October 1, 2015
This case confirms that two earlier registered trade marks should not be combined into a composite whole for the purposes of determining whether a later mark is confusingly similar to an earlier mark.
Rovio Entertainment Ltd (Rovio) is a software development company best known for the popular mobile phone game "Angry Birds", released in 2009.
Rovio opposed an application by Kimanis Food Industries Sdn Bhd (Kimanis) to register the following mark (Angry Bite Mark) for snack foods in Class 30:
In the opposition proceedings before the Registrar of Trade Marks, Rovio’s main argument was that the Angry Bite Mark should not be registered because:
- It is confusingly similar to Rovio’s own registered trade marks. Moreover, Rovio’s marks are well known in Singapore and well known to the public at large; and
- The use of the Angry Bite Mark amounts to passing off and copyright infringement.
Rovio’s registered trade marks are set out below:
The Registrar of Trade Marks dismissed the opposition and permitted the Angry Bite Mark to be registered. Rovio appealed to the High Court to reverse the Registrar’s decision.
On the whole, the High Court upheld the Registrar’s decision and allowed the Angry Bite Mark to be registered.
The salient points of the court’s lengthy judgment include the following:
- Rovio’s marks cannot be considered as a composite mark in the similarity comparison
Rovio’s argued that the court should combine the Red Bird Mark and the Angry Birds Word Mark into one composite mark, and that there is a confusing similarity between the composite mark and the Angry Bite Mark. However, the court disagreed. As the Red Bird Mark and the Angry Birds Word Mark are registered separately, they cannot be combined into a single mark for the purposes of comparison with the Angry Bite Mark. Rovio is expected to register the composite mark if it wants to protect over the composite mark.
The court then compared Kimanis’s Angry Bite Mark to Rovio’s Red Bird Mark and the Angry Birds Word Mark separately. It upheld the Registrar’s finding that, on the whole, the Angry Bite Mark is not similar to either the Red Bird Mark or the Angry Birds Word Mark. The court also upheld the Registrar’s finding that there was no likelihood of confusion between the parties’ marks.
- Merely being inspired by other marks is not objectionable
The court commented that it is not the goal of trade mark law to prevent competition simply on the basis that a competitor’s trade mark was inspired by the trade mark owner’s trade mark, branding or marketing.
Even if the designer of the Angry Bite Mark was inspired by Rovio’s marks, this does not automatically mean that the marks are similar for the purposes of theTrade Marks Act. Rovio must still prove that the relevant marks are similar.
Similarly, the fact that the Angry Bite Mark may have been inspired by Rovio’s brand designs does not, on its own, contribute to a finding that there is or is likely to be a misrepresentation as required by the law of passing-off.
- The reputation of an opponent’s brand may enhance or reduce the likelihood of confusion
Whether or not the reputation of an opponent mark enhances or reduces the likelihood of confusion will depend on the facts of the case. There is no general rule that the greater the reputation of a mark, the less the likelihood of confusion.
In this case, however, due to the reputation of Rovio’s “angry bird” brand and the fact that there was no clear bird image in Kimanis’s Angry Bite Mark, the likelihood of confusion was reduced.