HOW DOES SINGAPORE SET OUT CRITERIA OF IDENTIFYING THE SIMILARITY BETWEEN MARKS?
HOW DOES SINGAPORE SET OUT CRITERIA OF IDENTIFYING THE SIMILARITY BETWEEN MARKS?
In the recent case of Apptitude Pte Ltd v. MGG Software Pte Ltd, the court relied on the main precedent of the case Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide, where the court held that besides the likelihood of causing confusion to public between the similarity of goods, services and marks to public is, the actual and hypothetical fair use of the mark in relation to rival goods or services should be considered as well.
Therefore, in the case of Apptitude Pte Ltd v. MGG Software Pte Ltd, similarity is therefore assessed through the visual and theoretical comparison between both marks.
Visual Analysis
In analysing the visual aspect, the court looked from ordinary consumers’ perspective on whether main component of both marks are likely to cause any confusion. In this case, both marks have different colour combinations and font patterns hence consumers would not be easily misled.
Aside from the colours and font difference, names of both apps do not have any meaning to it since it was made up by the applicant therefore it is inherently distinctive. This is also a rule laid down in section 7 of the Trade Marks Act 1998.
Besides, the court cited the case of Sarika Connoisseur Café Pte Ltd v. Ferrero SpA, where it was held that if both marks are different from one another, any further analysis of both marks’ goods and services and further confusion is dismissed.
Section 8 Consideration
The court also took into consideration section 8 of Trade Marks Act 1998 where “a trade mark must not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is sought to be registered are identical with the goods or services for which the earlier trade mark is protected“. Since there were various supporting evidences showed how both marks are different from one another, it should be able to registered.
Bad Faith Allegation Dismissed
The court also held that fact that both mark are distinctively different from one another not just visually, but also the syllable of the marks, the accusation of Applicant acted in bad faith is dismissed.
Therefore, it is evident that when it comes to the identifying the similarity of marks, the court would not look merely on the similarity of the goods and services, the visual and whether it was acted in bad faith are equally important factors to be taken into consideration.
What Is the Staywell Framework?
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The Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide case established that trademark similarity assessments must consider not just visual comparison, but also the actual and hypothetical fair use of marks in relation to rival goods or services. This means courts examine how the marks would actually be used in the marketplace, not just how they look on paper.
What Is Section 7 of the Trade Marks Act 1998?
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Section 7 addresses inherent distinctiveness. Invented words or marks with no dictionary meaning are considered inherently distinctive, making them easier to register and protect. In the Apptitude case, both app names were invented words with no pre-existing meaning, which strengthened their distinctiveness and helped defeat the similarity claim.
How Does Section 8 Differ from General Similarity Tests?
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Section 8 of the Trade Marks Act 1998 sets a higher bar — it requires both the marks AND the goods/services to be identical (not just similar) for registration to be refused. In the Apptitude case, since the marks were visually different through color and font choices, Section 8 did not apply even though the goods/services category might have overlapped.
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