Mobil Petroleum v Hyundai Mobis: Trademark Registration Refusal Appeal

Mobil Petroleum Company, Inc appealed to the Court of Appeal of Singapore against the High Court's decision to allow Hyundai Mobis to register the trademark 'MOBIS'. Mobil argued that 'MOBIS' was similar to its registered trademark 'Mobil' and could cause confusion. The Court of Appeal, comprising Chao Hick Tin JA, Andrew Phang Boon Leong JA, and V K Rajah JA, dismissed the appeal on 2009-08-05, finding no likelihood of connection or confusion between the two marks. The court held that the use of 'MOBIS' would not indicate a connection with Mobil, nor would it likely cause confusion among the public.

1. Case Overview

1.1 Court

Court of Appeal of the Republic of Singapore

1.2 Outcome

Appeal dismissed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Appeal regarding trademark 'MOBIS' registration. Court dismissed appeal, finding no connection/confusion with 'Mobil', a well-known mark.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Mobil Petroleum Company, IncAppellantCorporationAppeal dismissedLost
Hyundai MobisRespondentCorporationRegistration allowedWon

3. Judges

Judge NameTitleDelivered Judgment
Chao Hick TinJustice of AppealYes
Andrew Phang Boon LeongJustice of AppealNo
V K RajahJustice of AppealNo

4. Counsels

Counsel NameOrganization
Lai Tze Chang StanleyAllen & Gledhill LLP
Vignesh VaerhnAllen & Gledhill LLP
Lim Ming Hui EuniceAllen & Gledhill LLP
Alban KangATMD Bird & Bird LLP
Ang Kai HsiangATMD Bird & Bird LLP
Goh Yoke Hong KarolATMD Bird & Bird LLP

4. Facts

  1. Mobil Petroleum Company is the registered proprietor of the trademark ‘Mobil’.
  2. Hyundai Mobis applied to register the trademark ‘MOBIS’ in respect of Class 12 goods.
  3. Mobil opposed the registration of ‘MOBIS’ on the ground that it was similar to ‘Mobil’ and could cause confusion.
  4. The application for registration was made on 17 April 2002, making the Trade Marks Act 1999 applicable.
  5. The Principal Assistant Registrar and the High Court rejected Mobil's opposition.
  6. Mobil appealed to the Court of Appeal, relying only on s 8(3) of the Trade Marks Act 1999.
  7. Hyundai Mobis claimed the name was derived by combining the words ‘Mobile’ and ‘System’.

5. Formal Citations

  1. Mobil Petroleum Company, Inc v Hyundai Mobis, CA 98/2008, OS 1577/2007, [2009] SGCA 38

6. Timeline

DateEvent
Hyundai Precision & Ind. Co established
Hyundai Precision & Ind. Co adopted the name Hyundai Mobis
Respondent's application for registration was made
Appeal dismissed

7. Legal Issues

  1. Trademark Infringement
    • Outcome: The court found no likelihood of confusion or connection between the marks.
    • Category: Substantive
    • Sub-Issues:
      • Likelihood of confusion
      • Similarity of marks
      • Connection between goods and services
  2. Trademark Registration
    • Outcome: The court allowed the registration of the trademark 'MOBIS'.
    • Category: Substantive
    • Sub-Issues:
      • Grounds for refusal of registration
      • Opposition to registration

8. Remedies Sought

  1. Refusal of Trademark Registration

9. Cause of Actions

  • Opposition to Trademark Registration

10. Practice Areas

  • Trade Mark Registration
  • Intellectual Property Litigation

11. Industries

  • Petroleum
  • Automotive

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Caterpillar Inc v Ong Eng PengHigh CourtYes[2006] 2 SLR 669SingaporeCited for the assessment of visual, aural or conceptual similarity between trademarks.
Amanresorts Limited v Novelty Pte LtdHigh CourtYes[2008] 2 SLR 32SingaporeCited for equating the requirements of ‘connection’ and ‘is likely to damage the interests of the proprietor’ prescribed under s 55(3)(a) of the TMA 2005 with the elements of misrepresentation and damage constituting the tort of passing off.
Novelty Pte Ltd v Amanresorts LtdCourt of AppealYes[2009]SingaporeCited for upholding the High Court's decision in Amanresorts, requiring a likelihood of confusion to be shown under s 55(3)(a) of the TMA when seeking an injunction.
McDonald’s Corporation v Joburgers Drive-In Restaurant (Pty) LtdAppellate Division of the Supreme CourtYes[1996] 35 I.P.R. 11South AfricaCited for the principle that s 35 of the South African Trade Marks Act 1993 was intended to remedy the lack of protection for foreign marks without goodwill in the country.
Tie Rack Plc v Tie Rack Stores (Pty) LtdN/AYes(1989) (4) SA 427South AfricaCited to demonstrate that courts in South Africa and the United Kingdom have not protected owners of foreign trade marks who did not have goodwill within the country.
Philips Electronics NV v Remington Consumer ProductsHigh CourtYes[1998] RPC 283England and WalesCited for the principle that s 56(2) of the UK Trade Marks Act 1994 puts a claimant who has a reputation but no business in the UK in the same position as if he did have a business and goodwill in the UK.
Pensonic Corporation Sdn Bhd v Matsushita Electric Industrial Co LtdIntellectual Property Office of SingaporeYes[2008] SGIPOS 9SingaporeCited for the principle that a consumer must think that products are somehow connected or related to the owner of the Panasonic mark, and that being reminded of the opponent's mark is insufficient to establish a connection.
Spalding (AG) & Bros v A W Gramage LtdHouse of LordsYes(1915) 32 R.P.C. 273United KingdomCited for the principle that a representation is often not express, and is therefore implied by conduct, e.g., from the use of an identical or similar mark.
Bollinger v Costa Brava Wine Co LtdN/AYes[1961] 1 WLR 277England and WalesCited for the principle that champagne in the UK meant wine produced in the Champagne region in France and granted an injunction on the grounds of passing off.
Barnsley Brewery Co Ltd v RBNBN/AYes[1997] FSR 462England and WalesCited for the traditional view that the source and quality of water is important for brewing.
CDL Hotels International Ltd v Pontiac Marina Pte LtdCourt of AppealYes[1998] 2 SLR 550SingaporeCited as an example of a passing off case where the misrepresentation concerned a business connection between the plaintiff's and defendant's chain of hotels.
Frank Reddaway and Frank Reddaway & Co., Limited v George Banham and George Banham & Co., LimitedHouse of LordsYes[1896] A.C. 199United KingdomCited for the principle that nobody has any right to represent his goods as the goods of somebody else.
North Cheshire & Manchester Brewery Co v Manchester Brewery CoHouse of LordsYes[1899] AC 83United KingdomCited for the principle that when two companies have very similar names, the ordinary conclusion is that both companies have merged.
H.P. Bulmer Ltd and Showerings Ltd. v. J. Bollinger S.A. and Champagne Lanson Pere et FilsN/AYes[1978] R.P.C. 79England and WalesCited for the principle that it is sufficient if what is done represents the defendant's goods to be connected with the plaintiffs in such a way as would lead people to accept them on the faith of the plaintiff's reputation.
Sabel BV v Puma AG, Rudolf Dassler SportCourt of Justice of the European UnionYes[1998] RPC 199European UnionCited for the principle that the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion.
The Polo/Lauren Co, LP v Shop-In DepartmentCourt of AppealYes[2006] SGCA 14SingaporeCited for the 'global confusion test' to determine 'a likelihood of confusion', which looks at the question of confusion globally, considering all circumstances which may be relevant.
Associated Newspapers Ltd v Express NewspapersN/AYes[2003] FSR 51England and WalesCited as authority for the global confusion test.
Britesmile International Ltd v Smile Inc. Asia Pte LtdIntellectual Property Office of SingaporeYes[2005] SGIPOS 9SingaporeCited for applying the same test for determining confusion provided for in s 8(2) and s 8(3).
Neutrogena Corporation v Golden LtdN/AYes[1996] RPC 473England and WalesCited for the principle that there is passing off even if most of the people are not fooled most of the time but enough are for enough of the time.
Richemont International SA v Goldlion Enterprise (Singapore) Pte LtdHigh CourtYes[2006] 1 SLR 401SingaporeCited for the principle that the test audience ought to be the same for ss 8(2) and 8(3) of the Act as for s 15 of the earlier Act.
Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte LtdHigh CourtYes[1991] SLR 133SingaporeCited for the principle that illiteracy is an evaporating consideration in the Singapore of today.
Reed Executive Plc v Reed Business Information LtdCourt of AppealYes[2004] RPC 40England and WalesCited for the principle that we should guard against too “nanny” a view of protection and if the confusion is only to arise in the mind of the careless or stupid, that is not good enough.
Caterpillar Inc v Ong Eng PengHigh CourtYes[2006] 2 SLR 669SingaporeCited for the principle that the offending products would also expose the plaintiff to liability or risk of litigation from unsuspecting buyers and users.
York Pacific Holdings Ltd v U-Re Auto Sdn BhdN/AYes[1998] 5 MLJ 84N/ACited for the principle that the offending products would also expose the plaintiff to liability or risk of litigation from unsuspecting buyers and users.
Illustrated Newspapers v Publicity ServicesN/AYes[1938] Ch 414England and WalesCited for the principle that the plaintiffs may well be thought to be responsible for the inset and that they run a reasonable risk of being exposed to litigation.
Associated Newspapers v Insert MediaN/AYes[1991] F.S.R. 380England and WalesCited for the principle that there was a risk of the advertisements not complying with statutes such as the Financial Services Act.
Chelsea Man Menswear Limited v Chelsea Girl LimitedN/AYes[1987] RPC 189England and WalesCited for the principle that there is no reason in fact or in law why the court, in considering the proper form of relief, should treat them as having a business of which the boundaries will necessarily be confined to the three proposed restricted areas.
Polo/Lauren Co, LP v Shop In Department Store Pte LtdHigh CourtYes[2005] 4 SLR 816SingaporeCited for rejecting the ECJ’s global assessment test in the interpretation of s 8(2).
Future Enterprise Pte Ltd v McDonald’s CorpCourt of AppealYes[2007] 2 SLR 845SingaporeCited for the principle that the regimes governing different applications under the TMA for different purposes should be kept distinct.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act 1999Singapore
Trade Marks Act 2005Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trademark
  • Registration
  • Infringement
  • Confusion
  • Connection
  • Well-known mark
  • Passing off
  • Goodwill
  • Dilution
  • Trade Marks Act
  • Similarity
  • Trade source
  • Global confusion test

15.2 Keywords

  • trademark
  • registration
  • opposition
  • confusion
  • Mobil
  • Mobis
  • Singapore
  • intellectual property

17. Areas of Law

Area NameRelevance Score
Trademarks90
Trademark Infringement85
Administrative Law20

16. Subjects

  • Trade Marks
  • Intellectual Property