For most business owners, building a strong brand reputation would be desirable. One may even be tempted into thinking that brand reputation translates to brand monopoly. However, paradoxically, a strong mark reputation can sometimes adversely impact brand enforcement efforts against third-party marks (e.g. in infringement or opposition proceedings). 

How should brand owners approach the issue of reputation as a part of their overall trade mark strategy? We unpack the interplay between reputation and trade mark laws with reference to several recent decisions, and distil some practical takeaways for brand owners. 

Background

The concept of a trade mark’s reputation generally refers to the level of fame the trade mark has garnered amongst the public. To lay some groundwork, it is helpful to appreciate the relevance and importance of mark reputation within the legal assessment framework. 

Generally, a mark can be prevented from registration or use in commerce where it is confusingly similar with an earlier trade mark. To be exact, for a mark to be refused registration or for infringement to occur under the relevant legislative provisions, three conjunctive elements must be established and in a “step-by-step” manner: (a) marks-similarity; (b) goods/services-similarity; and (c) a likelihood of confusion arising from these two similarities. Local caselaw has generally come to a consensus that the issue of the earlier trade mark’s reputation is an extraneous factor which comes into consideration only at step (c), and after steps (a) and (b) have been established. 

Effect of reputation on likelihood of confusion

How does reputation affect the likelihood of confusion assessment? The exact impact of a mark’s reputation depends on the specific facts of a case. In the sections which follows, we review two groups of trade mark opposition cases where mark reputation took on two different roles.

Cases where mark reputation reduced likelihood of confusion

A line of logical deduction that has found favour with the Registry and Courts in several recent decisions is that the more average consumers are familiar with a mark, the better their recollection of that mark would be, and they would therefore be more aware as to the differences in another mark. The following cases illustrate this.

In Discovery Communications v A-STAR-Education Discovery Camps [2020] SGIPOS 4, the owners of The Discovery Channel opposed the registration of “”. The opposition relied on, inter alia, the ground that the application mark conflicted with, in the main, the opponent’s earlier registered mark “”. In deciding that the opposition failed, the principal assistant registrar (“PAR”) found that the opponent’s strong reputation had an effect contrary to the likelihood of confusion. The PAR noted that the Discovery Channel television programme has been airing in Singapore since 1995 and found that through this period of long use, the opponent had built up a strong reputation in its “” mark and for producing quality content for television. As such, most households with a television would be inevitably exposed to the “” mark with its distinctive feature of a D-plus-globe device, and be less likely to confuse the two competing marks. 

Most recently, in Apple v Penta Security [2024] SGIPOS 10 the US-based tech giant, Apple, sought to prevent the registration of “” on the basis that it conflicted in the main with its prior registration for “APPLE”. Apple ultimately failed in its opposition as the marks were found to be dissimilar and, in any event, there was no likelihood of confusion. On the effects of reputation, the hearing officer noted that if the opponent’s “APPLE” mark enjoyed a strong reputation in Singapore, likelihood of confusion with “” would be lowered. This was particularly so in light of how the “APPLE” mark had thus far only been used alone or combined with another word such as “APPLE TV” and “APPLE MUSIC”, but never in a different spelling or the plural form “APPLES”. 

Cases where mark reputation increased likelihood of confusion

Contrary to the cases discussed above, likelihood of confusion was established in V V Technology v Twitter [2023] 5 SLR 513. In this case, Twitter opposed the registration of “” on the ground, inter alia, that it conflicted with Twitter’s prior mark “”. Twitter was successful both at first instance and on appeal to the High Court. The High Court made two interesting and contrasting findings regarding the earlier mark’s reputation: 

• The Court agreed that in this particular case, the reputation of Twitter’s earlier trade mark reduced the likelihood of confusion, as the average consumer would be more discerning of the details that comprise the reputable mark. 
• However, the Court also found that the reputation of Twitter’s earlier trade mark could also lead to a perception of an economic link between the competing marks. The Court affirmed the PAR’s finding in the first instance decision that, because of the reputation of Twitter’s mark, average consumers are likely to associate a bird device with Twitter and thereby perceive the application mark as either a new iteration or modified version of the “” mark. Since the concept of likelihood of confusion extends to indirect confusion – i.e. where the relevant segment of the public believes that the goods/services bearing the two marks come from the same trade source or that there is some economic link or association between them – these findings were crucial in allowing Twitter to succeed in the confusion inquiry.

Amazon Technologies v Survivalverse [2024] SGIPOS 6 was another successful opposition initiated by a big tech company, Amazon, to prevent the registration of the following mark: 

Amazon had submitted that the application mark conflicted with its earlier mark “AMAZON”. Although the PAR in this case had found that likelihood of confusion could be made out based on other reasons alone, it noted that a persuasive case can be made that, as a result of Amazon’s trading activities and advertisements, average consumers would regard the plain word “AMAZON” as being distinctive of the opponent in relation to a wide range of goods and services and thereby increase thelikelihood of confusion.

Reliance on laws protecting well known marks?

The role of mark reputation is not limited to opposition/infringement on the ground of ‘conflict with similar earlier trade mark’.  Brand owners of reputable marks could have another string to their bow - laws which protect ‘well known marks’ may, depending on the overall factual matrix, lend significant assistance if the mark concerned is ‘well known to the public at large’. 

To elaborate, there are generally two tiers of ‘well known marks’ under Singapore law:

• The first tier comprises marks which are only known by a relevant sector of the public in Singapore - such marks are termed ‘well known marks’ (without more). The owner of a ‘well known mark’ may only prevent the use of an identical/similar later mark on goods/services which would indicate a connection with it. Since local caselaw has generally established that for any given use to “indicate a connection” there must exist a likelihood of confusion, there is not much strategic advantage to be gained here if the 'well known mark’ has already been registered.  This is because the brand owner would probably face similar hurdles as that under a putative ‘conflict with similar earlier trade mark’ argument - including any dispelling of confusion brought about by the mark’s reputation. 
• Then there is the second tier of marks which have the coveted status of ‘well known to the public at large’ - generally, they would have attained a high degree of recognition by most sectors of the public in Singapore. For such marks, alternative pathways to succeed in the opposition/infringement may open because the owner would be entitled to rely on grounds which donot require likelihood of confusion (nor goods/services similarity, for that matter) to be established. Rather, the brand owner can prevent the use of an identical/similar later mark so long as it: (i) causes dilution in an unfair manner to the distinctive character of, or (ii) takes unfair advantage of, the mark that is ‘well known to the public at large’.

Conclusion - lessons for brand owners

We distil some practical takeaways from the above discussion:

• Brand owners may want to be mindful that merely acquiring a strong reputation does not automatically lead to successfully establishing a likelihood of confusion vis a vis a similar, later trade mark. The success of a mark must surely be the dream from a sales/marketing perspective but, from a legal perspective, it could be the very thing which dispels confusion. 
• That said, much depends on the precise facts of the case. The Twitter case demonstrates that in appropriate circumstances, such as where the incumbent mark’s reputation extended to a common element or concept shared by the competing marks, reputation can shore up likelihood of confusion. 
• Given that the trajectory of caselaw appears to suggest that establishing confusion vis a vis reputable brands may (but not always) be challenging, one alternative strategy for the owner of a mark which has already garnered some reputation could be to embrace all of that reputation and rely on non-confusion-based grounds, i.e. that which prevent dilution in an unfair manner and/or unfair advantage. Of course, the brand owner would then have to contend with a whole host of separate issues, such as proving that its mark is ‘well known to the public at large’ and that there was dilution or unfair advantage taken.
• Brand owners may also want to consider proactively diversifying the ways in which its core marks are being used to avoid being boxed-in to a certain identifier, spelling or combination of words. For example, in the Twitter case, the fact of Twitter’s regular rebrands reinforced Twitter’s argument that traders in the tech space tend to diversify trade marks as part of their business, making it more plausible for indirect confusion to occur in that particular case. To this extent, having a cadence for ‘visual rebrands’ or ‘facelifts’ could be helpful in the confusion inquiry. This strategy must of course be balanced against practical considerations such as potentially increased costs of brand protection and/or marketing; dealing with the legal implications of non-use of an earlier mark/brand iteration; and practical difficulties of balancing between using various mark iterations and maintaining a coherent brand identity.

With special thanks to Lorraine Anne Tay and Gene Kwek for their guidance and comments.