MARINER and SUBMARINER: an interesting fight over (and under) the sea

Written by: Claudia BORGHINI of the IPSA Core Team
Edited by: YANG Zhuoyan; Denise THIA of the IPSA Core Team

Rolex S.A. v FMTM Distribution Ltd [2020] SGIPOS

In a game which saw two luxury companies fighting for the protection of their respective marks, Rolex S.A. (“the Opponent”), succeeded in its opposition against the registration of a trademark by FMTM Distribution Ltd (“the Applicant”), under Section 8(2)(b) and Section 8(7)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”), and failed under Section 8(4)(b)(i) and Section 8(4)(b)(ii).

The marks in question are MARINER (“the Application Mark”), and SUBMARINER (“the Opponent’s Mark”), which was registered in Singapore in 1959. 

This article looks at the above decision with particular focus on trade mark opposition on the ground of likelihood of confusion under Section 8(2)(b) of the Act.

Distinctiveness as a touchstone of the marks-similarity enquiry

It is recalled that the Singapore Court of Appeal (“SGCA”) in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 (“Staywell”)at [22] made a crucial distinction between two different aspects of “distinctiveness”:

First, there is distinctiveness in the ordinary and non-technical sense which refers to what the average consumer may recall as the outstanding and memorable aspect about the mark. The average consumer “only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has in his mind” (Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97) [1999] 2 CMLR 1343 at 1358 and Ozone Community  Crop v Advance Magazine Publishers Inc [2010] 2 SLR 459 [18] at [50]). Here, the court is entitled to have special regard to the distinctive or dominant components of a mark, even while it assesses the similarity of the two marks as composite wholes (Staywell at [23]).

On the other hand, distinctiveness in the technical sense refers to the capacity of a mark to function as a badge of origin. Technical distinctiveness can be inherent or acquired – the former, usually where the words comprising the mark are meaningless and can say nothing about the goods or services; and the latter, notwithstanding being descriptive, come to acquire the capacity to act as a badge of origin through long-standing or widespread use.

A particular element or component with a high degree of technical distinctiveness can have a bearing on whether that component or element is found to be the dominant and distinctive element of the mark in the non-technical sense. Rolex S.A. demonstrates the continued application of these principles laid down in Staywell.

The crux of the opposition in Rolex S.A. was that the Application Mark, “MARINER”, is confusingly similar to the earlier trade mark “SUBMARINER”.

Distinctive and Dominant Features of the Marks

Relying on Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2017] 2 SLR 308 (“Caesarstone (CA)”),  the Opponent contended that “MARINER” was a distinctive component which the Office should have especial regard to. In Caesarstone (CA), the SGCA considered the word “CAESAR” to be the distinctive and dominant component of the disputed “CAESARSTONE” mark, as “STONE” is merely descriptive of the goods to which the mark related to. In its attempt to analogize, the Opponent argued that the Application Mark and Opponent’s Mark share the common distinctive and dominant component of “MARINER”. The Hearing Officer, however, rejected this and distingushed “CAESARSTONE” for being an invented word that was easily divisible into the components “CAESAR” and “STONE”. On the other hand, “SUBMARINER” is a single word known in the English language, and therefore not clearly separable into distinctive and descriptive components.

The Hearing Officer thus held the view that there was no particular distinctive or dominant feature in either of the Marks because they were both word marks with no additional stylizations to any particular subset of letters.

It is possible to acquire technical distinctiveness, if you know what to prove!

As the Opponent’s Mark is composed wholly of the word “submariner”, a known English word, and which in fact bore connection with the goods to which it related (as the “submariner” watches line was designed for diving), the Opponent’s Mark is descriptive and correspondingly possessed only a medium level of inherent distinctiveness. Nonetheless, an inherently non-distinctive trade mark may still acquire a distinctive character as a result of prior and/or widespread use.

What the trade mark applicant has to show is that a significant proportion of the relevant class of individuals (those likely to purchase the goods or services in question) identify the goods as originating from one particular trade source because of the trade mark (see LOVE [2009] 1 SLR(R) 561 at [92]).

Unfortunately, this was not the case in Rolex S.A. The Opponent’s “SUBMARINER” Mark per se did not have the capacity to function as a badge of origin as there was the presence of the “ROLEX” mark alongside the Opponent’s Mark in every adduced piece of evidence.

This was similar to City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 415 (“City Chain”) where the SGCA found that there was no evidence that the Flower Quatrefoil mark has ever been promoted or used on its own. Thus, for a mark to be declared as possessing acquired distinctiveness, it should be used on its own and not in association with another mark, even if both marks are owned by the same company. This aspect of distinctiveness is especially pertinent to companies which own different marks but has largely built its branding upon a core, flagship mark. The same goes for companies looking to rebrand themselves. It is relevant to note that even if the public recognizes and associates the trade mark exclusively with a particular manufacturer, it does not necessarily mean that the trade mark has acquired distinctiveness. The public must regard the mark solely as a badge of origin.

Visual similarity: a prefix may not be enough to differentiate two marks

The assessment made by the Hearing Officer goes on with the visual, aural (number of syllables), and conceptual (the idea behind the mark as a whole) similarity.

               Visual similarity

While “SUBMARINER” and “MARINER” are of relatively similar lengths and are both single words, the Applicant claimed that the additional prefix “SUB” in the Opponent’s Mark achieved the purpose to differentiate the marks. However, the Hearing Officer stated that the additional three-letter “SUB” did not suffice to visually differentiate the two marks: the prefix was found to be small compared to the seven-letter common denominator “MARINER”.

Therefore, visual similarity was found.

Aural similarity

Other than considering the dominant component of the marks, the SGCA in Staywell (at [31] to [32]) highlighted that there is a second approach in assessing aural similarity, which is to undertake a quantitative assessment of whether the marks have more syllables in common than not.

Interestingly, the Hearing Officer here made the assessment by asking how the average Singaporean would pronounce the words in question. In the Singaporean context, the word “mariner” is likely to be associated with the common aurally encountered term ‘Marine Parade’ or ‘Marina Bay’, which would lead the average Singaporean to pronounce the Application Mark as “muh-REE-ner”, and the Opponent’s Mark as “SUB-muh-REE-ner”. Applying the principles stated in Staywell, the quantitative assessment approach shows that the marks share three identical syllables, and the difference lies only in the prefix “SUB”.

While the Applicant argued for this difference being material, the Hearing Officer concluded that the Application Mark is aurally more similar than dissimilar, because the shared three syllables constitute the entire Application Mark and form a substantial part of the Opponent’s Mark.

Conceptual similarity: the average Singaporean as part of the assessment

The Opponent’s submission that both the marks convey the ideas of the sea and a sailor is intuitive and commonsensical.

As such, the Applicant’s attempt at arguing that the average Singaporean would be unlikely to know the meaning of the word “mariner” and thathe could misapprehend its meaning by referring it to “marina” was bound to fail. The Hearing Officer recognized that while there might be a gap in the average Singaporean’s knowledge, and “mariner” might be an archaic word, “mariner” would nonetheless lead the average consumer to the idea of the sea. Moreover, even if the connection between “mariner” and “marina” is accepted as part of the imperfect recollection of the average Singaporean, “marina” and “submariner” still share the common idea of the sea.

Goods-similarity

Applying the principle that registration in the same specification within a class establishes a prima facie case for identity, goods-similarity was also satisfied as both Marks here were registered for “horological instruments” under Class 14. The fact that the Application Mark had also included many other specifications would not negate this overlap.

No likelihood of confusion if your mark is constantly accompanied by another mark   

Likelihood of confusion between the competing marks was also found.

The Applicant sought to show that its Mark has gained sufficient reputation to prevent consumer confusion though a large number of customer sales invoices through local retailers. In particular, what the Applicant submitted as evidence were:

  • a large number of customer sales invoices issued by a Franck Mullet Pte Ltd; and
  • two sets of website printouts from the Applicant’s websites, one listing ten Franck Muller retailers in Singapore and the other depicting the line of watches to which the Application Mark is applied.

However, the Hearing Officer declined to find strong evidence of the Application Mark’s reputation in Singapore, because the submitted invoices were for sale of watches bearing the Application Mark in circumstances where the Mark has not been marketed and sold on its own. Notably, it was  not that the Applicant’s watches lack the Application Mark, but that they were burdened with the “FRANCK MULLER” mark. Ironically, much like how the Opponent’s Mark lacked distinctiveness due to the constant presence of the “ROLEX” mark alongside the Opponent’s Mark, the presence of the retailer’s “FRANCK MULLER” mark which accompanied the Application Mark in the evidence (printouts of the Applicant’s watch listing on the retailers’ websites) fatally prevented the Application Mark from establishing its own reputation.

Conclusion

In conclusion, Rolex S.A. succeeded in its opposition against another luxury company.

This decision brings to the fore, clearly, that technical distinctiveness may subsist in two ways – inherently and acquired through use. Insofar as inherent distinctiveness is concerned, businesses have to balance between choosing an intuitively understandable word mark which risks being descriptive, and one which bears no relation to the product at hand but may not be quite as consumer-friendly.

Acquired distinctiveness, on the other hand, may be even more difficult to prove, as it requires proof of long-standing or widespread use. In this regard, Rolex S.A. highlights the importance of using a mark independently as much as possible. The presence of another mark put alongside the one sought to be registered (in the printouts of the mark on the retailers’ websites, in the invoices, etc.) may fatally prevent the mark from acquiring distinctiveness as “a badge of origin”. In other words, a newcomer mark cannot ride on the coattails of its established predecessors if the goal is for it to acquire distinctiveness.

In addition, the present case shows the intriguing connection between the visual, aural and conceptually similarity assessment and the specific context to which such assessment applies. Applicants and opponents should therefore be aware of the segment of the public and consumers whom they wish to address their marks to, because that will form part of the analysis. They should not take for granted that a word will have a particular sound or be pronounced in that specific way. On the contrary, it is relevant to fit the marks into the context, taking into account aural, visual and conceptual references (like Marina Bay, in this case), and what the average consumer will have in mind when they come across the marks in question.


IPSA is a student-led interest group and the above article is a reflection of the author’s opinions, and not professional legal advice for any matter. All errors are the author’s own.

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