Trademark opposition arises in the jurisdiction of Singapore during the trademark registration process, revolving around the trademark name ‘REALITY ENGINE.’ The marks are not only identical in class but also share the same mark name between the two parties. This case study explores the opposition between the applicant, Nobel Brands USA LLC, and the opponent, ZERODENSITY YAZILIM ANONIM SIRKETI, grounded in the claim of passing off.
Nobel Brands USA LLC, the applicant, applied for trademark registration for “REALITY ENGINE” in class 9 on September 7, 2019, claiming a priority date of March 7, 2019. The opponent, ZERODENSITY YAZILIM ANONIM SIRKETI, filed the opposition on July 20, 2020, citing passing off as grounds. The opponent bears the burden of presenting undisputed proof. For a passing-off claim to succeed, three elements must be established: Good Will, Misrepresentation, and Damage.
Key Takeaways
- Goodwill is Key to Trademark Opposition – In Singapore, proof of goodwill, misrepresentation, and damage is crucial to succeeding in passing-off claims.
- Prior Use Outweighs Registration – Even without formal trademark registration, established use and reputation in the market can block a later applicant.
- Misrepresentation Risks Brand Damage – Using a confusingly similar mark can harm the goodwill and reputation built by existing brands.
- Early Trademark Registration is Critical – To avoid costly legal battles, securing trademark rights before entering a new market is highly recommended.
Trademark Protection Starts Here.
The applicant, incorporated under Delaware law on September 4, 2019, is still in the developmental stage for its goods. These goods, intended for software products directly sold to consumers and developers, aim to facilitate the prototyping and production of high-quality augmented reality (AR) experiences.
The opponent, established in 2014 under Turkish law, provides a broadcasting compositing system under the sign “Reality Engine,” catering to broadcasting, AR, live events, and e-sports. Partnered with Cgangs International Pte. Ltd since 2018, the opponent has proven the use of the mark in Singapore through an invoice dated November 28, 2018. Goodwill is established as of the date when the acts complained of were carried out.
The opponent’s “Reality Engine” software and related services have acquired addictiveness, and the applicant cannot prove the differentiation of goods and services between the parties. This misrepresentation to the public, especially the consumers of software goods seeking VR or AR experiences and visual effects, poses a significant concern.
With the emergence of goodwill and misrepresentation of the opponent’s mark, there is potential damage to the opponent’s reputation due to a confusingly similar mark being sold in the market. As a result, the court decided to deny the registration of the applicant under the law of passing off. Furthermore, the court awarded the opponent the sum of S$5,511.65 (inclusive of disbursements).
Trademark oppositions based on passing off underscore the importance of brand goodwill in the relevant market. This case study demonstrates that whether the mark is registered or not in a specific jurisdiction, opposition can proceed based on the use of the mark in that jurisdiction and its associated goodwill. However, defining and proving goodwill is challenging and can vary in each jurisdiction. Thus, registering the trademark before using it in the desired country is recommended.