The Battle Of “MI”

By Kaarthic Balakrishnan

When it comes to business owners protecting their brand or business name, it is definitely not cool when they come across a brand that is identical or substantially similar to their brand.

And so, things got a little spiced up when a Singaporean company filed a trademark application in Singapore for their newly launched messaging application under their brand “MiChat”, and that application was opposed at the Intellectual Property Office of Singapore (IPOS) on two grounds – one being the “MiChat” mark is substantially similar and/or identical to the prior “mitalk” mark and secondly, there was a likelihood of misrepresentation and/or confusion if the mark “MiChat” is allowed to be registered.

This dispute was a battle between two tech companies, namely MiChat Pte Ltd (the Applicant) and Xiaomi Inc (the Opponent).

For ease of reference, let’s look at the marks which are in the ring:

Are the marks identical/similar?

Three aspects of similarity i.e., visual, aural and conceptual similarities were taken into account by the IPOS Registrar while making the decision on this case; in relation to the objection under section 8(2)(b).

Visually: The Applicant’s mark is undeniably visually different from the Opponent’s Mark as the Opponent’s Mark contains a “graphical design” and the word “Chat” in the Applicant’s Mark cannot be overlooked by an average user or consumer.
Aurally: The aural difference was not satisfied as the Applicant’s Mark is pronounced as “mai-chat” or “mee-chat” which is different to the Opponent’s earlier “Mi” mark.
Conceptually: Since the word “Mi” is meaningless, there would be no conceptual similarity.

Having considered the 3-step test approach, the Registrar found that the Applicant’s Marks are more dissimilar than similar to the Opponent’s Marks.

The Opponent submitted that the prefix “Mi” is a coined term which does not have any meaning in the English language. However, the Applicant proffered that there are several marks registered in Singapore with the use of the word “Mi” in the trademarks and provided examples as shown below:

: ETABLISSEMENTS SOGAL DIRECTIONS SUPPORTS – Class 42
: MICROMAX INFORMATICS LIMITED – Class 09
: NXP B.V. – Class 09

It was concluded that the word “Mi” has a level of distinctiveness but not a high one.

Are the goods/services similar?

The Registrar found this ground not satisfied for Application Mark 2 (Classes 38 and 45) because the services in Classes 38 and 45 and goods in Class 09 are clearly not substitutes of each other.

On the flip side, the similarity of goods and/or services in relation to the Application Mark 1 (Class 09 and 42) has been satisfied and overlaps with services of the Opponent’s “mitalk” Mark i.e., downloadable computer software applications.

Are the Opponent’s marks well known?

Although the Opponent submitted that the Opponent’s Mark is a prominent brand and has a large scale of usage throughout Singapore, sadly, the evidence submitted by the Opponent did not persuade the Registrar because it was undated or dated after the Relevant Date.

Is there likelihood of confusion and/or damage?

The Registrar disregarded this element on the basis that the average consumer would be less likely to be confused between the co-existence of these two marks.

Law of passing off

All successful passing off cases need to establish three elements, namely, the subject mark has goodwill; there is misrepresentation by the wrongful party; and there is damage or likelihood of damage.

The Registrar was satisfied that the Opponent has goodwill in the Opponent’s Marks. In considering misrepresentation, the learned Registrar referred to outcome of the section 8(2)(b) objection and decided, on the balance of probabilities, that there would only be a likelihood of misrepresentation between the Opponent’s “mitalk” Mark in respect to Application Mark 1 (Classes 09 and 42).

The Registrar concurred that there could be damage to the sales of the Opponent i.e., if the relevant members of the public download the Applicant’s service under the impression that it belongs to the Opponent.

The Opponent succeeded in all three elements of passing off.

Conclusion

In the light of the above, it was concluded that the Opponent succeeded under section 8(2)(b) and section 8(7)(a), but only in relation to Application Mark 1 (Classes 09 and 42). Each party was ordered to bear its own costs and Application Mark 2 was allowed to proceed for registration in Singapore.

The local company, or the owner of the “MiChat” mark, has not given up on this battle in Singapore. An appeal from this decision to the High Court is pending. Our view is that, as the word “Chat” and “Talk” are fairly interchangeable in the English language and have the same meaning, the Opponent may have a stronger case in High Court for the category of goods and services which are dissimilar, IF the Opponent is able to adduce better evidence of fame in its “mitalk” mark in Singapore. Famous marks, after all, have stronger rights under Trademark Law. We will keep you updated of the appeal – in the meantime, if you have any questions, do email us at kass@kass.asia.

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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.