Mobil Petroleum v Hyundai Mobis: Trade Mark Registration Refusal - Bad Faith & Likelihood of Confusion

Mobil Petroleum Co, Inc appealed to the High Court of Singapore against the Principal Assistant Registrar of Trade Marks' decision to allow Hyundai Mobis' application for registration of the 'MOBIS' trade mark. Mobil opposed the registration based on sections 8(2), 8(3), 8(4), and 7(6) of the Trade Marks Act, arguing similarity, likelihood of confusion, and bad faith. Lee Seiu Kin J dismissed Mobil's appeal, finding no similarity of goods, likelihood of confusion, or bad faith in Hyundai Mobis' application.

1. Case Overview

1.1 Court

High Court

1.2 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

Appeal regarding trade mark registration. The court dismissed Mobil's appeal, finding no bad faith or likelihood of confusion with Hyundai Mobis' mark.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Hyundai MobisRespondentCorporationApplication AllowedWon
Mobil Petroleum Co, IncAppellantCorporationAppeal DismissedLost

3. Judges

Judge NameTitleDelivered Judgment
Lee Seiu KinJudgeYes

4. Counsels

Counsel NameOrganization
Ang Kai HsiangAlban Tay Mahtani & de Silva LLP
Goh Yoke Hong KarolAlban Tay Mahtani & de Silva LLP
Lai Tze Chang StanleyAllen & Gledhill LLP
Vignesh VaerhnAllen & Gledhill LLP
Lim Ming Hui EuniceAllen & Gledhill LLP

4. Facts

  1. Mobil opposed Hyundai Mobis' application to register the 'MOBIS' trade mark.
  2. Mobil relied on its existing 'MOBIL' and 'MOBIL derivative' trade marks.
  3. Hyundai Mobis' application was for automobile apparatus, equipment, and parts.
  4. Mobil argued that the 'MOBIS' mark was similar and would cause confusion.
  5. The Principal Assistant Registrar allowed Hyundai Mobis' application.
  6. Mobil appealed the decision, arguing against the Registrar's findings.
  7. Hyundai Mobis claimed 'MOBIS' derived from 'mobile' and 'system'.

5. Formal Citations

  1. Mobil Petroleum Co, Inc v Hyundai Mobis, OS 1577/2007, [2008] SGHC 104

6. Timeline

DateEvent
Application to register the Opposed Mark was filed
Opposed Mark was published for opposition
Mobil filed its Notice of Opposition
Opposition heard by the Principal Assistant Registrar of Trade Marks
Decision given by the Principal Assistant Registrar of Trade Marks
Mobil obtained leave to adduce further evidence
Affidavit deposed by Li Chi Fai and filed
Affidavit filed by Jae-Youp Park
Judgment reserved

7. Legal Issues

  1. Likelihood of Confusion
    • Outcome: The court found no likelihood of confusion between the MOBIL mark and the Opposed Mark.
    • Category: Substantive
  2. Similarity of Goods
    • Outcome: The court held that vehicle parts and fuels/lubricants are not similar goods under s 8(2) of the Trade Marks Act.
    • Category: Substantive
  3. Bad Faith
    • Outcome: The court found insufficient evidence to infer bad faith on the part of Hyundai Mobis in filing its application.
    • Category: Substantive
  4. Passing Off
    • Outcome: The court held that the use of the Opposed Mark by Hyundai Mobis would not lead to misrepresentation required for passing off.
    • Category: Substantive

8. Remedies Sought

  1. Refusal of Trade Mark Registration

9. Cause of Actions

  • Trade Mark Infringement
  • Passing Off

10. Practice Areas

  • Trade Mark Registration
  • Intellectual Property Litigation

11. Industries

  • Petroleum
  • Automotive

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
British Sugar plc v James Robertson & Sons LtdN/AYes[1996] RPC 281N/ACited for factors to assess the similarity of goods or services.
Future Enterprises Pte Ltd v McDonald’s CorpN/AYes[2006] 4 SLR 629SingaporeCited regarding similarity of goods, but distinguished based on differing facts.
Imperial Tobacco v Berry Bros & Rudd LtdN/AYesCH 2001/APP/641N/ACited for the principle that distinctiveness and reputation of the cited mark would also be a relevant factor.
Johnson & Johnson v Uni-Charm Kabushiki KaishaN/AYes[2007] 1 SLR 1082SingaporeCited for the principle that the factors set out by Jacob J in British Sugar should not be regarded as requirements that must all be satisfied before the goods in question can be treated as similar.
The Polo/Lauren Co, LP v Shop-In Department Store Pte LtdCourt of AppealYes[2006] 2 SLR 690SingaporeCited for the principle that if either of the first two conditions is not satisfied there will not be any need to go into the third question of determining whether there exists a likelihood of confusion.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 1999 Rev Ed)Singapore
Section 7(6) Trade Marks Act (Cap 332, 1999 Rev Ed)Singapore
Section 8(3) Trade Marks Act (Cap 332, 1999 Rev Ed)Singapore
Section 8(4) Trade Marks Act (Cap 332, 1999 Rev Ed)Singapore
Section 8(2) Trade Marks Act (Cap 332, 1999 Rev Ed)Singapore
Section 7(1) Trade Marks Act (Cap 332, 1999 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trade Mark
  • Registration
  • Opposition
  • Likelihood of Confusion
  • Similarity of Goods
  • Bad Faith
  • Passing Off
  • MOBIL
  • MOBIS

15.2 Keywords

  • trade mark
  • registration
  • opposition
  • intellectual property
  • MOBIL
  • MOBIS
  • confusion
  • similarity
  • bad faith

17. Areas of Law

Area NameRelevance Score
Trademarks95
Unfair Competition60

16. Subjects

  • Trade Marks
  • Intellectual Property