In this rather interesting opposition proceeding, the Applicant, Staywell Hospitality Group Pty Ltd had applied to protect the trademark “Park Regis” in Classes 35 and 43, claiming, amongst others, business management, business administration, hotel services, hospitality services and etc. The Applicant, who originated from Australia, is the owner of a chain of 3- or 4-star hotels. They have used the “Park Regis” mark in Australia since 1962.
The application was published in May 2008, and was opposed by Starwood Hotel & Resorts Worldwide, Inc and Sheraton International, Inc (“the Opponents”), owners of 5-star or higher luxury hotel businesses, including trademark registrations for “St. Regis” in 80 countries worldwide.
The Applicant’s Mark The Opponents’ Marks
The opposition was made on several grounds including:
- Due to the goodwill subsisting in the Opponents’ mark, and the similarities between the marks, the Applicant’s mark was contrary to the common law of passing off;
- The Applicant’s mark was visually, aurally and conceptually similar to the Opponents’ prior registered mark, and both marks claimed similar services;
- The Opponents’ mark is well known in Singapore; hence, use of the Applicant’s marks would likely indicate a connection between the services of the Applicant and that of the Opponents, which will incur a damaging effect on the Opponents’ interests; and
- Use of the Applicant’s mark would likely dilute or take unfair advantage of the distinctive character of the Opponents’ trademark.
The first ground of opposition was unsuccessful as the Registrar viewed that the Opponents failed to prove the existence of goodwill, misrepresentation and damage to establish a passing off action. Although the Opponents were able to demonstrate a certain amount of goodwill attached to their business under their “St. Regis” mark, the goodwill was only garnered in Singapore after the application date of the Applicant’s mark, and as such, was insufficient to satisfy the first limb of the tort of passing off. Following this, the absence of goodwill also meant that there was no misrepresentation or damage caused.
On the issue of dilution, i.e. the fourth ground of opposition, the Registrar opined that at the time the Applicant’s mark was applied for, the Opponents’ mark was unlikely to be recognised by the majority of the Singaporean public at large, and was not well-known in Singapore. As such, since the Opponents’ were not famous at the material time, the grounds of trademark dilution failed.
The Opponent however did succeed on the second and third grounds of opposition, as the Registrar found the Applicant’s mark similar to the Opponents’ marks on the whole. The Registrar was also of the view that both marks were used in relation to similar services and were in the same industry, although they targeted different market segments. Furthermore, there was a real likelihood of confusion on the part of the public to confuse the Opponents’ services as those of the Applicant’s based on evidence, which included an article from a Travel publication mistakenly stating that the Opponents’ hotels under the “St. Regis” mark in Singapore was opened by the Applicant. Further confusion was also shown where a Malaysian reviewer of the Applicant’s Sydney “Park Regis” hotel had stated, “The standard is so well below that of St. Regis” on a famous travel review website. The Registrar therefore held that the similarities between the marks, coupled with the real likelihood of public confusion was enough to outweigh the fact that the parties catered to different segments, and disallowed registration of the Applicant’s mark on these grounds.
It is interesting to note that in this proceeding, both the Applicant and the Opponents were in fact rather well-known and well-established businesses in their own right. However, this case goes to show that trademark protection is, more often than not, territorial in nature, and as such, importance is always placed on ascertaining goodwill, fame and public confusion in the country or territory in which a trademark is sought to be protected or is in dispute.
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