Case Study: Why did Valentino’s opposition fail?

Step-by-step account of Valentino S.P.A v. Matsuda& Co. (2020)

Background:
The case before the Singapore IP Court concerned an opposition by a VALENTINO S.P.A (“the Opponent”) against Matsuda & Co (“the Applicant”) for marks which contain the word “VALENTINO”. It is well-established that “VALENTINO” is a relatively common name (Valentino Globe BC v Pacific Rim Industries [2010] SGCA 14 at [49]).

As pointed out by the IP Adjudicator, “[w]here a business chooses as its trade mark (or one of its trade marks) a name, whether a given name, a surname or a combination of the two, that choice comes with a risk: that others may be able to use it (or them) in good faith without impinging upon the trade mark owner’s rights.”

While the Opponent cited thirty-three earlier marks in support of the opposition, it largely relied on the three marks below and primarily the third mark that is identified as the “Opponent’s Composite Mark”. The disputed marks are as set out below and relate to, inter alia, leather goods in Class 18 and clothing in Class 25.

The Opponent raised the following grounds in opposition:

  1. Confusing similarity under Section 8(2)(b) and Section 8(4) of the Trade Marks Act (“the Act”);
    and
  2. Passing off under Section 8(7)(a) of the Act.

The IP adjudicator considered and dismissed both grounds for the reasons below:

  1. Confusing similarity under Section 8(2)(b) and Section 8(4) of the ActThe IP adjudicator applied the 3-step test in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911(“Staywell”): the first step being a determination as to whether the Applicant’s and Opponent’s marks are similar; if not, the enquiry ends there but if so, the second step is to determine if the goods and/or services are identical or similar; if not, again the enquiry ends there but if so, the third step is to determine whether as a result of the similarity found in relation to the first two steps there “exists a likelihood of confusion on the part of the public”. He also emphasized that when applying the test, it must be borne in mind that average consumers of the relevant goods/services are unlikely to have the opportunity to compare the Applicant’s and Opponent’s marks side-by-side and therefore have an imperfect recollection.

    The IP adjudicator compared the Applicant’s Mark and the Opponent’s Composite Mark and concluded that the marks as a whole were more dissimilar than similar visually. He also appraised the overall aural similarity to be neutral and the Applicant’s Mark and the Opponent’s Composite Mark to be more conceptually dissimilar than similar.

    For the above reasons, the IP adjudicator found that the other two of the Opponent’s marks are even more dissimilar than similar to the Applicant’s Mark and the Opponent’s Composite Mark. As the first element of the Staywell test was not made out, he did not proceed to consider the other elements under Section 8(2)(b) and Section 8(4) of the Act.

  2. Passing off under Section 8(7)(a) of the ActTo succeed in a passing-off action, a plaintiff must prove three elements: (a) ownership of goodwill, (b) misrepresentation by the defendant leading to deception, and (c) damage (The Audience Motivation Company Asia Pte Ltd v AMC Live Group China [2016] SGCA 25 at [80]).

    As the Opponent owns many retail shops in Singapore and provided proof of extensive advertising, the IP adjudicator found that the Opponent had goodwill in its business in Singapore under the first element. However, as the Opponent’s Marks were found to be dissimilar under Section 8(2)(b), he concluded the use of the Applicant’s Mark did not constitute misrepresentation as it is dissimilar to the Opponent’s Marks and therefore the Opponent’s relationship with its customers is not harmed. Therefore, there was no passing off of the Opponent’s Marks under Section 8(7)(a) of the Act.

Result:
The opposition thus failed on all grounds and the application is allowed to proceed to registration.

Hearing Officer: David Llewelyn (IP Adjudicator)