Motion | |
| Leave granted to amend the Notice of Motion | |
| Judgment reserved | |
| Decision Date |
7. Legal Issues
- Likelihood of Confusion
- Outcome: The court held that there was no likelihood of confusion between the marks.
- Category: Substantive
- Sub-Issues:
- Visual similarity
- Aural similarity
- Conceptual similarity
- Related Cases:
- [2000] FSR 77
- (1906) 23 RPC 774
- (1950) 67 RPC 209
- [2005] SGHC 175
- [1996] FSR 431
- [1995] AIPR 244
- (1993) 26 IPR 246
- [2000] FSR 767
- [1996] RPC 281
- [1998] RPC 716
- [1995] 32 IPR 613
- Bad Faith
- Outcome: The court held that the application for registration was not made in bad faith.
- Category: Substantive
- Related Cases:
- [2005] 1 SLR 177
- [2002] RPC 24
- (1878) 7 Ch.D. 473
- Passing Off
- Outcome: The court ruled against the appellant on the grounds of passing off.
- Category: Substantive
- Related Cases:
- [1990] RPC 341
- [1998] RPC 455
- Distinctiveness of Trade Mark
- Outcome: The court held that the Respondent’s Mark was capable of distinguishing the goods and did not lack distinctiveness.
- Category: Substantive
8. Remedies Sought
- Opposition to Trade Mark Registration
9. Cause of Actions
- Trade Mark Infringement
- Passing Off
10. Practice Areas
- Trade Mark Registration
- Trade Mark Opposition
11. Industries
- Retail
- Luxury Goods
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV | N/A | Yes | [2000] FSR 77 | N/A | Cited for the principle that when comparing trade marks one must consider their visual, aural and conceptual similarity. |
| In the Matter of an Application by the Pianotist Company Ld for the Registration of a Trade Mark | N/A | Yes | (1906) 23 RPC 774 | N/A | Cited for the principle that trade marks should be judged by their look and sound. |
| In the Matter of Broadhead’s Application for Registration of a Trade Mark | N/A | Yes | (1950) 67 RPC 209 | N/A | Cited for the principle that when comparing trade marks with a common denominator, more regard should be paid to the parts that are not common. |
| The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd | High Court | Yes | [2005] SGHC 175 | Singapore | Cited for the principle that in cases where there is a common denominator, it is important to look at the differences between the mark and the sign in order to decide whether the challenged sign has been able to distinguish itself sufficiently and substantially. |
| The European Limited v The Economist Newspapers Limited | N/A | Yes | [1996] FSR 431 | N/A | Cited for the principle that in cases where there is a common denominator, it is important to look at the differences between the mark and the sign in order to decide whether the challenged sign has been able to distinguish itself sufficiently and substantially. |
| Samsonite Corp v Montres Rolex SA | N/A | Yes | [1995] AIPR 244 | N/A | Cited for the principle that just because the registered mark was wholly included in the challenged sign, it did not mean that it would necessarily cause confusion between the two. |
| Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd | N/A | Yes | (1993) 26 IPR 246 | N/A | Cited for the principle that decisions, which held that the taking of a word mark and adding to it an additional word constituted infringement, should not be applied mechanically such that no added word could ever save such a taking from infringement. |
| Premier Brands UK Ltd v Typhoon Europe Ltd | N/A | Yes | [2000] FSR 767 | N/A | Cited for the principle that the more distinctive a mark, the greater the protection it is to be accorded. |
| British Sugar Plc v James Robertson & Sons Ltd | N/A | Yes | [1996] RPC 281 | N/A | Cited for factors to determine whether there is similarity between goods and services which are not identical or identically described. |
| Sabel BV v Puma AG, Rudolf Dassler Sport | N/A | Yes | [1998] RPC 716 | N/A | Cited for the principle that the mere association which the public might make between two trade marks because of their similar semantic content is not in itself a sufficient basis for concluding that there is a likelihood of confusion in the absence of any possibility of a misapprehension as to the origin of the goods and services. |
| Wagamama Ltd v City Centre Restaurants Plc | N/A | Yes | [1995] 32 IPR 613 | N/A | Cited for the principle that the mere association which the public might make between two trade marks because of their similar semantic content is not in itself a sufficient basis for concluding that there is a likelihood of confusion in the absence of any possibility of a misapprehension as to the origin of the goods and services. |
| Reckitt & Colman Products Ltd v Borden Inc | N/A | Yes | [1990] RPC 341 | N/A | Cited as having established the elements of passing off. |
| WILD CHILD Trade Mark | N/A | Yes | [1998] RPC 455 | N/A | Cited for the statement of the three elements for passing off. |
| McDonald’s Corp v Future Enterprises Pte Ltd | Court of Appeal | Yes | [2005] 1 SLR 177 | Singapore | Cited for the principle that an allegation that a trade mark has been applied for in bad faith is a serious allegation and should be distinctly proved. |
| “Royal Enfield” Trade Marks | N/A | Yes | [2002] RPC 24 | N/A | Cited for the principle that an allegation that a trade mark has been applied for in bad faith is a serious allegation and should be distinctly proved. |
| Davy v Garrett | N/A | Yes | (1878) 7 Ch.D. 473 | N/A | Cited for the principle that fraud should not be left to be inferred from the facts. |
| Kellogg Co v Pacific Food Products Sdn Bhd | Court of Appeal | Yes | [1999] 2 SLR 651 | Singapore | Cited for the principle that the likelihood of confusion and description was to be determined with reference to the reactions of ordinary sensible members of the public. |
| Kellogg Co v Pacific Food Products Sdn Bhd | N/A | Yes | [1998] 3 SLR 28 | Singapore | Cited for the principle that the likelihood of confusion and description was to be determined with reference to the reactions of ordinary sensible members of the public. |
| Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd | N/A | Yes | [1991] SLR 133 | Singapore | Cited for the test to be applied which is whether ordinary sensible members of the public would be confused. |
| Newsweek Inc v British Broadcasting Corporation | N/A | Yes | [1979] RPC 441 | N/A | Cited for the test to be applied which is whether ordinary sensible members of the public would be confused. |
| Re Harris Simons Construction Ltd | N/A | Yes | [1989] BCLC 202 | N/A | Cited for construing the meaning of the word “likely” in the context of s 8(1)(b) of the UK Insolvency Act 1986. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Section 8(2)(b) Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Section 8(3) Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Section 7(5) of the Act | Singapore |
| Section 8(7)(a) of the Act | Singapore |
| Section 7(6) of the Act | Singapore |
| Section 8(6) of the Act | Singapore |
| Section 7(1)(a) read with s 2(1) of the Act | Singapore |
| Section 7(1)(b) of the Act | Singapore |
| s 15 of the Trade Marks Act (Cap 332, 1992 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade Mark
- Trade Mark Registration
- Opposition
- Likelihood of Confusion
- Visual Similarity
- Aural Similarity
- Conceptual Similarity
- Bad Faith
- Passing Off
- Distinctiveness
15.2 Keywords
- trade mark
- opposition
- likelihood of confusion
- baume & mercier
- jean mercier
- singapore
- intellectual property
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 95 |
| Trademark Infringement | 80 |
| Contract Law | 10 |
16. Subjects
- Trade Marks
- Intellectual Property