Mitac v SingTel: Trade Mark Infringement Dispute over 'Mio' Marks
Mitac International Corp, a Taiwanese company, sued Singapore Telecommunications Ltd (SingTel) in the High Court of Singapore, alleging trade mark infringement under the Trade Marks Act for SingTel's use of the 'Mio' mark. Mitac claimed SingTel's use of marks such as 'Mio Box' and 'Mio TV' infringed on its registered 'Mio' and 'Mio Digi Walker' trade marks. The court dismissed Mitac's claims, finding no likelihood of confusion between the marks and the products/services offered. Mitac's application to invalidate SingTel's trade marks was also dismissed.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Plaintiff's claims dismissed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Mitac sued SingTel for trade mark infringement over the use of 'Mio'. The court dismissed Mitac's claims, finding no likelihood of confusion.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Singapore Telecommunications Ltd | Defendant, Respondent | Corporation | Claims dismissed | Won | |
| Mitac International Corp | Plaintiff, Appellant | Corporation | Claims dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Lai Siu Chiu | Judge | Yes |
4. Counsels
4. Facts
- Mitac is the registered proprietor of the 'Mio' and 'Mio Digi Walker' trade marks for computer products.
- SingTel is the registered proprietor of several 'Mio' trade marks, including 'Mio Box' and 'Mio TV', for telecommunications services.
- Mitac claimed SingTel's use of the 'Mio' mark infringed its registered trade marks.
- SingTel used the 'Mio' mark as a sub-brand for its integrated mobile, fixed line, and broadband services.
- SingTel's 'Mio Box' is a modem used to enable its 'Mio Voice' service.
- SingTel's 'Mio TV' set-top box is leased to customers subscribing to its 'Mio TV' service.
- Mitac did not conduct a survey to determine if there was confusion in the market between its products and SingTel's services.
5. Formal Citations
- Mitac International Corp v Singapore Telecommunications Ltd and Another Action, Suit 519/2007, OS 1655/2007, [2009] SGHC 137
6. Timeline
| Date | Event |
|---|---|
| Singapore Telecommunications Ltd incorporated | |
| Singapore Telecommunications Ltd became a public company | |
| Singapore Telecommunications Ltd listed on the Singapore Exchange | |
| Singapore Telecommunications Ltd registered several trade marks in Classes 9 and 37 | |
| Mitac International Corp became aware of Singapore Telecommunications Ltd's ownership and use of trade marks | |
| Singapore Telecommunications Ltd launched its 'mio' services | |
| Mitac International Corp filed Suit No 519 of 2007 | |
| Mitac International Corp filed Originating Summons No 1655 of 2007 | |
| Singapore Telecommunications Ltd launched 'mio TV' service | |
| S519/2007 and OS1655/2007 were consolidated | |
| Court dismissed the Plaintiff’s claims in both actions |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court held that there was no trade mark infringement as there was no likelihood of confusion between the marks.
- Category: Substantive
- Sub-Issues:
- Likelihood of confusion
- Similarity of marks
- Identity of marks
- Similarity of goods and services
- Validity of Trade Mark Registration
- Outcome: The court held that the defendant's trade marks were validly registered.
- Category: Substantive
- Sub-Issues:
- Grounds for refusal of registration
- Breach of Trade Marks Act
8. Remedies Sought
- Injunction
- Delivery up or destruction of infringing goods
- Inquiry as to damages or account of profits
- Declaration of invalidity of trade marks
9. Cause of Actions
- Trade Mark Infringement
- Invalidation of Trade Mark Registration
10. Practice Areas
- Trade Mark Infringement
- Intellectual Property Litigation
11. Industries
- Telecommunications
- Technology
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Compass Publishing v Compass Logistics | English High Court (Chancery Division) | Yes | [2004] EWHC 520 | England and Wales | Cited regarding the descriptive function of generic words in trade marks and whether they change the identity of the marks. |
| SA Societe LTJ Diffusion v Sadas | Unspecified | Yes | [2003] FSR 34 | Unspecified | Cited regarding insignificant differences in trade marks and whether they would go unnoticed by the average consumer. |
| The Polo/Lauren Co, LP v Shop In Department Store | Court of Appeal | Yes | [2006] 2 SLR 690 | Singapore | Cited for the perspective of the average consumer in assessing visual, aural, and conceptual similarity of trade marks. |
| British Sugar v Robertson | Unspecified | Yes | [1996] RPC 281 | Unspecified | Cited for the proposition that goods and services can be similar to each other in trade mark law. |
| Registrar of Trade Marks v Woolsworth | Federal Court of Australia | Yes | [1999] 93 FCA 365 | Australia | Cited in relation to the similarity of goods and services. |
| Alex Pirie case | Unspecified | Yes | (1933) 50 RPC 147 | Unspecified | Cited for the meaning of 'so nearly resembling the registered trade mark as to be calculated to deceive' under common law. |
| Lyndon’s Trademark case | Unspecified | Yes | (1886) 32 Ch D 109 | Unspecified | Cited for the proposition that 'calculated to deceive' does not necessarily involve any intention to deceive. |
| Nation Fittings v Oystertec | Unspecified | Yes | [2006] 1 SLR 712 | Singapore | Cited for the strict test for identity of marks in trade mark law. |
| Reed Executive PLC v Reed Business Information Ltd | Unspecified | Yes | [2004] RPC 40 | Unspecified | Cited for the requirement of both aural and visual identity for trade marks to be considered identical. |
| McDonald’s Corp v Future Enterprises Pte Ltd | Court of Appeal | Yes | [2005] 1 SLR 177 | Singapore | Cited regarding the assessment of likelihood of confusion in trade mark disputes, considering factors beyond mark similarity. |
| Polo/Lauren Co, LP v Shop In Department Store Pte Ltd | High Court | Yes | [2005] 4 SLR 816 | Singapore | Cited to show that, while the test was not one of actual confusion, the likelihood of confusion must not be speculative and thus, actual confusion was a useful and relevant factor in assessing the likelihood of confusion. |
| Decon Laboratories Ltd v Fred Baker Scientific Ltd | English High Court (Chancery Division) | Yes | [2001] RPC 293 | England and Wales | Cited regarding the effect of additions to a trade mark on its identity. |
| Pan West Pte Ltd v Grand Bigwin | Unspecified | Yes | [2003] 4 SLR 755 | Singapore | Cited regarding the effect of additions to a trade mark on its identity. |
| In the Matter of an Application by the Pianotist Company Ld for the Registration of a Trade Mark | Unspecified | Yes | (1906) 23 RPC 774 | Unspecified | Cited for the rules of comparison of trade marks, considering look, sound, goods, and customer. |
| Premier Brands UK Ltd v Typhoon Europe Ltd | Unspecified | Yes | [2000] FSR 767 | Unspecified | Cited for guidance on what constitutes conceptual similarity in trade mark law. |
| Elle Trade Marks | Unspecified | Yes | [1997] FSR 529 | Unspecified | Cited regarding what constitutes 'use in relation to' goods and/or services in trade mark law. |
| Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc | Unspecified | Yes | [1999] RPC 117 | Unspecified | Cited regarding the nature and purpose of a trade mark. |
| Ismet Nadir Aslan v Oracle International Corporation | Intellectual Property Office of Singapore | Yes | [2006] SGIPOS 9 | Singapore | Cited for the application of the British Sugar approach in determining similarity of goods and services. |
| Pt Lea Sanent v Levi Strauss & Co | Intellectual Property Office of Singapore | Yes | [2006] SGIPOS 6 | Singapore | Cited for the application of the British Sugar approach in determining similarity of goods and services. |
| Astro All Asia Networks plc v Mediacorp News Pte Ltd | Intellectual Property Office of Singapore | Yes | [2008] SGIPOS 13 | Singapore | Cited for the application of the British Sugar approach in determining similarity of goods and services. |
| Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp) | High Court | Yes | [2007] 1 SLR 1082 | Singapore | Cited for the application of the British Sugar approach in determining similarity of goods and services. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark infringement
- Likelihood of confusion
- Similarity of marks
- Identity of marks
- Trade Marks Act
- Registered proprietor
- Telecommunications services
- Computer products
- Mio
- Mio Digi Walker
- Mio Box
- Mio TV
- Generation mio
15.2 Keywords
- Trade mark
- Infringement
- Mio
- SingTel
- Mitac
- Confusion
- Telecommunications
- Computer
- Singapore
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademark Infringement | 95 |
| Trademarks | 90 |
| Well Known Trade Marks | 30 |
| Groundless threats of infringement proceedings | 10 |
| Copyrights | 5 |
16. Subjects
- Trade Marks
- Intellectual Property
- Telecommunications
- Computer Products