Similar, or not similar, that is the question: Thoughts and Takeaways on Singapore’s Marks-Similarity assessment

One year on from the High Court Appellate Division’s decision in Nalli^[1], it is timely to review the marks-similarity issue (which is a key element in enforcing one’s rights) to analyse how subsequent trade mark cases have approached it; why this issue is important in the overall context of Singapore’s step-by-step framework; and what might be some takeaways for brand owners. 

The Nalli finale: a brief recap on the marks-similarity issue

The parties in Nalli had a history spanning several decades involving the use of the same “Nalli” name for the same business (selling sarees). The present dispute centred on the following marks, each depicting the “Nalli” word:

Respondent’s trade mark	Appellant’s (allegedly infringing) trade mark

Specifically on the marks-similarity issue, the trial judge found the marks identical, or, if not identical, at least similar; the visual differences (namely, the letter “i” in the Appellant’s mark resembling a “candle motif”, as well as the differences in font style and slant of the letters) were ‘insignificant’ and ‘would go unnoticed’.

The Appellate Division accepted that given the inherent distinctiveness of the Respondent’s trade mark, ‘the threshold to find that the allegedly infringing sign:is dissimilar to the registered trade mark is high’. But having said this, the Appellate Division then took a starkly different view from the trial judge. It held that the differences were sufficiently noticeable such that the marks were not just non-identical, but dissimilar. The ‘high threshold’ for dissimilarity was met even though both marks comprised the same word, “Nalli”.

Why is the marks-similarity issue so important in the first place?

The marks-similarity requirement is the gateway, if you will, to much of the rights afforded to a trade mark owner. An opposition (or invalidation) action, a trade mark infringement action, as well as the rights afforded to owners of a Well Known Trade Mark in Singapore – in all of these, the rights owner must cross the marks-similarity threshold.

If the marks are dissimilar, these rights fall away. An action in passing off (protecting business goodwill in a distinctive identifier) would probably fail too, because there will likely be no misrepresentation if the business identifiers are dissimilar.

It is important to underscore that our test in Singapore differs distinctly from that in the EU/UK or the US. Unlike the “global assessment” approach in the EU/UK, or the “multi-factorial” approach in the US, Singapore’s “step-by-step” approach features marks-similarity as the first step; goods-similarity as the second step; and a likelihood of confusion – the third step – by reason of the preceding two steps. The assessment framework is sequential and cumulative. Non-satisfaction of any one step ends the inquiry, and the action fails.

Further, the marks-similarity comparison in the first step of this assessment framework is a narrow comparison based on a “mark-for-mark” approach without having regard to any extraneous matter.

An overly-permissive stance towards marks being dissimilar therefore curtails the scope for a more considered evaluation of the likelihood of confusion, because the inquiry does not (and the court or tribunal is not required to) even progress to that step. Such a stance in fact also curtails non-confusion based rights, in particular the anti-dilution and unfair advantage rights accorded to marks which are Well Known to the public at large in Singapore, because, as mentioned, marks-similarity is also a pre-requisite.

Does the court’s decision on the marks-similarity issue in Nalli mean that brand owners now need to explore more expansive filing strategies, including various versions and iterations of the same/similar mark? Can a calculative third party adopt the same or similar word as a prior registered mark yet avoid possible risks by simply clothing it with some stylisation in font or introducing some minimal design embellishment?

Pre-Nalli decisions on the marks-similarity issue

Looking in context at the marks-similarity landscape pre-Nalli, a few cases involving marks with the same word component come to mind:

In all of these decisions, differences in font stylisation and/or device embellishments did not outweigh the similarity engendered by the use of the same word (or similar word in the Damiani case).

Against this background, Nalli’s approach appears to suggest a stricter stance before marks-similarity can be established.

Post-Nalli decisions on the marks-similarity issue

In the past year following the decision in Nalli, a few more decisions emerged involving marks with the same word component:

In the Amazon case, the stylisation of the “AMAZON SURVIVAL” mark along with the paw print device did not displace marks-similarity. This appears to be due to the opponent’s mark being a plain word mark, for as stated by the learned Principal Assistant Registrar, “the protection accorded to a plain word mark is wide enough to cover differences in stylisation and font sizes”.

The Opponent in Sunrider Corporation no doubt also benefitted from the fairly plain depiction of its word mark, “SUNRISE”. While the “anthropomorphic element” of the sun device in the Applicant’s mark set it apart from more conventional depictions of the sun, this was insufficient to displace the overall dominance of the word “SUNRISE”, thus engendering a high degree of visual and conceptual similarity as well as aural identity.

The High Court further affirmed on appeal (although the marks-similarity step was not contested) that there was a high degree of overall similarity given that the marks were visually and conceptually similar to a large extent and aurally identical.

Interestingly, none of these post-Nalli decisions actually referred to Nalli at all.

Concluding thoughts and takeaways

The extent of Nalli’s precedent value as regards the marks-similarity assessment is unclear. The impact which it has, or might have, on the marks-similarity trajectory is uncertain. We might perhaps need to await further guidance from future cases.

It is the author’s view, however, that Nalli was a rather unique and exceptional case. Taking Nalli’s decision on marks-similarity in its proper context, the factual and historical background involved a ‘decades-long’ dispute between the parties which really stemmed from the use of Mr Nalli Chinnasami Chetty’s name by the two sides of his family, borne from his two wives. There had already been a co-existence arrangement which underscored the view that neither side could assert an exclusive monopoly over the “Nalli” name per se to the exclusion of the other.

It is submitted that the long historical context of use of the “Nalli” name by both sides – since the 1940s/50s in India, and the 1990s in Singapore – was a motivating factor towards the court’s finding of non-infringement – and, to that end, a finding that the marks were dissimilar.

Indeed, the overall sentiment of the court seemed to be reflected in the concluding paragraph of its judgment^[2] where it described the nature of many of the parties’ complaints as ‘relatively trivial’, likening them to ‘mere storms in a teacup’.

Seen in this light, it is probably unlikely that Singapore’s marks-similarity assessment will be drastically altered by Nalli. Nalli should be confined to the specific and unique considerations in that case as highlighted above. It should not go so far as to lay down a general principle that competing marks comprising the same word with variations in font style and device features should necessarily be deemed dissimilar.

Courts and tribunals should remain mindful of the need to allow a fuller ventilation of issues and consideration of all relevant factors under the step-by-step framework, which could be compromised and prematurely determined by an unduly strict stance towards the marks-similarity requirement.

That said, given the Appellate Division’s conclusion in Nalli, it is possible that we could see more tolerance towards marks being dissimilar where competing marks each possess sufficiently discernible variations in font style and other embellishments, even where both comprise essentially the same word.

As a strategy therefore, and against the importance of establishing “mark similarity” as the initial step in opposition and infringement actions, brand owners should consider a broader and more robust brand protection strategy which looks at filing a combination of figurative, stylised and/or composite marks, as well as the plain word itself, if possible, in order to rely on a broader range of registrations in a given situation.

Plain word marks will continue to be valuable for the flexibility and wider coverage which it affords in terms of font style variations and stylisations, while figurative and composite marks lend an extra layer of protection for the overall “look and feel” vis-à-vis a competing mark.

On the flipside, where a particular word is already fairly popular, it might be possible for a brand owner to attain co-existence (both on the register and in the marketplace) by adopting its own unique stylised or composite expression in respect of that word, such that the overall expression could be said to be sufficiently distinguishable from competing marks sharing the same word. This could be an effective approach particularly where competing marks also reflect their own distinct stylised expressions.

Of course, we have only dealt with the marks-similarity issue here; ultimately the overall outcome in a given case would also depend on other elements in the assessment framework as a whole.

^[1] Nalli Pte Ltd v Nalli Kuppuswami Chetti and Nalli Ramanathan [2024] SGHC(A) 18

^[2] At paragraph 152.