Abstract:
The wording of s 8(2)(b) of the Trade Marks Act – which sets out the relative ground for refusal of a trade mark application for a mark that is the same or similar to an earlier mark registered in relation to the same or similar goods or services as long as there is a likelihood of confusion – is identical to that in s 27(2)(b) relating to infringement of a trade mark. The wording is taken from ss 5(2) and 10(2) of the UK Trade Marks Act 1994 (which in turn derives from the European Council Trade Marks Directive). The European Court of Justice, in its O2 Holdings Ltd v Hutchison 3G Ltd ([2008] ETMR 55) judgment, drew attention to the important difference in how the identical words should be applied in the application and infringement contexts: in the former, the analysis must assume notional and fair use of the mark by the applicant in relation to all the goods or services in its specification; and in the latter, it should take into account the context of the use by both plaintiff and alleged infringer. This issue arose in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc, and the judge followed earlier Singapore authorities, which decided that the wording should be applied in the same way in both contexts. In this, and a number of other respects, Singapore law now differs markedly from that in the European Union from which its law emanated.