In a recent trade mark decision the Intellectual Property
Office of Singapore, has rejected Starbucks' case against
Japanese dairy producer Morinaga Milk and its Mt Rainier trade
Starbucks Corporation ("the opponent") opposed Morinaga
Nyugyo Kabushiki Kaisha's ("the applicant") trade mark
application for its Mt Rainier Mark for goods in classes 29 and
30 including, among others, milk beverages, coffee, and coffee
beverages" ("Mt. Rainier Mark"). The opponent argued the Mt.
Rainier Mark was similar to the opponent's well-known "Mermaid
Mark". A judgment was made in favour of the applicant.
In Japan, the applicant is a well-known manufacturer of
coffee and coffee-based beverage products and has been selling
such beverages using the Mt. Rainier Mark for more than 20
years. The opponent is one of the largest sellers of coffee
products in the world and its Mermaid Mark has been used
extensively in Singapore and in numerous countries.
In the opposition, four arguments were made:
The opponent argued the Mt. Rainier Mark was similar to the
opponent's well-known green-and-white Mermaid Mark and thus
under Sections 8(2) (b) and 8(4) (b) of the Singapore Trade
Mark Act the Mt. Rainier Mark should not be registered.
In particular, the opponent made arguments that the
green-black-white colour scheme and the layout of the
respective trade marks within concentric circles resulted in an
overall similarity between the marks.
While the IP Office of Singapore Adjudicator did acknowledge
these similarities existed between the marks, it was found that
the most prominent elements making up the respective marks were
the words "Starbucks" and the "Mermaid Device" for the Mermaid
Mark; and the words "Mt. Rainier"/"The Mountains Of Seattle"
along with the picture of a "Mountain Range Device" for the Mt.
Rainier Mark. It was found that these prominent textual and
figurative elements were significantly different and as such
the two respective marks as a whole were not similar.
2) Passing off
In addition, the opponent argued the grounds of passing off
under Section 8(7) (a) of the Singapore Trade Mark Act.
The IP Adjudicator found the colour make-up of the
opponent's concentric circle element lacked – by
itself – source identifier qualities. Rather, it was
again found the most prominent elements making up the
respective marks were the word "Starbucks" and the "Mermaid
Device" for the Mermaid Mark and the words "Mt. Rainier"/"The
Mountains Of Seattle" along with the picture of a "Mountain
Range Device" for the Mt. Rainier Mark. And, it was found that
these prominent textual and figurative elements were
significantly different and as such no misrepresentation in the
nature of passing off would occur.
3) Misrepresentation as to geographical origin
Next, the opponent argued the applicant's mark was designed
in such a manner that it would mislead consumers as to the
geographical origin of the goods in violation of Section 7(4)
(b) of the Singapore Trade Mark Act.
Here, the opponent argued the Mt. Rainier Mark would deceive
consumers into believing the applicant's products were
manufactured in Seattle when that was not the case.
For a finding of deception as to geographical origin, the IP
Adjudicator found there needed to be clear evidence such
deception would occur. The IP Adjudicator did not believe such
clear evidence was present. Rather, the IP Adjudicator found
the geographical reference was to "Mt. Rainier" and not to
"Seattle." That is, the IP Adjudicator found the use of "Mt.
Rainier", in combination with the phrase "The Mountain of
Seattle," created geographical significance to Mt. Rainier as
opposed to Seattle.
Further, since there was no evidence in the record to show
Mt. Rainier has a reputation associated with coffee or coffee
beverages of any kind, it was found that Singaporean consumers
would see the reference to "Mt. Rainier" as a fanciful
reference and not as an attempt to create a deceptive statement
4) Bad faith
Finally, the opponent argued the applicant's application was
filed in bad faith under Section 7(6) of the Singapore Trade
Mark Act and thus the Morinaga Mark should not be
Here, the opponent argued that filing the mark with a
reference to Mt. Rainier was a commercially unacceptable
practice in that Mt. Rainier is a culturally important
landmark. The IP Adjudicator didn't agree with this line of
argument and thus the bad faith argument was rejected as
In summary, the opposition failed on all grounds and the
applicant's mark will proceed to registration.
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