Filing multiple trade mark applications for various representations of your key marks will almost always mean incurring additional costs, but you should consider doing so at least for your key brands – here’s why.
The ‘Angry Birds’ decision
Rovio Entertainment (‘Rovio’), the developer of the popular mobile phone app game Angry Birds, had separately registered the following marks in Singapore:
• the word mark ANGRY BIRDS and;
• the device mark (A)
covering a range of goods and services, including snack food.
Kimanis Food Industries (“Kimanis”) filed an application for its mark (B), covering the same goods.
• In designing its mark, Kimanis had admitted to being inspired by Rovio’s trade marks.
• However, the Intellectual Property Office of Singapore(“IPOS”) dismissed Rovio’s opposition and allowed Kimanis’ mark to proceed to registration.
• IPOS decided that overall, Kimanis’ mark was not similar to Rovio’s prior registered marks because the marks in question were to be compared “mark for mark” i.e. as set out in Table 1, not Table 2. In this case, each registered trade mark had to be treated separately on its own, whereupon Kimanis’ mark was assessed to be adequately different from each of Rovio’s marks.
It appears from this decision that the fact that Rovio had registered components of its mark separately and did not have a composite mark may have worked against it, as each registered mark had to be individually compared against Kimanis’ mark as a whole in assessing if the marks were confusingly similar.
For optimum protection, it is therefore important for brand owners to consider an appropriate filing strategy to ensure that your brands are properly and adequately protected.
At least in respect of key brands, it is prudent to ensure that the individual elements of the mark are protected individually and as a whole together with the word elements.
This article is part of BrandWrites - December 2014