A trademark applicant in Singapore sought to register the mark “5-STAR EHS” under Classes 42 and 45 but was turned down by the IP Office of Singapore (IPOS) on grounds that the mark lacked distinctiveness and was rather descriptive of the applicant’s services, in a decision dated 4 October 2010. The applicant was in the business of providing advice and research on matters concerning the environment, health and safety of buildings.

IPOS found that the phrase “5-STAR” was synonymous with quality and that the letters “EHS” was a common abbreviation used for “environment, health and safety” in the applicant’s trade.

One of the points of contention by the applicant to salvage their application was that the phrase “5-STAR” was not commonly used in their industry and was rather a common phrase used by the hotel and restaurant industry. This argument triggered further examination and research on the internet by the Registrar at IPOS, who subsequently discovered that there were similar services being offered in the applicant’s industry that did in fact use the word “5-STAR”. Therefore the term “5-STAR” was not deemed to be uncommon in the industry.

Even once the mark had been considered as a whole, IPOS still found that the mark lacked distinctiveness. On this basis, IPOS disregarded the applicant’s willingness to disclaim the words “5-STAR” and “EHS” separately.

Interestingly, in this case the applicant cited several marks registered in Singapore and the United Kingdom that contained the words “5 STAR” or “FIVE STAR” and this means that although the words denote “quality”, the words were still registrable. Unfortunately, this argument did not weigh much in favour of the applicant as IPOS assessed the examples shown by the applicant and found that the registered marks were made distinctive with stylization or a device and the marks that were not stylised were in a class for “goods” and not “services” (Class 3). Following this case-by-case analysis, IPOS was of the opinion that the registered marks were irrelevant in deciding the fate of the Applicant’s mark.

Another deciding factor that IPOS took into consideration was that the applicant’s market share was limited; the said mark was not extensively promoted and only limited to a fraction of clients in the five years of its use. IPOS only took promotional activities before the date of the application for registration while deciding on the matter since the Applicant needed to show prior use of the said mark.

Having considered the lack of inherent and acquired distinctiveness in the “5-Star EHS” mark, the registration of the said mark was finally refused.

This refusal in Singapore teaches many business owners about the importance of selecting a strong trademark – one that is meaningless, coined or arbitrary. At KASS, we use the graph below to advice clients on the strength of their trademark. Where does your trademark stand in the graph – on the strong end or the weak end?