Free use of "Love" as a trade mark

01 December 2008

Karol Goh

The Singapore High Court invalidated a jewellery store’s registration for the trade mark “LOVE” in respect of jewellery, diamonds and precious stones (“the LOVE
mark”), in the case of Love & Co Pte Ltd v The Carat Club Pte Ltd [2008] SGHC 158.

Section 7 of the Singapore Trade Marks Act (“TMA”) provides, in relevant part, as follows:

Absolute grounds for refusal of registration
7. —(1) The following shall not be registered:
.. …..

(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or
other characteristics of goods or services; and
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

The Plaintiff sought to invalidate the LOVE mark on the ground that it was devoid of distinctive character, and succeeded on this ground. The Court found that the common adoption of the word “LOVE” by many jewellers to market, advertise, label and mark their jewellery, meant that the LOVE mark on its own did not have any distinctive character to differentiate the Defendant’s goods, without first educating the public that it was being employed by the Defendant as its trade mark to distinguish the Defendant’s goods from those of other jewellers.

The Plaintiff also succeeded in invalidating the LOVE mark on the ground that it designated the “intended purpose” of jewellery. The intended purpose or purposes of the goods was to be determined objectively by examining the relevant
intention of the average discerning consumer at the time of the purchase of the particular type of goods in question.

The Court was of the view that jewellery had more than one intended purpose – apart from that of self-adornment, it was also used as gifts to express love and affection. On that basis, the LOVE mark designated the “intended purpose” of jewellery and should be prohibited from registration.

The Plaintiff however failed to invalidate the LOVE mark on the ground that it was a sign that had become “customary” i.e. generic and hence should be prohibited from registration. To determine whether a trade mark had become customary
in the current language of the trade, the main focus should be on the perception of the average discerning consumer, taking into account the evidence presented, including evidence published after the date of registration of the mark in question.
The Court found that use of the word “LOVE” was very prevalent in the advertising and promotion practices of jewellery traders, and there were already many jewellery traders promoting their wares using the word “LOVE” even prior to the defendant’s registration of the LOVE mark.  Nevertheless, even taking that into consideration together with all the evidence post-dating 19 April 1999 (the date of
registration of the Defendant’s LOVE mark), it was still an overstatement to claim that “LOVE” was a generic term for jewellery or to assert that it had become customary usage.

Having found that the “LOVE” mark failed under section 7(1)(b) and (c) of the TMA and was thus registered in breach of section 7 of the TMA, the Court then went on to consider whether the LOVE mark had acquired distinctiveness and thus
could be spared invalidation, pursuant to section 23(2) of the TMA.

Section 23 of the TMA provides as follows:

Grounds for invalidity of registration

23. —(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 7.
(2) Where the registered trade mark was registered in breach of section 7 in that it is a trade mark referred to in subsection
(1) (b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
[Emphasis added.]

The Court, in its evaluation of the presence of de facto distinctiveness in an inherently non-distinctive mark, had to take into consideration:

(a) all relevant facts and circumstances, including actions by other traders of similar goods and services, which had the effect of eroding the general perception
of the average discerning consumer linking the inherently non-distinctive trade mark in question to the identity of the originator of the goods or services on the one hand; and
(b) all the relevant actions by the promoter of the trade mark in using the trade mark in question constantly as its badge of commercial origin, which had the effect of shoring up the perception in the eyes of the average discerning consumer that the inherently non-distinctive trade mark in question must be associated with and must have originated from that trader.

The more common or laudatory or descriptive the trade mark, the more compelling the evidence had to be before the court would be convinced that the trade mark has become de facto distinctive.

On the facts, the Defendant was unable to discharge its burden to show that the LOVE mark had acquired a de facto distinctive character in consequence of its use in relation to the jewellery trade. Accordingly, section 23(2) of the TMA was not available to save the LOVE mark from invalidation.