CASE LAW UPDATES
Colgate succeeds in defending opposition against its "toothpaste slug" trade mark
Colgate-Palmolive Company v The Proctor & Gamble Company [2007] SGIPOS 13
Colgate has succeeded in defending an opposition initiated by Proctor & Gamble before the Intellectual Property Office Singapore ("IPOS"). Colgate had applied for registration of a drawing of a "toothpaste slug" that had been limited to the colours green, white and blue intended for use on "dentifrices". Proctor & Gamble opposed Colgate’s trade mark and even submitted trade evidence to support its contention that the use of striped toothpaste slug devices was a common practice among toothpaste manufacturers.
Colgate argued that devices of "slugs" of toothpaste on toothbrushes (with colour limitations, as was the case with its trade mark) are already registered in Singapore. Colgate further argued that the use of such devices with distinctive colours is an accepted trade practice. Hence, the average consumer would have been exposed to this practice. Consequently, they would know that toothpaste manufacturers do employ such devices as indicators of origin to distinguish their goods from those of their competitors.
IPOS concluded that Colgate’s "toothpaste slug" could function as a trade mark and allowed it to proceed to registration. Colgate’s mark was even more stylised than the examples of toothpaste "slugs" already registered and it had also been limited to specific colours. As such, it did not convey the immediate idea of a device of a toothpaste nor convey any specific meaning at first glance.
IPOS decides that "LOLANE" and "ORLANE" are not similar
Seri Somboonsakdikul v Orlane S.A. [2008] SGIPOS 5
Seri Somboonsakdikul ("Seri") filed an application to register the mark "LOLANE" for, among others, soaps, shampoos, various hair and skin products, and deodorants. Seri claimed to have used the mark in Singapore since 2001.
Orlane S.A. ("Orlane") is the registered proprietor of two earlier marks in Singapore. These are "ORLANE" for, among others, perfumes, toilet articles for beautifying, lotion for the hair, and dentifrices and "B21 BIO ENERGIC ORLANE" for, among others, soaps, perfumery, essential oils, and cosmetics. Both marks are registered in Class 3. The former has been registered since 17 March 1972 whereas the latter since 16 January 1985.
Orlane opposed Seri’s trade mark application for "LOLANE" on the basis that it was confusingly similar to their earlier registrations. "LOLANE" and "ORLANE" both have an identical suffix "LANE". The marks also shared similar prefixes "LO" and "OR" with a common vowel sound "O" and have the same number of letters and syllables.
Orlane contended that its earlier marks are well known in Singapore. As such, use of "LOLANE" on the goods claimed would indicate a connection with Orlane’s goods which would cause confusion and Orlane’s interests would be damaged as a result. Orlane further argued that Seri was not the bona fide proprietor of the "LOLONE" mark and were taking unfair advantage of its reputation and goodwill in the "ORLANE" trade marks.
Seri argued that the marks were neither visually, aurally nor conceptually similar. Further, the prefix "LOL" is the most important part of a mark and the marks could be distinguished by their prefixes. There were also other marks on the Register in Class 3 bearing the "LANE" suffix. The goods in themselves were priced differently and there were also distinct differences in the market targeted.
IPOS was not satisfied that use of "LOLANE" would cause confusion in the minds of the public. IPOS concluded that "LOLANE" and "ORLANE" are neither conceptually nor aurally similar. There was only a slight similarity in the visual appearance of the marks. Moreover, the public are likely to be discerning as the goods are beauty and cosmetic products which would be on display in major shopping areas. Consumers therefore would be able to inspect the goods before making a purchase. Orlane also failed to establish that "ORLANE" is a well known trade mark in Singapore. IPOS did not find any evidence of bad faith on the part of Seri. The opposition therefore failed and "LOLANE" was allowed to proceed to registration.
LEGAL DEVELOPMENTS
Ghana, Sao Tome and Principe join Madrid Protocol
The following countries have acceded to the Madrid Protocol:-
- Ghana on 16 September 2008; and
- Sao Tome and Principe on 8 December 2008.
Interested applicants can now obtain protection of their mark in these countries by filing a subsequent designation with extension to these countries or by designating these countries as one of the countries under their Madrid Protocol application.
The accession of Ghana, Sao Tome and Principe to the Protocol brings the number of Contracting Parties of the Protocol to 77.
Bosnia and Herzegovina will also be joining the Protocol on 27 January 2009
An overview of the Patents (Amendment) Act 2008
The Patents Act was recently amended to give effect to a Protocol adopted by the World Trade Organisation ("WTO") to amend article 31 of the Trade-Related Aspects of Intellectual Property Rights Agreement ("TRIPS Agreement") and clarify the application of the Competition Act to certain agreements.
The Patents (Amendment) Bill 2008 was passed in Parliament on 25 August 2008 and the Patents (Amendment) Act 2008 (the "2008 amendments") came into force on 1 December 2008.
Generally, the 2008 amendments fall into two categories: the "TRIPS Amendments" and the "Competition Amendments".
The TRIPS Amendments seek to provide Singapore with greater access to patented pharmaceutical products in times of national emergencies.
Article 31 of the TRIPS Agreement covers the use of a patent by third parties without the authorisation of the rights holder. Under this article, WTO member countries are authorised to issue compulsory licences for producing patented pharmaceutical products predominantly to supply their respective domestic market to address urgent public health problems. Under these circumstances, there are restrictions on the volume of products allowable for export. This is a concern for WTO member countries with insufficient or no pharmaceutical manufacturing capacity. Such countries would be unable to make effective use of article 31 and the supplies of reasonably priced patented pharmaceutical products they can import from member countries who do have sufficient manufacturing capacity would be limited.
To address this issue, the WTO General Council, in 2003, established a "waiver" to the export limitation under article 31, making it easier for member countries without sufficient manufacturing capacity to import patented pharmaceutical products manufactured under compulsory licensing. Subsequently, in 2005, the Council approved a Protocol to amend the TRIPS Agreement to replace the "waiver".
In order for Singapore to have greater access to medicines in times of national emergencies, the Patents Act was amended to give effect to the Protocol. Consequently, sections 2, 56, 60, 62 and 66 of the Patents Act were amended to reflect the changes proposed by the Protocol. Specifically, the TRIPS Amendments only provide for the situation where Singapore is acting as an "eligible importing member" in response to a national emergency or other circumstances of extreme urgency.
Section 56 presently allows the Government or any authorised party to use a patented invention without infringing the patent under certain circumstances. These include a public non-commercial purpose or a national emergency. Section 56 has been amended to include the import of patented pharmaceutical products should the required notification be given to the TRIPS Council.
Further, to prevent abuse of the right to import patented pharmaceutical products manufactured under compulsory licence for commercial profit, and to ensure that the patentees are remunerated for the use of their patents, sections 60, 62 and 66 have been amended. The amended section 60 prohibits the re-export of patented pharmaceutical products imported into Singapore under the TRIPS Agreement. The amended section 66 prohibits the parallel importation of patented pharmaceutical products produced under compulsory licence for another country. Finally, the amended section 62 provides that no remuneration shall be payable to patentees if they have already received or will receive remuneration for the use of their patents.
The Competition Amendments provide businesses greater flexibility in structuring new commercial agreements where competition law regulates such agreements.
Before the amendments, the Patents Act presumed that certain types of agreements that involved patented inventions where inherently anti-competitive. For example, under section 51, agreements that require the licensee to procure something else in addition to the patented product from the patentee are void. This was based on the assumption that such provisions enable a patentee to unfairly extend his monopoly over another product unrelated to the patented one. Under section 52, a party may terminate an agreement that requires a patent licensee to continue to pay royalties after the patent has expired.
However, these agreements may not always be anti-competitive. For instance, agreements that require a patent licensee to pay royalties even after the expiry of the patent may not amount to an abuse by the patentee because the licensee may wish to spread out royalty payments for cash-flow reasons.
Since the enactment of the Competition Act in 2005, agreements referred to in sections 51 and 52 of the Patents Act may be appropriately dealt with under the Competition Act. Thus, the Competition Amendments introduced a new section 50A in the Patents Act to restrict the application of sections 51 and 52 only to those agreements made before the commencement of the new section 50A. Agreements made after such commencement would have to comply with the Competition Act.