[K]ONFUSED with KIKO and KEICHO?

By Geetha Kandiah

“I’m a big believer in that if you focus on good skin care, you won’t really need a lot of make-up” Demi Moore once said. It is not surprising that the global value sales in the beauty industry is expected to exceed US$131 billion in 2019, with skin care as the biggest category adding some US$20.1 billion to its value over 2014- 2019*.

Thus, when one skincare company felt that their market share is being encroached upon, it is only right to do what is necessary – to squeeze out that pimple! This is what happened in Singapore when an Italian entity, KIKO S.P.A (“Opponent”) initiated an opposition action against a Korean company, Dooyeon Corp. (“Applicant”).

The Opponent who owned the registered mark “KIKO” in Singapore since 2011 for soaps, perfumery, essential oils, hair lotions and dentifrices, opposed the mark “ ” which was filed by the Applicant in 2014 for eyebrow pencils, lip liner, mascara, make-up foundations, hair colorants, cosmetic preparations for baths, body lotions, bath lotions, shower gels, skin lotions, eyeliner, eye creams, face and body lotions, perfumes, hair gel, hair spray, make-up powder, and make-up removing lotions.

The Applicants had evidence of using their mark in Singapore at least since 2013 whereas the Opponents’ evidence had no information regarding use of their mark in Singapore. Nonetheless, the ground relied on by the Opponent did not rely on the use of the marks in Singapore. Instead, the opposition was based on the ground that the Applicant’s mark should not be registered in Singapore because it is similar to an earlier trademark, used on identical or similar products and there exists a likelihood of confusion on the part of the public.

The well-established three-steps test was used to determine whether the ground for opposition succeeded; (i) were the marks similar; (ii) were the products similar and (iii) due to the similarity of the marks and products, there exists a likelihood of confusion on the part of the public.

The Registrar in IPOS, compared the marks as a whole, and assessed it visually, aurally and conceptually. Despite that both marks begin with “KI” and end with “O”, the marks were found to be visually dissimilar due to the device element “ ” in the Applicant’s mark which was held to be equally dominant with the word mark “KICHO”.

The Registrar stated that the similarity in certain letters (“KI” and “O”) is readily outweighed by the dominance of the device element “ ”.

On the aural similarity front, the Opponent brought forth an interesting argument with regards to the manner in which the letters “CHO” in the Applicants’ mark is pronounced. They stated that the suffix may be pronounced as “KO” or that the “CH” may be pronounced as “K”. Opponents relied on a list of 285 English words in which “CH” is pronounced as “K”. Among the examples adduced were “anchor”, “character”, “epoch” and “technology”.

However, the Opponents, when asked at the hearing whether they could point out any word in the English language which contains both “ch” and “k” and where the “ch” is pronounced as “k”, they were unable to find such words. This possibly means that there are no English words with a “k” pronounced as “k” and a “ch” also pronounced as “k” in the same word. What an interesting English lesson this became! The Applicant’s position was that the relevant test is how the average consumer in Singapore would pronounce the words involved and Singaporeans would instinctively refer to common words such as “poncho” and “macho” when pronouncing the Applicant’s mark. The Registrar eventually found that the Applicant’s mark is “marginally aurally” similar to the Opponent’s mark.

The conceptual comparison was easily established as both marks were meaningless and there were precedents to follow in Singapore where when two marks are meaningless, there is no conceptual similarity.

On the whole, the Registrar established there was no similarity between the marks and moved on to assess similarity of the products. Here, the Registrar found the products similar as they “were generally in the nature of cosmetics and hair products in Class 3.”

With regards to the final limb of the three steps analysis, the Registrar found that there was no likelihood of confusion due to the marks being found dissimilar and customers being more discriminating and attentive when selecting cosmetic and beauty products which are suitable for them.

The Applicants’ mark “ ” was allowed to proceed to registration in Singapore. The outcome of this opposition case in Singapore is a reiteration to brand owners that marks with devices/logos are more distinctive in nature than mere word marks. In the event the marks in dispute were “KICHO” and “KIKO”, the outcome of this case may have been different.

* Source: Euromonitor International, which publishes the world’s most comprehensive market research on the skin care industry

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Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.