The uncertain boundaries of trade mark oppositions based on passing off

13 Aug 2024

Introduction
 
One of the grounds for opposing a trade mark in Singapore is that the use of the opposed trade mark is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade (Section 8(7)(a) of the Singapore Trade Marks Act (TMA)) (“the Section 8(7)(a) Ground”). To succeed in proving the tort of passing off, the three elements of goodwill, misrepresentation, and damage to goodwill need to be established.
 
It is trite law that in a passing off claim, the misrepresentation element requires proof that a party’s goods/services will be held out to be the same as or connected with another party’s business, thereby giving rise to confusion, and whether misrepresentation has occurred is to be determined in light of all the circumstances. This would include considering similarities in the packaging and design of the parties’ goods, as in the case of Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) [2016] 4 SLR 86 (“Singsung”).
 
However, it seems unclear what is the extent to which circumstances, which are not related to the similarity of marks or the similarity of goods/services, can be considered when establishing the misrepresentation element in trade mark oppositions under the Section 8(7)(a) Ground.
 
The Tiki Decision
 
In the Intellectual Property Office of Singapore (IPOS)’s decision of Bytedance Ltd v Dol Technology Pte Ltd [2024] SGIPOS 5 (“the Tiki Decision”), the Opponent, Bytedance Ltd, is an internet technology holding company which operates content platforms like the TikTok app. The Applicant, Dol Technology Pte Ltd, is a company which provides Voice Over Internet Protocol services and develops software for interactive digital media like the TIKI app, which is a video-sharing platform.
 
In this opposition, Bytedance relied on its prior registered trade marks: “TikTok”, “” and “” to oppose the “” trade marks in the name of Dol Technology (collectively referred to as “the Application Mark”).
 
One of the grounds of opposition which Bytedance relied on was the Section 8(7)(a) Ground. Under this ground, Bytedance had attempted to rely on the following surrounding circumstances to establish the element of misrepresentation (collectively referred to as “the Surrounding Circumstances”) (at [138]):

1. Bytedance claimed that Joyy Inc (a Chinese company related to Dol Technology) is the proprietor of social media platforms, such as the short-form video sharing platform, Likee, which is similar to Bytedance’s Tiktok platform. Bytedance and Joyy Inc are competitors in the field of video sharing platforms. In particular, they competed in India, which was formerly the largest international market for the TikTok platform.

2. Following a border dispute with China, the Indian government banned 59 Chinese-made apps on 29 June 2020, including both the TikTok and Likee Apps. Shortly thereafter, Dol Technology launched the TIKI App in India in February 2021.

3. Bytedance claimed that the Application Mark, which in use is depicted in yellow (), takes design elements from Bytedance’s news aggregator platform known as TopBuzz (), video-streaming platform known as BuzzVideo () and TikTok platform ().

4. Bytedance claimed that the design of the Application Mark was to create the impression that Dol Technology was economically linked to Bytedance to leverage on the reputation of the TikTok platform and attract the former users of the TikTok App in India to Dol Technology’s new platform.

 
Bytedance argued that (at [139]):

1. It can rely on the Surrounding Circumstances as whether misrepresentation has occurred is to be assessed having regard to all the surrounding circumstances.

2. Citing the Court of Appeal decisions of Singsung and Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] 2 SLR 941 (“Hai Tong”), Bytedance argued that the assessment is not confined to factors which stem from the similarity between the conflicting marks and goods/services.

 
The Registrar did not accept Bytedance’s arguments and highlighted that the Singsung and Hai Tong decisions could be distinguished from the present case as they involved claims of trade mark infringement and passing off, not trade mark oppositions (at [140]). Further, the Singsung and Hai Tong decisions do not seem to support the assertion that any and all circumstances can be considered in a trade mark opposition based on the Section 8(7)(a) Ground (at [140]).
 
Still, the Registrar decided that it was unnecessary for him to decide on what circumstances can be considered in an opposition under the Section 8(7)(a) Ground as the issue “is an important one, and best left to be considered in an appropriate case where full arguments on the issue have been advanced by both parties” (at [141]).
 
Commentary
 
A preliminary point to note is that the Registrar’s view in the Tiki Decision that not any and all circumstances can be considered in an opposition under the Section 8(7)(a) Ground appears to be consistent with the position taken in previous IPOS trade mark opposition decisions, which also involved factors that are not related to the similarity between the conflicting marks and goods/services under the Section 8(7)(a) Ground.
 
For example, in Outschool Inc v ALLSCHOOLS PTE LTD [2023] SGIPOS 12, in trying to establish the misrepresentation element under the Section 8(7)(a) Ground, the Opponent had claimed that the Applicant had plagiarised the Opponent’s “trade dress and content”, as well as other elements of the Applicant’s website/platform and such similarities caused confusion between the parties (at [54]). The Registrar did not consider such evidence as she was of the view that it falls outside the ambit of Section 8(7)(a) (at [55]).
 
In Apple Inc. v Xiaomi Singapore Pte Ltd [2017] SGIPOS 10, in trying to establish the misrepresentation element under the Section 8(7)(a) Ground, the Opponent had claimed that the similarities in the size, product design and user interface of the parties’ tablet devices points towards a likelihood of deception (at [109]). The Registrar did not agree with the Opponent due to the following reasons (at [110] to [111]):

1. The wording of Section 8(7)(a) itself requires that the misrepresentation leading to deception and confusion must thus stem from the use of the mark opposed and not matters which are extraneous to the mark itself, such as the way the goods look or the way the goods are marketed.

2. This is different from an actual passing off action, whereby such factors which are extraneous to the mark itself may be relevant.

3. Citing the High Court in Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2015] 5 SLR 618, the Registrar highlighted that it is fairly well established that in evaluating trade mark oppositions under the Section 8(7)(a) Ground, the court considers whether the normal and fair use of the applicant mark in respect of the goods or services for which the mark is sought to be registered would result in passing off.

 
In all 3 of the abovementioned IPOS trade mark opposition decisions, the Registrar appears to be taking the position that not any and all circumstances should be considered in the assessment of the misrepresentation element for trade mark oppositions under the Section 8(7)(a) Ground. Circumstances which should not be considered can include similarities in the elements of parties’ websites and platforms, as well as the physical appearance of parties’ goods. It remains to be seen whether the Registrar in future IPOS trade mark opposition decisions or, if such an IPOS decision goes on appeal, whether the High Court hearing the appeal, would take a different view.
 
To date, there is no High Court decision in Singapore setting out guidelines or factors which delineates the scope of circumstances which can be considered in the assessment of the misrepresentation element for trade mark oppositions under the Section 8(7)(a) Ground. If an IPOS trade mark opposition decision involving the Section 8(7)(a) Ground goes on appeal, it would be helpful for the courts to provide more guidance which help to clarify the factors which can be considered in an actual passing off action (which is concerned with protecting the attractive force of a trader’s business as a whole that brings in customers) versus a trade mark opposition based on the Section 8(7)(a) Ground (which is also concerned with a trader’s goodwill but with a focus on the trader’s right to the exclusive use of his trade mark, brand or logo). Aside from clarifying the scope of these similar but not identical actions, this would also help reduce the possibility that a party may use a trade mark opposition based on the Section 8(7)(a) Ground before the Registry as a backdoor route to pursuing a passing off action before the courts.
 

• This article was first published on Managing IP website here on 8 August 2024