Trademark Matters: Mere collections of similar names may not be called a family!

By Thein Thein Win

Merely registering marks bearing a common element does not constitute a “family” of marks. So, what do we need to consider in order to establish a family of marks? The purpose of registration of family of marks doctrine is to prevent confusion or deception to the public as to the source of a particular product or service.

Normally, a family of marks is a group of marks sharing a common characteristic (e.g. Mc) which have been used in such a way that the public associates not only the individual marks, but the common characteristic of that group of marks, (e.g. McChicken, McNuggets, McMuffin) with the trademark owner (e.g. McDonalds Corp).

But simply using a series of similar marks itself does not establish the existence of a family of marks. IP Courts and the USPTO consider how the common feature contributes to the purchasing public’s recognition of the marks in the various aspects as being of common origin. To get such recognition, an owner must show that the marks comprising the family have been advertised or used in everyday sales activities in such a way.

This was clearly shown in the opposition case regarding the “” trademark application by DEESTONE LIMITED (“the Applicant”) and subsequent opposition by BRIDGESTONE CORPORATION AND BRIDGESTONE LICENSING SERVICES, INC, at the Intellectual Property Office of Singapore (IPOS).

The First Opponent, Bridgestone Tyre Co., Ltd, was founded in 1931 and changed its name to the Bridgestone Corporation in 1984. A Japan-based manufacturer of tyre and rubber products which are sold under the trademark “”, it has business presence in more than 150 countries, including Singapore. The Second Opponent, Bridgestone Licensing Services Inc. is a wholly owned subsidiary of the First Opponent and the current registered proprietor of the “” trademark. They are two separate legal entities and therefore cannot be said to be a “single proprietor”.

The Opponents jointly filed their Notice of Opposition and asserted that “The Bridgestone Mark and the Firestone Mark” collectively as the “STONE marks” are the earlier trademarks and formed as a family of STONE marks. The Opponents also submitted evidence of some sample invoices and “import and export of goods bearing the STONE marks” but these were related only to the Bridgestone Mark. As such, the exact extent of use of the STONE marks in Singapore is not clear on the face of the evidence.

The Applicant is a tyre-production company incorporated in Thailand in 1978. It had since expanded its business and has approximately 396 distributors worldwide. The Applicant argued that the Bridgestone mark and the Firestone mark are not owned by the same legal entity and therefore do not qualify as a family of marks. Moreover, a proprietor must prove that the marks have been used and promoted in such a way that the public associates the common element between the marks with the proprietor to establish a family of marks. The Applicant submits that the Opponents have not demonstrated this based on the proper evidence. In the submission of evidence, there were no attempts by Opponents to educate consumers that the two brands come from the same corporate family of STONE marks.

Hence, we can assume that the distinctiveness of the components (or elements) of both the earlier trademarks as a whole and the contested mark will be looked at in considering whether the earlier registered marks are family marks. As in this case, the average consumer will not dissect the mark into “BRIDGE” and “STONE” or “FIRE” and “STONE” and there is no conceptual similarity between Opponents’ earlier marks and the application mark, “”. So, there cannot be any misrepresentation to the public into thinking that the Applicant’s goods are those of the Opponents’ because the whole or essential part of the application mark is not identical or similar to either of the Opponents’ earlier marks. Hence, IPOS decided that the opposition failed and the application mark was allowed to proceed to registration.

The take-away lesson for businesses here would be: If it is a family of marks, treat them as such.

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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.