Court Clarifies Meaning of “Connection”

In the recent decision of Mobil Petroleum Company Inc and Hyundai Mobis [2009] SGCA 38, the Singapore Court of Appeal (SGCA) had occasion to consider how sec 8(3) of the Trade Marks Act (1999 Rev Ed) (TMA 1999) is to be construed.

This case originated from a trade mark opposition commenced at the Registry of Trade Marks by the appellant, to oppose the registration of the respondent’s “MOBIS” trade mark.

The Principal Assistant Registrar (PAR) found that the appellant’s “MOBIL” mark was well known. This finding was not challenged by the respondent, however, the PAR concluded that no confusion was caused by the two marks.

One of the issues before the SGCA was the appropriate standard to be applied in order to establish a “connection” between the later trade mark sought to be registered, and the earlier well-known trade mark under sec 8(3)(ii) of the TMA 1999.

In coming to its decision, the SGCA re-examined Amanresorts Limited and Novelty Pte Ltd [2008] 2 SLR 32 (Amanresorts). The Singapore High Court (“SGHC”) appeared to equate the requirement of “connection” under sec 55 of the Trade Marks Act (2005 Rev Ed) (TMA 2005) with the element of misrepresentation – constituting the tort of passing off.

By so equating, the SGHC held that the term “connection” under sec 55 of the TMA 2005 required an element of confusion. Interestingly the SGCA held that the term “connection” under sec 8(3)(ii) of the TMA 1999, unlike sec 55 of the TMA 2005, did not require an element of confusion, since the element was already encapsulated under sec 8(3)(iii) of the TMA 1999.

Reading sec 8(3)(ii) of the TMA 1999 to encapsulate a requirement of confusion, when it is already expressly required under sec 8(3)(iii), would lead to duplicity between the two sections. Accordingly, the term “connection” under sec 8(3)(ii) of the TMA 1999 does not mean the same as under sec 55 of the TMA 2005.

The SGCA also agreed that the limbs of sec 8(3)(i) to (iv) are to be dealt with serially, in that order.
Although the TMA 1999 has since been amended, this decision is still relevant. Section 8(3)(ii) of the TMA 1999 has been retained under sec 8(3)(ii) of the TMA 2005, in relation to oppositions to application for registration of a trade mark made before 1 July 2004.

Arthur Yap
ATMD Bird & Bird LLP
IP & Technology Group
DID 6428 9803
Fax 6223 8762
Arthur.yap@twobirds.com