SINGAPORE: MANCHESTER IS MORE THAN A FOOTBALLING CITY

Jamal Abdulnaser Mahmoud Al Mahamid v Global Tobacco Manufacturers (International) Sdn. Bhd. is an interesting trade mark dispute before the High Court of Singapore. The parties in this case each chose “Manchester” as the name of their respective brand of cigarettes. Both of them registered their trade marks in Singapore with the use of the term “Manchester”.

The Plaintiff, Mr. Jamal Abdulnaser Mahmoud Al Mahamid, is the owner of the trade mark  which was registered in Singapore on 7 June 2005.
The Defendant, Global Tobacco Manufacturers (International) Sdn. Bhd., is a Malaysian company which is in the business of manufacturing cigarettes and is the registered proprietor of the trade mark which was registered in Singapore on 29 November 2012.

The Plaintiff commenced these proceedings seeking to invalidate the Defendant’s mark in 2014 on the following grounds:

1. That there is a likelihood of confusion as the Defendant’s mark is similar to that of the Plaintiff.
2. That the use of the Defendant’s mark amounts to passing-off.

• That the application for registration was made in bad faith.

1. That the Plaintiff’s mark is well-known in Singapore and the use of the Defendant’s mark indicates a connection between the parties, therefore, there is a likelihood of confusion because of such use.

The Defendant’s response to the Plaintiff’s case is that:

1. There is no likelihood of confusion as the consumers of cigarettes are discerning and particular and as the marks are visually and conceptually different. Although, aural similarity is conceded, the Defendant argued that the word “Manchester” did not outweigh the differences between the marks.
2. There is no passing-off as there is no evidence of goodwill in the Plaintiff’s mark, misrepresentation by the Defendant and damage suffered by the Plaintiff.

• The Defendant did not register its mark in bad faith. The later registration of the Defendant’s mark was within the boundaries of acceptable commercial behavior.

1. The Plaintiff’s mark is not well known in Singapore as there is no evidence of this.

The Court has carefully examined the element of similarity and the element of likelihood of confusion in the law on invalidation of trademark and concluded that these two elements should be approached separately.

In assessing whether the marks were similar, the Judge adopted the approach by the Court of Appeal of Singapore in the cases of Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] 2 SLR 941 and Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc. and another and another appeal [2014] 1 SLR 911. The proposition in these cases is that:

1. The assessment is done mark for mark without consideration of external matters such as consideration for their use or how they may be displayed or viewed by the consumers.
2. In that assessment, a dominant component may be given special attention but similarity is ultimately assessed as a whole.

• Similarity is a question of impression, and the court’s assessment must be on the totality of the observation of the marks.

1. It is not necessary for all three aspects, namely the aural, visual and conceptual aspects, to be similar.
2. Such assessment is to be carried out with the imperfect recollection of the average consumer.

The Court adopted the approach in the Hai Tong case which noted that technical distinctiveness, which refers to the ability of the mark to act as a badge of origin, is an integral factor in assessing visual similarity. Although the marks are not identical, it is noted that when the marks are placed side by side, the word “Manchester” is dominant in both the marks. The graphical element in the marks would not draw the attention of a consumer with imperfect recollection and it is the word “Manchester” that would be remembered. The Court stated that in assessing conceptual similarity, the aim is to identify ideas underpinning the mark as a whole. Since the word “Manchester” is dominant in both the marks they allude to whatever may be evoked by the word “Manchester”. The Court concluded that the element of similarity is satisfied as there is visual similarity, conceptual similarity and definitely, aural similarity. It is also noted that even if the conclusion made on the conceptual similarity is wrong, similarity as a whole would still be made out as it is not necessary for all three aspects to be made out.

In examining the law on assessment of confusion, the Court adopted the approach in The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] 2 SLR(R) 690 noting that the factors germane to determining whether there is a likelihood of confusion includes:

1. The similarity or identity of the marks; the closeness or identity of the goods; and
2. The recollection and discernment of the relevant consumer.

The Court noted that the more similar the mark, the likelihood of confusion is higher and that the perspective to be taken is that of the average consumer with some care and good sense. It was held that the relevant consumers, with imperfect recollections, would be confused as to their respective origin of the marks as they are in respect of identical goods and also given the high degree of similarity between the marks. The relevant consumers in this case are ship chandlers and sailors. It was concluded that it is highly likely for them to assume or conclude that the Defendant’s product is the Plaintiff’s in different packaging if they were confronted with the Defendant’s product when they seek to buy the Plaintiff’s given the identity of the textual component. The next issue was whether the evidence of actual confusion is significant. The Court concluded that when the marks are in respect of the identical goods as in the present case, the evidence of actual confusion is not that significant, relying on the comments of the Court of Appeal in the Hai Tong’s case.

With regards to the issue of whether the Defendant has committed the tort of passing off the Plaintiff’s goods, the Court concluded that goodwill in the Plaintiff’s goods was not made out. Following Novelty Pte Ltd v Amanresorts Ltd and another [2009] 3 SLR(R) 216, the requirements to establish a claim for passing off are goodwill, misrepresentation and damage. The Plaintiff has failed to adduce enough evidence that consumers were “attracted” to his goods. The Court stated that the increase in sales were indicative of goodwill but not goodwill in itself. Other factors, such as the availability of competing products in the area of business should be taken into account when addressing the evidence on goodwill. It was noted that a sailor abroad a ship may perchance by a particular brand of cigarette as nothing else available.

The next important issue was whether the Defendant has acted in bad faith when it registered its mark in 2012. In Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and another and another appeal [2009] 2 SLR(R) 814, bad faith has been defined as conduct which is dishonest when judged objectively by ordinary standards of honest people. The Court stated that it is necessary for the Plaintiff to show that the Defendant’s conduct fell short of normally accepted standards of commercial behaviour, and that the Defendant knew of facts which, if known to an ordinary honest person, would have made that person realise that there would be a breach of those standards. It was concluded that the mere fact that the Defendant registered its mark, even if it is similar or identical to the Plaintiff’s, cannot be a sufficient basis for bad faith to be made out. The Court is of the opinion that something akin to exploitation of dishonesty is required.

It is also noted the fact that the Plaintiff did not oppose to the registration of the Defendant’s mark is not a bar to bring a claim to invalidate the Defendant’s registered mark.

While the other grounds advanced by the Plaintiff were not made out, it was sufficient for the Plaintiff to succeed in respect of the first ground, i.e. that the marks are similar, in respect of identical goods, and that there will be probable confusion. Consequently, the Defendant’s mark was declared invalid.