Identical marks may contain insignificant differences

The Singapore High Court has recently decided a case which gives a test for whether 2 marks are “identical”. In Louis Vuitton Malletier v City Chain Stores (S) Pte Ltd and Another Matter [2009] SGHC 24, the Honourable Justice Tay Yong Kwang (“the Judge”) considered Section 27(1) of the Trade Marks Act (Cap. 322) (“TMA”) and held that the mark used by the Defendant, known as the Sovil Flower Device, was identical to the registered trade mark used by the Plaintiff, known as the Flower Quatrefoil, even though there were certain differences between the marks.

Section 27 of the TMA sets out the acts which amount to infringement of a trade mark. It has 2 limbs, namely the identical mark limb in section 27(1) and the similar mark limb in 27(2). According to section 27(1), there is infringement where there is use in the course of trade of a sign identical to the trade mark, without the consent of the proprietor of the trade mark, in relation to goods or services which are identical with those for which the trade mark is registered.

The requirements of section 27(2) are identical to those of section 27(1), except that the sign need not be identical to the trade mark, but merely similar, and that the goods need not be identical to those for which the goods are registered, but merely similar, and because of such similarity, there exists a likelihood of confusion on the part of the public.

The Judge affirmed the formulation of the test for identical marks as stated in Kerly’s Law of Trade Marks and Trade Names (14th edition, 2005) at paragraphs 14-051 to 14-053, that “[a] sign will be identical with the registered mark where it reproduces, without any modification or addition, all the elements constituting the mark or were (sic), viewed as a whole, it contains differences so insignificant they may go unnoticed by the average consumer.” [emphasis added]

The Judge then found that the Sovil Flower Device did not contain any circle or any round object in its center, whereas the Flower Quatrefoil contained a circle in its center, and that the proportions of the petals contained in the Flower Quatrefoil and the rounded tips were not completely identical with the Sovil Flower Device. Nevertheless, the Judge held that the Sovil Flower Device was identical to the Flower Quatrefoil, as the differences were too minute.

Nathanael Chua
Associate
Intellectual Property and Technology Group
ATMD Bird & Bird LLP
Phone +65 6428 9889
Email:  Nathanael.Chua@twobirds.com