India’s largest company fails to stop Singapore TM registration
Tata Sons, the principal investment holding company of Indian multinational Tata Group, has failed to fend off a ‘Tata’ trademark registration in Singapore.
In late October, the Intellectual Property Office of Singapore (IPOS) issued its decision to reject Tata’s opposition to the registration of ‘Tata Harper’ as a trademark covering cosmetics, toiletries and skincare.
The applicant of the trademark, Tata’s Natural Alchemy, had used it for several years in Singapore and in foreign markets.
In its opposition, Tata relied on Trade Marks Act 1998 section 8(4), which covers damage to interests, dilution or unfair advantage, and section 8(7)(a), which covers passing off.
However, IP adjudicator Burton Ong, on behalf of IPOS, concluded that both oppositions couldn’t be sustained.
On section 8(4), Ong said that while Tata’s ‘Tata’ trademark may be well-known in Singapore, its opposition failed because the competing marks were more dissimilar than similar. The decision added that Tata hadn’t satisfactorily established the “connection” and “damage” elements of the decision.
“I am of the view that the opponent has not discharged its burden of showing that the use of the application mark would ‘indicate a connection’ between the applicant’s goods and the opponent, much less a ‘confusing connection’.
Absolutely no evidence has been tendered to show how consumers would react to the application mark or if they would even think of the opponent when they encountered the application mark,” said the decision.
On passing off, Ong noted that Tata “clearly has goodwill in its various trademarks”, but the remaining elements of the tort of passing off—misrepresentation and damage—had not been established.
“In short, there is nothing to show how the applicant’s use of the application mark on cosmetics products sold in Singapore could really damage the goodwill of the opponent,” said IPOS.
It added: “A decision otherwise would end up giving the opponent a de facto monopoly on the word ‘Tata’, which neither the law of registered trademarks nor the tort of passing off would countenance.”
As part of the decision, Ong also thanked counsel for their “indulgence in addressing my questions relating to the unsettled legal issues encountered in these proceedings”.
IPOS said that although proprietors of well-known trademarks are “entitled to challenge attempts to register trademarks that might jeopardise their commercial interests, the pursuit of trademark opposition proceedings in circumstances where the applicant operates in a different sphere of trading activities from these proprietors should be bridled by a keen awareness of the limitations of the legal protection afforded under Singapore trademark law”.
Ong explained that there are two ‘tiers’ of well-known trademarks, with the level of protection corresponding to the degree of familiarity that these marks have among the public of Singapore. However, both ‘tiers’ of well-known trademarks have greater protection than ordinary registered trademarks but only to the extent specifically prescribed by the relevant legislation.
“What this case has illustrated are the complexities of navigating the relationship between the statutory provisions of the Act that are perceived to overlap with each other, as well as the unsettled legal principles underlying the manner in which these provisions should be interpreted and applied,” said Ong.
Ong concluded: “One hopes that the Singapore courts will have, in the near future, the opportunity to further clarify the scope of these statutory provisions in a coherent manner and explain exactly how, and to what extent, they expand the scope of the legal rights conferred on proprietors who have succeeded in achieving a ‘well known’ status for their respective trademarks.”
