In the case of Liwayway Marketing Corporation v Societe Des Produits Nestle S. A., the Intellectual Property Office of Singapore (IPOS) held that Societe des Produits Nestle S. A. failed in proving their grounds both written and oral.
Liwayway Marketing Corporation (hereinafter referred to as “the Applicant”) had applied for a multi-class trade mark application for a stylized mark MARTY’S in Classes 29 and 30 in Singapore on 28 October 2009 (hereinafter referred to as “Application Mark”). The Application Mark was accepted and published on 20 November 2009.
Societe Des Produits Nestle S. A. (hereinafter referred to as “the Opponent”) opposed the application on 19 March 2010 because the Application Mark is similar to its mark “SMARTIES”.
The Applicants responded by filing their Counter-Statement on 16 July 2010. To reach settlement for both parties, Case Management Conference (CMC) was held on 16 May 2012. The CMC extended leave for the Applicant to file further evidence on 12 September 2011.
However, both Applicant and Opponent were unable to settle their dispute and further evidence was filed by the Applicant on 28 August 2013. The Applicant had provided evidence of exhibited copies of packing lists, bills of landing and printout copies from distributor’s website identifying that the good retailed in Singapore. The Opponent had also provided further evidence of goods sold in various stores and websites such as www.nestle.com.sg, www.thecocoatrees.com, http://en.wikipedia.org/wiki/Smarties and so on.
The Applicant advertised and promoted it products which involve the Application Mark through its Facebook page www.facebook.com/LiwaywayMarketingCorporation and corporate website at www.oishi.com.ph.
The Application Mark has been registered in most of the countries such as Philippines, Myanmar, Lao People’s Democratic, United Arab Emirates, Cambodia and Taiwan.
The Opponent relied on Section 8(2) (b) of the Singapore Trade Mark Act which says that “a trade mark shall not be registered if there is similarity to earlier trade mark registered goods or services”.
The Opponent had argued that its SMARTIES mark has identical number of syllables and similar letters to the Application Mark. The Opponent also claimed the Application Mark “MARTY’S” is white in colour which is similar to its SMARTIES mark.
However, the Applicant rebutted the Opponent’s points of view in terms of the length of the Applicant Mark which contains six letters and the mark “SMARTIES” contains eights letters. The Applicant had also argued that the Application Mark is visually different from SMARTIES.
There is a vast visual distinctive difference between the Opponents and Applicants mark. The Opponent’s Mark “SMARTIES” surrounded by many colourful oval devices with bright designs meanwhile the Application Mark is stylised with long thin fonts. The Application Mark is designed in a way that it looks the letters are distinctively different from the Opponent’s Mark.
The IPOS disagreed to the submission made by the Opponent and held that the Application Mark is not visually similar to the Opponent’s SMARTIES mark. The IPOS also rejected the view on reasonable likelihood of confusion between the Application Mark and Opponent’s SMARTIES mark.