Festina Lotus v Romanson: Trade Mark Opposition for J.ESTINA & Device

Festina Lotus SA, proprietor of the FESTINA trade mark, opposed Romanson Co Ltd's application to register the J.ESTINA trade mark in Singapore. The Principal Assistant Registrar dismissed the opposition, but the High Court allowed Festina Lotus's appeal, finding visual, aural, and conceptual similarities between the marks, as well as bad faith on Romanson's part. The court concluded that Romanson's application to register its mark should be refused.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Appeal Allowed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Written Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Festina Lotus opposed Romanson's J.ESTINA trade mark. The court allowed the appeal, finding similarity and bad faith.

1.7 Decision Date

15 July 2010

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Festina Lotus SA	Appellant	Corporation	Appeal Allowed	Won	G Radakrishnan of Infinitus Law Corporation
Romanson Co Ltd	Respondent	Corporation	Application to register its mark refused	Lost	Jonathan Yuen of Harry Elias Partnership LLP Joana Teo of Harry Elias Partnership LLP

3. Judges

Judge Name	Title	Delivered Judgment
Tay Yong Kwang	Judge	Yes

4. Counsels

Counsel Name	Organization
G Radakrishnan	Infinitus Law Corporation
Jonathan Yuen	Harry Elias Partnership LLP
Joana Teo	Harry Elias Partnership LLP

4. Facts

Festina Lotus SA is the proprietor of trade marks which are variations of “FESTINA and device” in Singapore.
Romanson Co. Ltd filed a trade mark application for “J.ESTINA and device” in Singapore.
Festina Lotus SA filed a notice of opposition to Romanson Co Ltd's trade mark application.
The Principal Assistant Registrar of Trade Marks dismissed Festina Lotus SA's opposition.
The Appellant’s mark 1 is a composite mark made up of a crest with the word “FESTINA” emblazoned across the curved banner.
The Respondent’s mark consists of the word “J.ESTINA” with a crown device positioned on the top of it.
The Respondent’s brand story on the name “J.ESTINA” appears extremely contrived.

5. Formal Citations

Festina Lotus SA v Romanson Co Ltd, Originating Summons No 240/2010/H, [2010] SGHC 200

6. Timeline

Date	Event
1902-01-01	Festina Lotus SA founded in Switzerland
1990-06-12	Festina Lotus SA registered trade mark number T9004265I in Singapore
1998-04-01	Romanson Co. Ltd established in South Korea
2002-01-01	Romanson Co. Ltd ventured into the jewellery market
2005-07-04	Festina Lotus SA registered trade marks T0612082G, T0612083E and T0612084C in Singapore
2005-12-16	Romanson Co. Ltd filed trade mark application number T05/25465Z in Singapore
2006-04-02	Arbitration Panel at Baselworld issued a censure prohibiting Romanson Co Ltd from using J.ESTINA
2006-04-26	Office for Harmonisation in the Internal Market issued a decision in favour of Festina Lotus SA
2006-09-22	Festina Lotus SA filed a notice of opposition to Romanson Co Ltd's trade mark application
2008-06-20	Romanson Co Ltd sought to register the mark Jovanna Estina in Singapore
2010-07-16	Judgment reserved
2010-07-16	High Court allowed the appeal

7. Legal Issues

Trade Mark Infringement
- Outcome: The court found that there was a likelihood of confusion between the Appellant's and Respondent's marks.
- Category: Substantive
- Sub-Issues:
  - Similarity of marks
  - Similarity of goods
  - Likelihood of confusion
- Related Cases:
  - [2010] SGIPOS 2
  - [2006] 2 SLR(R) 690
Bad Faith
- Outcome: The court found that the Respondent's registration of the trade mark was made in bad faith.
- Category: Substantive
- Sub-Issues:
  - Copying of mark
  - Unacceptable commercial behaviour
- Related Cases:
  - [2002] RPC 24
  - [2007] 1 SLR(R) 1071

8. Remedies Sought

Refusal of trade mark registration

9. Cause of Actions

Trade Mark Opposition

10. Practice Areas

Trade Mark Opposition
Intellectual Property Litigation

11. Industries

Fashion
Retail

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Festina Lotus SA v Romanson Co Ltd	Intellectual Property Office of Singapore	Yes	[2010] SGIPOS 2	Singapore	Appeal against the Principal Assistant Registrar of Trade Marks' decision
SC Prodal 94 SRL v Spirits International NV	High Court of Justice (Chancery Division)	Yes	[2003] EWHC 2756 (Ch)	England and Wales	Endorsed as the standard of review of the High Court in its appellate capacity against the decision of a Trade Marks PAR
Future Enterprises Pte Ltd v McDonald’s Corp	High Court	Yes	[2007] 2 SLR(R) 845	Singapore	Endorsed the standard of review of the High Court in its appellate capacity against the decision of a Trade Marks PAR
Ozone Community Corp v Advance Magazine Publishers Inc	High Court	Yes	[2010] SGHC 16	Singapore	Enumerated the three conditions under s 8(2)(b) TMA which the Appellant has to satisfy in order to succeed in its opposition to the Respondent’s application
The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd	Court of Appeal	Yes	[2006] 2 SLR(R) 690	Singapore	Emphasised the need for a conjunctive reading of the three conditions under s 8(2)(b) TMA
Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp)	High Court	Yes	[2007] 1 SLR(R) 1082	Singapore	Whether there is a similarity of marks in these three aspects is essentially a question of fact
Sabel BV v Puma AG, Rudolf Dassler Sport	European Court of Justice	Yes	Case C-251/95 [1997] ECR I- 6191	European Union	The assessment of similarity between two marks must be based on the overall impression created by them, in particular, of their distinctive and dominant components
Lloyd Schuhfabrik Meyer v Klijsen Handel BV	European Court of Justice	Yes	Case C-342/97 [1999] 2 CMLR 1343	European Union	The assessment of similarity between two marks must be based on the overall impression created by them, in particular, of their distinctive and dominant components
Matratzen Concord GmbH v OHIM	Court of First Instance	Yes	Case T- 6/01 [2002] ECR II-4335	European Union	There are instances whereby the overall impression conveyed to the relevant public by a composite mark may be dominated by one or more of its components
Medion AG v Thomson Multimedia Sales Germany & Austria GmbH	European Court of Justice	Yes	Case C- 120/04 [2005] ECR I-8551	European Union	It is still possible that a non-dominant component of a composite mark might have an independent distinctive role in the composite mark
Phillips – Van Heusen	Court of First Instance	Yes	T– 292/01 [2003] ECR II – 4335	European Union	A clear case of conceptual dissimilarity
Itochu Corporation v Worldwide Brands, Inc	Intellectual Property Office of Singapore	Yes	[2007] SGIPOS 9	Singapore	Offers a more nuanced illustration of conceptual similarity
Imperial Tobacco Co (of Great Britain and Ireland) Ltd’s Trade Marks	UK Court of Appeal	Yes	[1915] 2 Ch 27	United Kingdom	The use of a crest, in the modern context, is used to lend a “high-class” look to a mark design as an attraction to the average consumer as opposed to signifying royal patronage
London Lubricants (1920) Limited’s Application to Register a Trade Mark	UK Court of Appeal	Yes	[1925] 42 RPC 264	United Kingdom	The tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison
Mystery Drinks Gmbh v OHIM	European Court of First Instance	Yes	T 99/01 [2004] ETMR (18) 217	European Union	Words are pronounced as a whole
Mediacorp News Pte Ltd v Astro All Asia Networks plc	High Court	Yes	[2009] 4 SLR(R) 496	Singapore	The law does not require all three similarities to be established before the finding that the two marks are similar can be made
Shaker de L. Laudato & C. Sas v Limiñana y Botella, SL	European Court of Justice	Yes	Case C-334/05P	European Union	The assessment was a global one and should not be conducted by comparing only one element
React and Device Trade Mark	Trade Marks Registry	Yes	[1999] RPC 529	United Kingdom	An analysis of the issue of “likelihood of confusion” has to be made on the basis of a notional, normal and fair use of the marks
McDonald’s Corp v Future Enterprises Pte Ltd	High Court	Yes	[2005] 1 SLR(R) 177	Singapore	It is fair to say that the average consumer in Singapore is one who is literate, educated, exposed to the world and unlikely to be easily hoodwinked
Nation Fittings (M) Sdn Bhd v Oystertec plc	High Court	Yes	[2006] 1 SLR(R) 712	Singapore	The average consumer need not necessarily mean the general public, as more specialised products might be purchased by a more specific cross-section of the public
Weir Warman Ltd v Research & Development Pty Ltd	High Court	Yes	[2007] 2 SLR(R) 1073	Singapore	The trade mark register is intended to be a comprehensive and accurate record of trade marks currently in use
Richemont International SA v Da Vinci Collections Pte Ltd	High Court	Yes	[2006] 4 SLR(R) 369	Singapore	Mere association which the public may make between two trade marks because of their semantic content is not in itself a sufficient basis for concluding that there is a likelihood of confusion
El Corte Ingles SA v OHIM	Court of First Instance	Yes	Case T-443/05 [2007] ETMR (81) 1340	European Union	The fact that goods are classified into various classes under the ICGS does not preclude a finding that those goods are nevertheless similar in nature
British Sugar Plc v James Robertson & Sons Ltd	High Court	Yes	[1996] RPC 281	England and Wales	The proper test to be used in determining whether the goods were similar
QS by S. Oliver Trade Mark	Trade Marks Registry	Yes	[1999] RPC 520	United Kingdom	Leather goods, leather bags, purses, etc would be regarded as “clothing accessories”
Sergio Rossi SpA v OHIM, Sissi Rossi	Court of First Instance	Yes	Case T-169/03 [2005] ECR II-685	European Union	Women’s bags and women’s footwear were not “aesthetically complementary”
Canon Kabushiki Kaisha v Pathé Communications	European Court of Justice	Yes	[1998] ETMR 366	European Union	The global assessment of likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity of marks and of goods
City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier	Court of Appeal	Yes	[2010] 1 SLR 382	Singapore	Since a watch is a product which is commonly available and purchased by the general public, the average consumer would be the general public
Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd	High Court	Yes	[2006] 1 SLR(R) 401	Singapore	In the absence of any possibility of a misapprehension as to the origin of the goods or services, the mere association of the public between Solvil’s “Solvil Flower” and Louis Vuitton’s “Flower Quatrefoil mark” based on their similar use was not a sufficient basis for concluding that there is a likelihood of confusion on the part of the members of public
Durferrit GmbH v OHIM	Court of First Instance	Yes	T-244/01 [2003] ECR II-1589	European Union	“NUTRIDE” and “TUFFTRIDE” were held by the CFI to be dissimilar despite sharing the same suffix “-TRIDE
Julian James’ Application: Opposition of Smart GmbH	Trade Marks Registry	Yes	[2005] ETMR (93) 1096	European Union	“CARSMART” was held to be similar to “SMART”
Picasso v OHIM	Court of First Instance	Yes	T-104/01 [2002] ECR II-4359	European Union	“a 50 pence purchase in the station kiosk will involve different considerations from a once-in-a-lifetime expenditure of £50,000”
The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd	High Court	Yes	[2005] 4 SLR(R) 816	Singapore	Where the user of a potentially infringing sign had taken pains to distinguish his products from the registered proprietor’s goods, the effect might be that the likelihood of confusion, if any, was merely hypothetical or speculative
Polo Spirit Pte Ltd v S. Tous S.L	Intellectual Property Office of Singapore	Yes	[2009] SGIPOS 3	Singapore	When bad faith is alleged by either party, the party who is second in time has the onus of explaining how he came about using or registering the mark
Kundry SA’s Application: Opposition by the President and Fellows of Harvard College	Trade Marks Registry	Yes	[1998] ETMR 178	European Union	Where the applicant had not rebutted such serious claims of bad faith by way of counterstatement or evidence, the opposition would be allowed to proceed
“Royal Enfield” Trade Marks	High Court	Yes	[2002] RPC 24	England and Wales	A plea of fraud should not lightly be made
Nautical Concept Pte Ltd v Jeffery Mark Richard and another	High Court	Yes	[2007] 1 SLR(R) 1071	Singapore	Findings of Geoffrey Hobbs QC in Demon Ale Trade Mark with regard to the expression “bad faith” was cited with approval
Demon Ale Trade Mark	Trade Marks Registry	Yes	[2000] RPC 345	United Kingdom	Findings of Geoffrey Hobbs QC with regard to the expression “bad faith”
Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd	High Court	Yes	[1999] RPC 367	England and Wales	Discussed what the concept of “bad faith” connotes
Harrison’s Trade Mark Application	High Court	Yes	[2005] FSR 10	England and Wales	The courts have struggled to find a satisfactory definition of “bad faith” and have ultimately aligned the definition in trade mark law with that operating in other areas of civil liability
PT Swakarya Indah Busana v Dhan International Exim Pte Ltd	High Court	Yes	[2010] 2 SLR 109	Singapore	The lack of bona fide intention to use the mark in the form that was applied to be registered was found to be an act of bad faith
Daawat Trade Mark	Trade Marks Registry	Yes	[2003] RPC 11	United Kingdom	A finding of bad faith can also be made where the applicant was aware that someone else intends to use and/or register the mark
Lancome Parfums et Beaute & Cie’s Community Trade Mark Application	Trade Marks Registry	Yes	[2001] ETMR 89	European Union	Where an applicant attempts, by means of registration, to seize a trade mark of a third party with whom he had a contractual or pre-contractual relationship, the registration would also be found to have been made in bad faith
Rothmans of Pall Mall Ltd v Maycolson International Pte Ltd	High Court	Yes	[2006] 2 SLR(R) 551	Singapore	Various instances of bad faith could be inferred in that case
Interkrenn Maschinen Vertriebs GmbH’s Community Trade Mark	Trade Marks Registry	Yes	[2002] ETMR 27	European Union	The applicant conclusively showed that there was a person who was linked to the trade mark proprietor and who had obtained knowledge of a planned trade mark of the applicant during a business meeting

13. Applicable Rules

Rule Name
Order 87 rule 4 Rules of Court (Cap 322, R 5, 2006, Rev Ed)

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed) s 8(2)(b)	Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 7(6)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade mark
Opposition
Likelihood of confusion
Bad faith
Visual similarity
Aural similarity
Conceptual similarity
Distinctiveness
Composite mark
Brand story

15.2 Keywords

Trade mark
Opposition
Festina
J.ESTINA
Likelihood of confusion
Bad faith

17. Areas of Law

Area Name	Relevance Score
Trademarks	90
Trademark Infringement	90
Administrative Law	30
Contract Law	10

16. Subjects

Trade Mark Law
Intellectual Property