Always tricky under trademark law is the treatment of full names. Kat friend Darryl Ho discusses how the matter was recently handled under the always interesting trademark jurisprudence in Singapore.

When one uses a full name as a trade mark, to what extent can one rely on that name to prevent others from registering similar marks? In the recent case of Multi Access Limited v Guangzhou Pharmaceutical Holdings Limited [2019] SGIPOS 15, the Registry found that the protection afforded to a full name mark was narrower than one might expect.

On 15 December 2015, Guangzhou Pharmaceutical Holdings Limited ("the Applicant") applied to register the trade mark "WONGLO" ("the Application Mark") in Singapore under International Registration No. 1297792 (Trade Mark No. 40201608455Q) in Classes 5, 30 and 32.

On 5 September 2017, Multi Access Limited (“the Opponent”) initiated opposition proceedings against the Application Mark, relying on a host of earlier trade mark registrations in Singapore, including the mark "WONG LO KAT" registered in Classes 5, 30 and 33 in 2018 (Trade Mark No. T1015993G) ("the Opponent's Mark").

The "王老吉" brand of herbal tea - read as "Wang Lao Ji" (in Mandarin) or "Wong Lo Kat" (in Cantonese) - was founded by Mr Wong Chak Bong in 1853, during the Qing dynasty in China. Wong's herbal tea boasted a secret herbal recipe with medicinal properties. The brand continued to flourish over almost five generations; but fissures in familial relationships, migration out of China, and changes in ownership, gave rise to the parties' competing claims.

In rejecting the opposition, the Registrar's decision focused primarily on the marks-similarity issue. Firstly, the Registrar considered the distinctiveness of the Opponent's Mark, which would influence the visual, aural and conceptual similarity analysis. The Applicant argued that the Opponent's Mark, "WONG LO KAT", was a personal name, citing case law for the principle that personal names enjoy lower inherent distinctiveness.

However, the Registrar considered that "WONG LO KAT" stood out as a full name per Chinese naming convention – "WONG" was Wong Chak Bong's surname and "LO KAT" was his nickname. In line with the CJEU's decision in Nichols Trade Mark Application [2004] ETMR 48, and the UK Trade Marks Work Manual, the Registrar stated the principle that full names, as trade marks, are deemed inherently distinctive, provided they are not extremely common and the number of traders in the relevant trade is not large.

The Registrar's finding that the Opponent's Mark possessed technical distinctiveness as a Chinese full name informed the mark-similarity analysis.

The Opponent argued that visually, the Application Mark and the Opponent's Mark were similar as they shared the dominant feature "WONGLO", and the element "KAT" in the Opponent's Mark was minor and insubstantial. However, the Registrar found that even a consumer with imperfect recollection would remember the Opponent's Mark as a Chinese full name consisting of three words, "WONG", "LO" and "KAT", "KAT" was an integral distinctive element and therefore could not be discounted.

For the same reasons, the Opponent argued that aurally, the average consumer would pronounce both marks in an identical or at least a similar way. However, the Registrar reiterated that the Opponent's Mark was distinctive as a whole, comprising three discreet words with spaces in between. Consumers would enunciate the Opponent's Mark with pauses between the words, and would be unlikely to under-enunciate or slur "KAT".

Lastly, the Opponent argued that both marks were conceptually similar, if not identical, as both were derived from Mr Wong Chak Bong's name and brand. However, the Registrar emphasized that mark-similarity is assessed on a mark-to-mark basis without consideration of external matter. The average consumer would not know of the marks' origins, and would understand the Opponent's Mark as a Chinese full name and the Application Mark as a meaningless, invented word.

Thus, as the marks were visually, aurally, and conceptually dissimilar, the opposition failed.

Discussion

Full names are generally assumed to possess inherent distinctiveness, and therefore they have a higher likelihood of securing registration. However, as illustrated by the Registrar's mark-similarity analysis above, if a mark's distinctiveness turns on it being a full name, its technical distinctiveness may be low, and its scope of protection is circumscribed. Relying on such marks in opposition proceedings on the basis of mark-similarity is risky, as there is a low threshold for a competing sign to be considered dissimilar, i.e. "WONG LO KAT" vs "WONGLO".

The present case is also significant from a broader perspective, as it is the latest instalment in a line of cases that have progressively relaxed the rigid stance against considering acquired distinctiveness in the marks-similarity assessment.

In Staywell Hospitality Group v Starwood Hotels [2014] 1 SLR 911 ("Staywell"), the Singapore Court of Appeal held that the mark-similarity assessment must be conducted purely on a mark-to-mark basis, with extraneous factors such as acquired distinctiveness considered only when assessing likelihood of confusion. However, this approach sits uneasily alongside the principle that the more distinctive an earlier mark, the lower the threshold for a subsequent mark to be found similar to it, as set down in The Polo/Lauren Co.v Shop In [2006] 2 SLR(R) 690.

If the mark-similarity assessment finds the marks dissimilar, the inquiry ends without proceeding to likelihood of confusion, marginalizing the significance and relevance of acquired distinctiveness. A mark with low inherent distinctiveness could be found dissimilar at the outset, with its acquired distinctiveness completely discounted, regardless of how compelling it might be.

Indeed, the position has been called into question:

1. In Beats v LG [2016] SGIPOS 8, IP Adjudicator David Llewelyn applied Staywell, but suggested considering the nature of the relevant goods vis-a-vis the earlier mark's distinctiveness at the mark-similarity stage rather than only at the likelihood of confusion stage.

2. In Clarins v BenQ [2018] SGIPOS 2, Registrar Gabriel Ong considered that Staywell was aimed at confining certain types of arguments to the likelihood of confusion analysis, but it was not a blanket prohibition on all extraneous matter in the mark-similarity analysis. He emphasized that distinctiveness is a critical issue in opposition and invalidation and called for judicial clarification.

3. In Monster v NBA [2018] SGIPOS 16 ("NBA"), IP Adjudicator Burton Ong likewise endorsed considering 'surrounding circumstances' in the mark-similarity assessment. Adopting a nuanced interpretation of Staywell, he commented that it was aimed at distinguishing between the 'issue of resemblance between competing marks' and 'question of the effect of such resemblance', the latter being proper to the likelihood of confusion analysis.

This distinction is not jeopardised by considering the knowledge of the average consumer, which is indispensable in understanding the consumer's perspective when assessing mark-similarity. Excluding this would be 'a highly contrived, and artificially blinkered, approach towards mark-similarity assessment that is incompatible with the commercial realities within which the trade mark regime operates.'

In the instant case, Registrar Anne Loo cited NBA with approval when discussing whether acquired distinctiveness could be considered in assessing distinctiveness at the mark-similarity stage. While recognising that the law was unsettled, she analysed the Opponent's evidence on acquired distinctiveness to assess whether its mark possessed the higher level of distinctiveness that would influence the mark-similarity assessment.

Ultimately, however, the Opponent's evidence was insufficient and acquired distinctiveness did not impact the mark-similarity analysis. It remains to be seen whether subsequent Registrars continue this 'relaxation' until the Court of Appeal revisits the issue.

Picture on left has been released to the public domain by the Los Angeles County Museum of Art.

Picture on left is in the public domain.