MediaCorp News v Astro: Trade Mark Registration Refusal & Likelihood of Confusion
MediaCorp News Pte Ltd appealed against the decision of the principal assistant registrar of trade marks, which allowed Astro All Asia Networks PLC's trade mark application in Class 35 to proceed to registration. Mediacorp argued that Astro's trade mark was similar to its own earlier registered mark and that there was a likelihood of confusion on the part of the public. The High Court of Singapore dismissed Mediacorp's appeal, finding that there was no likelihood of confusion.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeal dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Mediacorp News' appeal against Astro's trade mark registration was dismissed, as there was no likelihood of confusion.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| MediaCorp News Pte Ltd | Appellant | Corporation | Appeal Dismissed | Lost | Wun Rizwi, Su Yunwen |
| Astro All Asia Networks PLC | Respondent | Corporation | Appeal Dismissed | Won | Max Ng, Colin Phan |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Lee Seiu Kin | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Wun Rizwi | KhattarWong |
| Su Yunwen | KhattarWong |
| Max Ng | Gateway Law Corporation |
| Colin Phan | Gateway Law Corporation |
4. Facts
- Mediacorp owns and manages Channel NewsAsia, an English TV news channel established in March 1999 in Singapore.
- Astro made two trade mark applications, including one in Class 35 for consultancy and advisory services relating to business.
- Mediacorp opposed Astro's Class 35 application, relying on sections of the Trade Marks Act.
- The PAR dismissed Mediacorp's opposition, allowing Astro's applications to proceed to registration.
- Mediacorp appealed the PAR's decision, specifically in relation to Astro's Class 35 application.
- Mediacorp argued that the PAR erred in concluding that there was no likelihood of confusion.
- Astro contended that the marks were not identical or similar and that the services were dissimilar.
5. Formal Citations
- MediaCorp News Pte Ltd v Astro All Asia Networks PLC, OS 1192/2008, [2009] SGHC 176
6. Timeline
| Date | Event |
|---|---|
| Channel NewsAsia established in Singapore | |
| CNA Mark registered under T00/06342B in Class 35 | |
| Channel NewsAsia (International) launched | |
| Astro registered as a foreign company in Malaysia | |
| Astro completed listing on the Kuala Lumpur Stock Exchange | |
| Astro All Asia Networks Plc v Mediacorp News Pte Ltd [2008] SGIPOS 13 | |
| Mediacorp filed opposition to Astro's trade mark applications | |
| Judgment reserved |
7. Legal Issues
- Likelihood of Confusion
- Outcome: The court held that there was no likelihood of confusion on the part of the public.
- Category: Substantive
- Sub-Issues:
- Imperfect recollection
- Similarity of marks
- Similarity of services
- Related Cases:
- [2006] 2 SLR 690
- Similarity of Trade Marks
- Outcome: The court found that the Astro Mark and the CNA Mark were similar.
- Category: Substantive
- Sub-Issues:
- Visual similarity
- Aural similarity
- Conceptual similarity
- Similarity of Services
- Outcome: The court found that the Class 35 services which Astro seeks to be registered are similar to those which Mediacorp had been registered for.
- Category: Substantive
- Related Cases:
- [1996] RPC 281
- Well-Known Trade Mark
- Outcome: The court found that the CNA Mark qualified as a well-known mark within the meaning of the Act.
- Category: Substantive
- Related Cases:
- [2008] 4 SLR 427
- [2008] 2 SLR 32
8. Remedies Sought
- Refusal of Trade Mark Registration
9. Cause of Actions
- Trade Mark Infringement
- Trade Mark Opposition
10. Practice Areas
- Trade Mark Registration
- Trade Mark Opposition
11. Industries
- Media
- Broadcasting
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Astro All Asia Networks Plc v Mediacorp News Pte Ltd | Intellectual Property Office of Singapore | Yes | [2008] SGIPOS 13 | Singapore | Cited as the judgment below, which was appealed in the present case. |
| British Sugar Plc v James Robertson & Sons Ltd | N/A | Yes | [1996] RPC 281 | England and Wales | Cited for the guidelines on assessing similarity of goods and services. |
| Mobil Petroleum Company Inc v Hyundai Mobis | High Court | Yes | [2008] 4 SLR 427 | Singapore | Cited in relation to the assessment of whether a trade mark is well-known in Singapore. |
| Amanresorts Limited v Novelty Pte Ltd | High Court | Yes | [2008] 2 SLR 32 | Singapore | Cited in relation to the assessment of whether a trade mark is well-known in Singapore. |
| McDonald’s Corp v Future Enterprises Pte Ltd | High Court | Yes | [2005] 1 SLR 177 | Singapore | Cited regarding the level of care and intelligence exercised by the ordinary consumer. |
| Future Enterprises Pte Ltd v McDonald’s Corp | Court of Appeal | Yes | [2007] 2 SLR 845 | Singapore | Cited for the standard of review applicable in appeals against findings of fact in trade mark applications. |
| The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd | Court of Appeal | Yes | [2006] 2 SLR 690 | Singapore | Cited for the principles on likelihood of confusion and the factors to be considered. |
| 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 | England and Wales | Cited for the factors to consider when determining similarity of marks. |
| Nautical Concept Pte Ltd v Jeffery Mark Richard | High Court | Yes | [2007] 1 SLR 1071 | Singapore | Cited for the principle that what is relevant is the “imperfect recollection” of the customer. |
| Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International) | High Court | Yes | [2006] 2 SLR 669 | Singapore | Cited for the principle that the court will not compare the two marks side by side and examine them in detail. |
| Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp) | High Court | Yes | [2007] 1 SLR 1082 | Singapore | Cited for the factors for assessing similarity of goods and services. |
| Richemont International SA v Da Vinci Collections Pte Ltd | High Court | Yes | [2006] 4 SLR 369 | Singapore | Cited for the principle that mere association is not sufficient for likelihood of confusion. |
| Weir Warman Ltd v Research & Development Pty Ltd | Court of Appeal | Yes | [2007] 2 SLR 1073 | Singapore | Cited for the underlying aim of the trade marks regime. |
| Nation Fittings (M) Sdn Bhd v Oystertec Plc | High Court | Yes | [2006] 1 SLR 712 | Singapore | Cited for the principle that the “average consumer” need not necessarily mean the general public. |
| Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd | High Court | Yes | [2000] 3 SLR 145 | Singapore | Cited regarding the sense of an ordinary purchaser. |
| Novelty Pte Ltd v Amanresorts Ltd | Court of Appeal | Yes | [2009] SGCA 13 | Singapore | Cited for the 'damaging connection' condition. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 1999 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade Mark
- Likelihood of Confusion
- Trade Mark Registration
- Class 35 Services
- Well-Known Mark
- Visual Similarity
- Conceptual Similarity
- Imperfect Recollection
15.2 Keywords
- Trade Mark
- Registration
- Opposition
- Confusion
- Mediacorp
- Astro
- Singapore
- Intellectual Property
16. Subjects
- Trade Mark Law
- Intellectual Property
17. Areas of Law
- Trade Mark Law
- Intellectual Property Law