By Eloise Wilkes-Barnewall

When big companies perceive the registration of a particular trademark could impose on their trademark protection, and consequently, their brand reputation and market presence, it is not uncommon for them to challenge the application of said threatening trademarks. In December 2021 and January 2022, tech giant ByteDance Ltd (“the Opponent”), owner of the globally recognized social media TikTok, lodged oppositions proceedings against two Singapore trademark applications “Tiki” and “” (“Opposed Marks”) filed by Dol Technology Pte Ltd (“the Applicant”), a Singapore-incorporated company.  

Grounds of Opposition   

The Opponent initiated opposition proceedings against the Opposed Marks on multiple grounds accorded under the Singapore’s Trade Marks Act 1998:  

1. They are the prior owners of marks “TikTok”, “”, and “”, therefore the Opposed Marks should not be registered;
2. Their TikTok word mark is well-known, invoking enhanced protection as a well-known mark under Singapore law;  
3. They claimed that there is a likelihood of confusion between the marks “Tiki” and “TikTok” and therefore the Opposed Marks should be refused registration; and
4. The Opposed Marks amounts to a misrepresentation of its rights and is likely to damage TikTok’s goodwill and therefore should be protected under the laws of passing off. 

Similarity of Marks and Likelihood of Confusion 

The Intellectual Property Office of Singapore (IPOS) found that “Tiki” was dissimilar to “TikTok”.  

1. Visually and conceptually, the overall impressions of the marks were different.
2. Aurally, the similarity was “only to a low extent”.
3. There is no likelihood of confusion, the public is highly unlikely to mistake “Tiki” for “TikTok” and vice versa.

As the Opponent was unsuccessful in satisfying the required threshold for mark similarity, there is no likelihood that the average consumer would be confused as a result of the registration of the Opposed Marks. Therefore, the ground regarding similarity and likelihood of confusion failed.  

Well-known Status  

In Singapore, trademarks can achieve recognition as well-known in two categories: 

1. Well-known in Singapore, or 
2. Well-known to the public at large in Singapore 

To be considered well-known in Singapore, the mark must be well known to any relevant sector of the Singapore public. IPOS determined that the Opponent’s word, device and composite marks were well known in Singapore. This is due to TikTok’s global prominence and extensive media coverage highlighting its status as the world’s most valuable internet start-up, and data showing a significant user base in the country.  

To be deemed well-known to the public at large, the mark must enjoy a higher degree of recognition. This means the mark must be recognised by most sectors of the public. The Opponent’s word mark “TikTok” was found to be well-known to the public at large. However, the TikTok device and composite marks did not meet that threshold and were only well-known within select segments of the population. 

Although all of the Opponent’s marks were found to be well-known in Singapore, and the word mark was found to be well-known to the public at large, this ground of opposition failed. For this ground to have succeeded, it must have been demonstrated that the marks are sufficiently similar and likely to cause confusion. As previously mentioned, IPOS did not find sufficient similarity between the marks, thus ruling out any likelihood of confusion. 

Passing Off and Misrepresentation

The Opponent attempted to invoke surrounding circumstances including the Applicant’s ties to Joyy Inc (operator of Likee), the India related context post TikTok ban, and alleged borrowing of trade dress to support misrepresentation. However, IPOS refused to consider such extraneous materials under Section 8(7)(a), concluding that only factors arising from the mark itself, rather than external circumstances, were relevant in a trademark opposition context. Therefore, this ground of opposition also failed.  

Key Insights 

The Principal Assistant Registrar rejected the oppositions on all grounds, allowing the Opposed Marks to proceed with registration. This dispute highlights the challenges of assessing a trademark’s recognition in relation to a brand’s identity. Currently, only Seiko, Clinique, Nutella, Intel, Gucci, Gmail, and now TikTok have achieved the status of being widely recognized by the Singaporean public at large. Moreover, the case also exemplifies the complexities involved in comparing similarities between competing trademarks. IPOS underscored that even well-known marks must present clear and distinctive features to block similar applications, and that contextual factors cannot override the intrinsic evaluation of the marks themselves. This ruling is a notable precedent for both established brands and emerging players operating in digital and content-driven sectors, particularly in Southeast Asia’s highly competitive landscape.