By Thein Thein Win 

Nowadays, people like to demonstrate their uniqueness among others in their everyday lives. Likewise, in a business landscape akin to a red ocean, trademark owners also desire their trademarks to be of a distinctive nature, so they are in the blue ocean. But can trademark owners who use partially distinctive and common English terms in their marks have the exclusive right to apply and use them as their own?

Recently, a trademark application filed by BENQ MATERIALS CORP. (“the Applicant”) was opposed to by CLARINS FRAGRANCE GROUP F.K.A. THIERRY MUGLER PARFUMS S.A.S (“the Opponent”), owner of the prior trademark “ANGEL”, which is registered in Singapore in Class 3. The Opponent is in the fragrance business on a global scale, and has widely advertised with a female celebrity (who personifies the “ANGEL”) and the “THIERRY MUGLER” signature trademark outside of Singapore through various avenues. Among the Opponent’s fragrances is a line, or range, of perfumes that bear the trademark “ANGEL”.

The Applicant is a company based in Taiwan which is involved in various fields of business, including the manufacture and sale of healthcare and personal care products such as facial care products. In late 2014, the Applicant engaged a third-party brand strategist to assist it in developing a brand name and strategy for its new line of skin care products sold under the trademark  (Derma Angel), which the Applicant applied to register in Singapore under Class 3.

The Opponent subsequently filed to oppose the application mark, asserting that the Applicant had taken the whole of its mark, “ANGEL”, and incorporated it into its own. The Applicant defended that one cannot simply disregard the first word “derma” as well as the ” ” element in its trade mark. When the marks are compared as wholes, they are dissimilar.

“ANGEL” is actually an ordinary English word and has a normal or medium level of distinctiveness in nature. But, “ANGEL” is not descriptive of the goods or the nature of the goods (perfumes or how the perfume smells like). Submission of evidence from the part of the Opponent’s was not strong enough to reflect actual sales in Singapore. There is no evidence that the invoices and any of this advertising were ever directed towards the public in Singapore. The Opponent’s advertising abroad, especially through the internet, and its impact is likely to have been limited.

There is no similarity between the application mark and the Opponent’s mark such that a relevant segment of the public will be deceived into thinking that the Applicant’s goods are, or emanate from, a source that is linked to the Opponent’s.

In this case, we can gather that “ANGEL” has no distinctiveness through use. “ANGEL” does not appear to have been marketed and used without the signature ““. There was no doubt that the Opponent’s mark has an ordinary meaning as a heavenly or spiritual, supernatural being, and the Applicant’s mark, on the other hand, has no sensible meaning. Hence, these competing marks are visually, aurally, and conceptually dissimilar. This case shows that when the brand name of the goods/services consists of common English terms and there is no evidence that marketing has brought it considerable recognition nor any evidence of use by the local customers in the registered country, the owner of the mark/s may have no right to oppose others who register similar marks as there is no likelihood of confusion arising in it.

Note: The trademarks identified in this article belong to their respective owners. KASS does not claim any proprietary right whatsoever; they are used solely for educational purposes.