In our 01 February 2007 article, it was reported that opposition proceedings had been brought by Mark Richard Jeffery and Guy Anthony (the Opponents), owners of the trade mark "JEFFERY-WEST" mark in Class 25 against Nautical Concept Pte Ltd (the Applicant), who applied to register the mark "jWEST" in Class 25. That article had summarised the decision of the Principal Assistant Registrar (Registrar), who found that the application for "jWEST" was made in bad faith and that "jWEST" was confusingly similar to "JEFFERY-WEST".
The Applicant had subsequently appealed to the High Court against the Registrar’s decision and at the time of the article was written, the hearing had concluded but we were waiting for the appeal decision.
This article is an update on developments in this case and in particular summarises the Applicant’s subsequent High Court appeal against the Registrar’s decision in favour of the Opponents.
At this appeal, the High Court considered two issues:
- Whether the "jWEST" mark was applied for in bad faith (section 7(6)); and
- Whether the marks "JEFFERY-WEST" and "jWEST" are confusingly similar to each other (section 8(2)(b)).
The Judge referred to section 8(6) of the Trade Marks Act (TMA) to determine whether bad faith had existed in this case. Section 8(6) states that in deciding whether an application was made in bad faith, "it shall be relevant to consider whether the applicant had, at the time the application was made, knowledge of, or reason to know of, the earlier mark". Further, once bad faith is established, the Applicant’s mark will not be allowed to proceed further, even if the marks are not confusingly similar.
Upon hearing the arguments and evidence presented, the Judge agreed with the Registrar’s observations and her conclusion that the application was made in bad faith, thus upholding the Registrar's ruling that the Opponents succeeded under section 7(6) of the TMA. The Judge was of the view that the Applicant’s actions were not of the standards of "acceptable commercial behaviour observed by reasonable and experienced men".
Confusing similarity of the marks
The Judge agreed with the Registrar that the mark "jWEST" is "visually different" from "JEFFERY-WEST". However, he disagreed with the Registrar in respect of the aural similarity of the two marks. In this regard, the Judge found that both marks were not confusingly similar to each other and there was no credible evidence to show otherwise.
He went on to add that the average Singaporean was not likely to be confused between the two marks as there were enough differences between "JEFFERY-WEST" and "jWEST", including the price of the respective shoes, which are sold through separate channels.
As such, the Judge overturned the Registrar's finding in ruling that the Opponents failed under section 8(2)(b).
Taking into account the recent case of Rothmans of Pall Mall Limited v. Maycolson International Ltd (the Rothman’s case), once an application is made in bad faith (regardless of whether the respective parties’ marks in question are confusingly similar), the application will be refused registration. Similarly, in this latest case the Opponents have succeeded in preventing the Applicant from registering mark "jWEST" in Singapore, on the basis of bad faith.
The consistent judicial sentiments represented by these two cases serve to re-emphasise the point that in order to avoid an application from being refused due to "bad faith", it is important for an Applicant to bear in mind the test laid out in the Rothman’s case, i.e. to take positive steps to make further enquiries before registering a mark. These enquiries may include trade mark conflict searches or even general Internet searches. In the same case, the Court had ruled that bad faith is "a distinct and independent argument" from the argument of confusing similarity of marks, which meant that a trade mark application would be refused as long as bad faith is established.
At the time this article was written, no further appeal had been filed by either party.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.