In the case of Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc. and another and another appeal, after going through a lengthy process of jurisdiction, the Intellectual Property Office of Singapore (IPOS) held that Starwood Hotels & Resorts Worldwide, Inc. succeeded in the opposition proceeding on grounds of all evidence submitted.
Staywell Hospitality Group Pty (hereinafter referred to as ‘‘the Applicant’’) applied to register a trade mark for ‘‘PARK REGIS’’ on 3 March 2008 in Singapore in Class 35 and 43 (hereinafter referred to the ‘‘Application Mark’’). Subsequently, the application was accepted and published on 7 May 2008. The Applicant had started using the Application Mark in Singapore from November 2010.
Starwood Hotels & Resorts Worldwide, Inc. (hereinafter referred to as ‘‘the Opponent’’) opposed the application on 8 September 2008 because the Application Mark is similar to its mark ‘‘ST REGIS’’ (hereinafter referred to as ‘‘the ST REGIS Mark’’).
The Opponent then filed their Notice of Opposition to the applicant on 8 September 2008 that the Application Mark should not be registered on absolute grounds under Section 7(4)(b) and 7(6) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (hereinafter referred to as “the Act”) and relative grounds under Section 8(2)(b), 8(4)(b) and 8(7)(a) of the Act.
During the opposition proceedings, the Principal Assistant Register (PAR) of IPOS had only allowed the opposition under Section 8(2)(b) and 8(4)(b)(i) of the Act but rejected Section 8(4)(b)(ii), 8(7)(a) and Section 7.
The Applicant responded by filing an appeal against the PAR’s decision in particular Section 8(2)(b) and 8(4)(b)(i) of the Act. The Opponent on the other hand filed a cross-appeal against the PAR’s rejection under 8(7)(a). The hearing is held on 18 April 2012.
The High Court reversed the PAR’s decision under Section 8(2)(b) and 8(4)(b)(i) of the Act but affirmed the decision under Section 8(7)(a) of the Act. The consideration for the Court to disallow the opposition under Section 8(2)(b) of the Act is firstly, on grounds that the ST REGIS Mark is inherently distinctive in relation to hotel services.
The High Court also held that the Application Mark and the ST REGIS Mark were aurally and conceptually similar if looked as a whole and that Class 35 and 43 services sought registration by the Applicant were similar to Opponent’s services in Class 43 and that Class 35 was merely complementary to its registration in Class 43. The High Court also held that there was no likelihood of confusion resulting from the similarity of the competing marks and the similarity of their services.
With regards to Section 8(4)(b)(i) opposition, the High Court found out that the ST REGIS Mark is a well-known mark in Singapore followed by the evidence of extensive advertising and large number of patrons of ST REGIS hotels including international level. Besides, the use of the Applicant Mark would not cause confusion between the Application Mark and ST REGIS Mark since there is no likelihood of confusion. Furthermore, no damage would have caused to the Opponent because of Opponents had shown no intention of operating in the same market segment as the Applicant.
The opposition under Section 8(7)(a) of the Act is regarded where the Opponent’s pre-opening business in Singapore and the international reputation of the ST REGIS Mark were insufficient to establish goodwill at the date of the Application.
As a result of the hearing, the Application Mark was allowed to proceed to registration.
The Opponent had then filed a Notice of Appeal on 9 November 2012 against the decision. The Applicant also filed its Notice of Appeal objecting the Judge’s decision of aural and conceptual similarity between the Application Mark and ST REGIS Mark.
After the first hearing, the Court of Appeal held that in relation to similarity of the Application Mark and the ST REGIS Mark, the Court of Appeal held that that the Application Mark and the ST REGIS Mark have a substantial degree of aural similarity and a fair degree of conceptual similarity and therefore held the marks to be similar. Thus the appeal of the Applicant was dismissed.
With regards to the appeal of the Opponent, the Court of Appeal affirmed the earlier decision in the High Court with a few amendments. Under Section 8(2)(b) opposition, the Court of Appeal held that there is similarity between the Application Mark in Class 35 and the ST REGIS Mark n Class 43 therefore the services in question are similar. The Court of Appeal also held that no initial interest confusion should be incorporated into the law because it is inconsistent with the purpose of Section 8(2) of the Act which is to protect the originality of the trade mark. However, the similarity of the Application Mark and the ST REGIS Mark will cause average customers to be confused whether the Application Mark and the ST REGIS Mark were linked to each other.
With regards to Section 8(4)(b)(i) opposition, the Court of Appeal held that the subsequent result from similarity of the Application Mark and the ST REGIS Mark is likely to damage the Opponent’s interest. Furthermore, the Opponent’s interest in the possibility of expansion into other market segments would be damaged. Therefore, opposition under Section 8(4)(b)(i) succeeded.
In relation to Section 8(7)(a) opposition whereby the Application Mark may be refused registration because it could result in liability under tort of passing off, the Court of Appeal affirmed the opposition because reputation was insufficient to establish goodwill.
As a final conclusion, the Court of Appeal allowed the appeal in under Section 8(2)(b) and Section 8(4)(b)(i) of the Act. However, Section 8(7)(a) opposition was dismissed. The Application Mark was held to be not registrable.