CASE LAW UPDATES
Trade Marks
Mobil appeals decision of Trade Marks Registry
Mobil Petroleum Company Inc v Hyundai Mobis [2008] SGHC 104
This is an appeal by Mobil against the decision of the Trade Marks Registry to allow the registration of the mark “MOBIS” in class 12 by Hyundai Mobis. The issues before the Singapore High Court included:
- Whether the parties' marks and goods were confusingly similar; and
- Whether Mobil could rely on the well known mark status of "MOBIL" to prevent the use of "MOBIS".
The court dismissed Mobil's appeal.
On the issue of confusing similarity, the court cautioned against applying wide categories to goods and reiterated that the test for similarity of goods was from the consumer's viewpoint. In this case, the goods were different to consumers in terms of physical state and type of application, even though they fell in the same category of goods for automobile maintenance and servicing. Since the goods were not similar, the issue of confusion did not arise.
Although the Registry's finding that “MOBIL” was a well known mark was not challenged, the court found that Mobil had not shown that the use of “MOBIS” would indicate the required connection between Hyundai Mobis's goods and Mobil, due to the limited resemblance between the marks and different nature of the goods.
Nevertheless, the court went on to consider the requirement for the well known mark owner to show that its interests are likely to be damaged by the use of the opposed mark. The court disagreed with the Registry's ruling that this could not be shown if the opposed mark was not yet used in Singapore. The Registry's approach was rejected as it would prevent well known mark owners from relying on their well known mark status in opposition proceedings where the opposed mark is not yet used.