Ozone Community Corp v Advance Magazine Publishers: Trade Mark Dispute over 'HYSTERIC GLAMOUR' and 'GLAMOUR'
Ozone Community Corporation, a Japanese company, appealed the Principal Assistant Registrar of Trade Marks' decision to disallow its trade mark application for 'HYSTERIC GLAMOUR' in Class 16, opposed by Advance Magazine Publishers Inc. The High Court of Singapore, presided over by Justice Woo Bih Li, reversed the decision on January 15, 2010, finding no likelihood of confusion between Ozone's mark and AMP's 'GLAMOUR' mark, and allowed Ozone's trade mark application to proceed to registration. The court considered arguments under Sections 8(2)(b) and 8(4) of the Trade Marks Act.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Ozone Community Corp appealed against the decision to disallow its 'HYSTERIC GLAMOUR' trade mark registration. The High Court reversed the decision, allowing the registration.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Ozone Community Corp | Appellant | Corporation | Appeal Allowed | Won | |
| Advance Magazine Publishers Inc | Respondent | Corporation | Appeal Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Woo Bih Li | Judge | Yes |
4. Counsels
4. Facts
- Ozone Community Corp applied to register the trade mark 'HYSTERIC GLAMOUR' in Class 16.
- Advance Magazine Publishers Inc opposed the application based on its registered 'GLAMOUR' mark.
- The Principal Assistant Registrar initially upheld AMP's opposition.
- Ozone appealed the decision to the High Court.
- AMP's 'GLAMOUR' magazine has been published since 1941 and is sold worldwide.
- Ozone's 'HYSTERIC GLAMOUR' brand is focused on fashion apparel and accessories.
- Ozone's goods bearing the 'HYSTERIC GLAMOUR' mark have not been sold or advertised in Singapore.
5. Formal Citations
- Ozone Community Corp v Advance Magazine Publishers Inc, Originating Summons No 414 of 2009, [2010] SGHC 16
- Advance Magazine Publishers Inc. v Ozone Community Corporation, , [2009] SGIPOS 4
6. Timeline
| Date | Event |
|---|---|
| Average circulation figure for September 2002 was recorded. | |
| Statutory declaration by Mr. John W. Bellando declared in the United States of America. | |
| Statutory declaration by Mr Noriyuki Yamagani declared in Japan. | |
| Principal Assistant Registrar's decision issued. | |
| Originating Summons No 414 of 2009 filed. | |
| High Court decision issued. |
7. Legal Issues
- Likelihood of Confusion
- Outcome: The court found no likelihood of confusion between the 'HYSTERIC GLAMOUR' and 'GLAMOUR' marks.
- Category: Substantive
- Similarity of Marks
- Outcome: The court found the marks visually and aurally dissimilar, and conceptually similar to a limited extent. The court also found that the 'GLAMOUR' mark was neither inherently distinctive nor distinctive by use.
- Category: Substantive
- Similarity of Goods
- Outcome: The court found that 'printed matter' in Ozone's goods was similar to AMP's goods, but Ozone's other goods were dissimilar.
- Category: Substantive
- Passing Off
- Outcome: The court found that AMP failed to establish the element of goodwill and that there was no misrepresentation.
- Category: Substantive
- Sub-Issues:
- Goodwill or Reputation
- Misrepresentation
- Damage
8. Remedies Sought
- Registration of Trade Mark
- Reversal of PAR's Decision
9. Cause of Actions
- Trade Mark Infringement
- Passing Off
10. Practice Areas
- Intellectual Property Litigation
- Trade Mark Registration
- Trade Mark Opposition
11. Industries
- Fashion
- Publishing
- Retail
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Advance Magazine Publishers Inc. v Ozone Community Corporation | Principal Assistant Registrar of Trade Marks | Yes | [2009] SGIPOS 4 | Singapore | The decision of the Principal Assistant Registrar of Trade Marks that was appealed in the current judgment. |
| British Sugar PLC v James Robertson & Sons Ltd | N/A | Yes | [1996] RPC 281 | N/A | Cited for the factors to consider when assessing similarity of goods in trade mark disputes. |
| McDonald’s Corp v Future Enterprises Pte Ltd | Court of Appeal | Yes | [2005] 1 SLR 177 | Singapore | Cited regarding the determination of likelihood of confusion in trade mark cases. |
| Future Enterprises Pte Ltd v McDonald’s Corp | Court of Appeal | Yes | [2007] 2 SLR 845 | Singapore | Cited for the standard of review applicable to appeals from a decision of the Principal Assistant Registrar of Trade Marks. |
| Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp) | N/A | Yes | [2007] 1 SLR 1082 | N/A | Cited for the aspects of similarity, viz, visual similarity, aural or phonetic similarity and conceptual similarity. |
| The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd | Court of Appeal | Yes | [2006] 2 SLR 690 | Singapore | Cited for the step-by-step approach to determine trade mark infringement under s 8(2)(b) TMA. |
| Itochu Corporation v Worldwide Brands Inc | N/A | Yes | [2007] SGIPOS 9 | Singapore | Cited regarding conceptual dissimilarity between trade marks. |
| The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd | High Court | Yes | [2005] 4 SLR 816 | Singapore | Cited for the importance of distinctiveness in an earlier trade mark in the inquiry into the similarity between the marks under s 8(2)(b) TMA. |
| MediaCorp News Pte Ltd v Astro All Asia Networks PLC | N/A | Yes | [2009] 4 SLR 496 | Singapore | Cited for the principles as to what constitutes “likelihood of confusion”. |
| Valentino Globe BV v Pacific Rim Industries Inc | N/A | Yes | [2009] 4 SLR 577 | Singapore | Cited for the meaning of “by way of rehearing” in Order 87 rule 4(2) of the Rules of Court. |
| Nautical Concept Pte Ltd v Jeffrey Mark Richard | N/A | Yes | [2007] 1 SLR 1071 | Singapore | Cited for the principle of 'imperfect recollection' when comparing trade marks. |
| Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International) | N/A | Yes | [2006] 2 SLR 669 | Singapore | Cited for the principle that the court should not compare the two marks side by side and examine them in detail. |
| Aristoc, Ld v Rysta, Ld | N/A | Yes | (1943) 60 RPC 87 | N/A | Cited for the principle that the answer to the question whether the sound of one word resembles too nearly the sound of another must nearly always depend on first impression. |
| Aristoc, Ld v Rysta, Ld | N/A | Yes | (1945) 62 RPC 65 | N/A | Cited for the principle that the answer to the question whether the sound of one word resembles too nearly the sound of another must nearly always depend on first impression. |
| Sports Café Ltd v Registrar of Trade Marks | N/A | Yes | (1998) 42 IPR 552 | N/A | Cited for the principle that the fact that two marks convey a common idea becomes relevant only if the marks themselves look or sound alike. |
| Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd | N/A | Yes | (1952) 86 CLR 536 | N/A | Cited for the principle that the fact that two marks convey a common idea becomes relevant only if the marks themselves look or sound alike. |
| Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV | N/A | Yes | [2000] FSR 77 | N/A | Cited for the principle that the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements. |
| Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd | N/A | Yes | [2006] 1 SLR 401 | N/A | Cited for following the decision in Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV. |
| Julius Sämaan Ltd v Tetrosyl Ltd | N/A | Yes | [2006] FSR 42 | N/A | Cited for the principle that the court must consider the likelihood of confusion arising from the use by the defendant of the offending sign, discounting added matter or circumstances. |
| Novelty Pte Ltd v Amanresorts Ltd and another | Court of Appeal | Yes | [2009] 3 SLR 216 | Singapore | Cited for the classical trinity of elements for AMP to succeed in an action for passing off. |
| City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier | Court of Appeal | Yes | [2009] SGCA 53 | Singapore | Cited for the classical trinity of elements for AMP to succeed in an action for passing off. |
| Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd (trading as ONE.99 SHOP) | Court of Appeal | Yes | [2000] 2 SLR 766 | Singapore | Cited for the principle that the law treats quite differently the mark of a business depending on whether the mark is descriptive or ‘fancy’. |
| Nippon Paint (Singapore) Co Pte Ltd v ICI Paint (Singapore) Pte Ltd | N/A | Yes | [2001] 1 SLR 1 | Singapore | Cited for the principle that the courts are slow to allow anyone to claim a monopoly of descriptive words. |
| Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd | N/A | Yes | [2000] 3 SLR 145 | Singapore | Cited for the principle that the courts are slow to allow anyone to claim a monopoly of descriptive words. |
13. Applicable Rules
| Rule Name |
|---|
| Rules of Court (Cap 322, R5, 2006 Rev Ed) O 87 r 4(2) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 1999 Rev Ed) s 8(2)(b) | Singapore |
| Trade Marks Act (Cap 332, 1999 Rev Ed) s 8(4) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade Mark
- Likelihood of Confusion
- Passing Off
- Goodwill
- Misrepresentation
- Distinctiveness
- Visual Similarity
- Aural Similarity
- Conceptual Similarity
- Class 16
- HYSTERIC GLAMOUR
- GLAMOUR
15.2 Keywords
- Trade Mark
- HYSTERIC GLAMOUR
- GLAMOUR
- Singapore
- Intellectual Property
- Trade Mark Registration
- Trade Mark Opposition
- Passing Off
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 90 |
| Trademark Infringement | 90 |
| Civil Procedure | 30 |
| Administrative Law | 20 |
16. Subjects
- Trade Mark Law
- Intellectual Property
- Trade Mark Registration
- Trade Mark Opposition
- Passing Off