Luke, I am your father. Or not?

By Alex Soh

Can you confirm which of the following is the correct spelling for the brands?

i) Kit-Kat vs KitKat
ii) White-Out vs Wite-Out
iii) Febreeze vs Febreze
iv) Fruit Loops vs Froot Loops

One of them might appear more familiar to you than the other, and you are quite likely to get at least one of the above wrong. Here’s why: The wrong recollection is caused by false memories, which may contain elements of fact, closely resembling the actual event witnessed, or may even have it entirely wrong. This phenomenon is known as the “Mandela Effect,” or “collective false memory”.

Even the famous line from Star Wars: The Empire Strikes Back by Darth Vader has been misquoted by a large number of people (perhaps including yourself!). The actual line is simply “No, I am your father”, instead of “Luke, I am your father.”

Side note: The correct spelling for all four trademarks above is the option on the right.

Likelihood of Confusion

Trademark laws have long revolved around the subject of close resemblance, deterring the registration of closely similar marks with the intention to prevent likelihood of confusion among consumers.

In a recent case in Singapore, TMRG Pte Ltd and another v. Caerus Holding Pte Ltd and another [2021] SGHC 163, the Plaintiffs, owners of the “Luke’s Oyster Bar Chop House Travis Masiero Restaurant Group” trademark, accused the Defendants of trademark infringement and passing off, and called for the invalidation of the “Luke’s Lobster” trademarks.

The plaintiffs’ mark contains the words “LUKE’S”, “OYSTER BAR”, “CHOP HOUSE” and “TRAVIS MASIERO RESTAURANT GROUP” properly aligned, and with all capital letters, suggesting a more formal use of the mark. Meanwhile, the defendants’ marks are made up of the word “Luke’s” accompanied with the word “Lobster” and one with the word “LUKE’S” in a lobster device.

The Court rejected the Plaintiffs’ claim that the word “LUKE’S” was the most distinctive component of their mark due to the fact that the word “LUKE” has low distinctiveness, especially when it has been used by various entities in their registered trading names and at the same time, is a commonly used name. The Court criticized the Plaintiffs’ attempt to downplay the remaining elements of their own mark such as the words “OYSTER BAR”, “CHOP HOUSE” and “TRAVIS MASIERO RESTAURANT GROUP” to be disingenuous as the mark had to be evaluated as a whole.

Sparse Use of Registered Mark

The Court also highlighted the inconsistency in the Plaintiffs’ survey as the unregistered mark

“ ” was presented to the interviewees instead of their registered mark. The customer-based filtration method of picking 266 interviewees from a database of 18,000 existing customers of the Plaintiffs also did not represent the relevant cross-section of the public as they were all aware of the Plaintiffs and no prospective clients were interviewed.

The survey carried out by the Plaintiffs did not present photos of the outlets, surroundings, environment, or menu items for both parties, and hence failed to facilitate a like-for-like comparison based on actual market conditions to inform the Court on how both dining experiences are likely to be and most importantly, the likelihood of confusion that may arise from both parties using the name “Luke” in their trademarks. As a result, the Court placed no weight on the survey conducted.

There must be a likelihood of confusion as to the origin of the goods or services in question at the point of purchase in order to satisfy the confusion element. Due to the non-similarity of the marks and the sparse use of the Plaintiffs’ registered mark, the Plaintiffs failed to establish the confusion element.

Menu & Dining Experience

The fact that Plaintiffs’ menu offers food ranging from SGD18.00 to SGD335.00 with an extensive wine list starting from SGD17.00/glass to a bottle of wine that costs a whooping SGD10,380.00 while the Defendants’ 1-page menu offers food and drinks ranging from SGD2.90 to SGD33.50 would automatically remove all possibilities of confusion.

Taking into consideration the fine dining experience offered by the Plaintiffs as compared to the Defendants’ on-the-go sandwich shacks, it would be almost impossible to mistake both parties/trademark as the same restaurant.

Conclusion

The “own name” defence adopted by the 2^nd Defendant was merely the final nail in the coffin for this case. The contributing factors for the failure of the Plaintiffs’ claim are:

Using a common name as trademark;
Sparse use of the registered mark; and
Not registering all variations of the trademark.

The restaurant ruckus above could have been avoided had the Plaintiffs sought advice from Intellectual Property experts on how best to protect and enforce their trademarks over the course of building their restaurant empire. If you’re in the F&B industry and need help in this area, drop us a line at kass@kass.asia!

Author
Recent Posts

KASS

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.