Singapore: Daimler AG v. Vivo Mobile Communication Co., Ltd.
Singapore: Daimler AG v. Vivo Mobile Communication Co., Ltd.
In early 2022, the German multinational automotive giant, Daimler Ag filed a third-party opposition against Vivo Mobile Communication Co Ltd’s trademark application for the mark “VIVO” on the grounds of similarity. Daimler Ag alleged that the mark “VIVO” was similar one of the trademarks “VITO” owned by them under Class 12, which is the classification for vehicles or vehicles-related goods.
Daimler Ag contended that they have enjoyed substantial sales throughout their long-standing and extensive use of their highly distinctive mark “VITO”. They contended that as both marks are similar in terms of visual, aural and conceptual, consumers are likely to be mistakenly believe that there is an economic link between both marks or parties.
The Decision
Although both trademarks are visually similar to some extent, that being the length, structure and similarity of letters in the marks, there are distinctions between the smooth “V” sound and the harsh “T” sound of the respective marks. The mark “VITO” has also not been used alone and has always been used in close proximity with the word “Mercedes-Benz”, and therefore has not acquired distinctiveness or pertained a badge of origin on its own.
With that, Principal Assistant Registrar found that it is very unlikely that the consumers would confuse the origins of these two marks as although both marks contained words of Italian origin and has similar meaning in Latin, that is “VITO” having the meaning of “life”; and “VIVO” having the meaning “to live”, the average consumer would not perceive them as words of Italian origin specifically, or even be aware of its similar meanings in Latin.
What Was Daimler’s Opposition Based On?
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Daimler Ag opposed Vivo’s trademark application claiming that “VIVO” was similar to their “VITO” mark (used for vehicles under Class 12). They argued that the marks were similar visually, aurally, and conceptually, which could cause consumers to mistakenly believe there was an economic link between both parties.
Why Did the Opposition Fail?
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The Principal Assistant Registrar found key distinctions: the smooth “V” sound versus the harsh “T” sound created aural differences. More importantly, “VITO” had never been used alone — it always appeared with “Mercedes-Benz” — so it had not acquired distinctiveness or functioned as a badge of origin on its own. Additionally, average consumers would not perceive both marks as Italian words or be aware of their similar Latin meanings.
What Does This Case Teach About Trademark Distinctiveness?
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This case demonstrates that marks always used alongside stronger brands (like “Mercedes-Benz VITO”) may not acquire independent distinctiveness. For successful opposition, the opposing mark must function as a standalone identifier. Additionally, conceptual similarity based on foreign language meanings carries little weight if average consumers would not recognize those meanings.
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