By Mark Teng, Executive Director (Profile), Lucas Tjia, Practice Trainee (Profile) & Lusina Gao, Incoming Trainee ‘24

Are they similar? You be the judge. (P.S. our reproduction of these images in this blog post is protected under, inter alia, Section 35 of the Copyright Act and Section 28(4)(c) of the Trade Marks Act)

4 days ago, 8 Days and Today Online, ran a story titled “Audemars Piguet Sends Lawyer's Letter To Ayam Penyet Hawker Over 'AP' Logo Spoof”. Mothership followed suit shortly after.

Audemars Piguet is a well-known Swiss watch brand founded in 1875 which sells high-end luxury watches often amounting to 5-figure sums. Audemars Piguet lauds itself as “the master of watchmaking since 1875” in its tagline, which appears prominently below its logo.

Mr Nornizam bin Amin (“Mr Nizam”), on the other hand, is the proud owner of one Ayam Penyet stall started in 2014 that Mr Nizam lauds as “the master of fried chicken since 2014”, and with good reason. Mr Nizam’s signboard reads Rayyan’s Waroeng Upnormal (see image on 8 Days’ article here), and his stall was recognised as one of the top 5 ayam penyet picks in the Michelin Guide Singapore in 2017. Currently situated at Amoy Street Food Centre, Mr Nizam’s stall garnered some media attention when something that looked similar to Audemars Piguet’s well-known logo appeared at his stall. At first glance, a moron in a hurry might have had to do a double-take at the sticker then displayed on Mr Nizam’s stall and the logo on the staff’s uniforms.

Undoubtedly, ayam penyet has been around for much longer than Mr Nizam’s stall has. But perhaps unlike other owners, Mr Nizam is a watch enthusiast who drew the connection that the acronyms of Ayam Penyet coincided with Audemars Piguet: AP. Joining his two interests together, Mr Nizam contacted his graphic designer friend in Jakarta for a playful riff on Audemars Piguet’s logo, developing an unofficial logo for his own stall. Unknown to Mr Nizam, this playful riff would later land him a lawyer’s letter and potentially a trade mark infringement lawsuit come January 2021 from Audemars Piguet.

Mr Nizam claims that he had never commercially distributed merchandise containing his logo, and any interested customers who wished to own a T-shirt containing the logo had to pre-order on the stall’s social media sites in advance before Mr Nizam would send the orders to be printed and delivered. Apart from this small number of customers, the only other owners of the T-shirts and stickers bearing the logo were Mr Nizam himself, his staff, and his close friends.

Unfortunately for Mr Nizam, the media attention Mr Nizam’s logo attracted also attracted the attention of Audemars Piguet, who had to resolve the confusion that may have arose for once and for all. This resulted in the lawyer’s letter from Audemars Piguet. Fortunately for Mr Nizam, the Swiss watch giant was willing to settle the matter amicably if Mr Nizam complied with their request to remove the allegedly offending logo and its mention on every medium that it has appeared on, including news articles and the T-shirts and stickers.

Thankfully, Mr Nizam complied and evaded an actual trade mark infringement lawsuit. However, having read the comments on social media, it would appear that many burning questions still linger on people’s minds – Swiss watches and Ayam Penyet could not be any further apart! Why would Audemars Piguet even care? Can they even do this? Is this fair?

Trade Mark Infringement

In most cases, brand owners would unlikely succeed in an action for trade mark infringement for a case like this because generally, in order to succeed, three things (i.e. legal elements) must be proven:

(1) that the infringing mark is identical or similar to the registered mark,

(2) that the goods or services in respect of which the infringing mark is used is identical or similar to the registered mark, and

(3) that there will be a likelihood of confusion.

Here, while there may be a case that the first element is satisfied, the second element is a real obstacle. Watches (and other chronometric instruments) and ayam penyet could not be any more different. One is a fashion accessory, and the other is food. One is found in exclusive boutique stores – only two of which exist in Singapore in Audermans Piguet’s case (in Orchard and Marina Bay Sands, no less) – the other is found in almost every hawker centre or food court. The list of differences goes on.

Usually, a brand looking to sue would be out of luck because of this. However, because Audermars Piguet is such a well-established brand, they can claim that their mark is “well-known to the public at large” and seek a higher level of protection for their trade mark under what is known in the intellectual property legal circles as the “anti-dilution” right. This right would indeed entitle Audermans Piguet to restrain Mr Nizam from using the mark despite the goods being so different.

Before we go further, the threshold question to be addressed is whether Audemars Piguet qualifies for this right. To so qualify, Audemars Piguet would have to prove that its trade mark is “well-known to the public at large”. The highest court in Singapore (the Court of Appeal) has gone so far as to label such a status as “coveted” and being a “rare and exclusive class”.

A variety of factors go into determining whether a mark is well-known to the public at large, such as sales figures, marketing expenditure and efforts for the trade mark, prior use of the mark in Singapore, presence in Singapore, and brand value. Well-established brands that have proven this in Singapore include Intel and Gucci. While sales figures and marketing expenditure are likely only known to Audemars Piguet, it would not be too far off to assume that both figures would be relatively large. As for its presence in Singapore, Audemars Piguet opened its Marina Bay Sands store in Singapore in 2015, and reopened its restyled and enlarged flagship store along Orchard Road in 2016, which is currently its largest store in the world. (Audemars Piguet also made headlines last year when the boss of Founder Bak Kut Teh was seen sporting an Audemars Piguet watch while asking for public support amidst the COVID-19 pandemic).  Thus, it may not be wrong to conclude that Audemars Piguet is well-known to the public at large.

For there to be a conclusive answer to whether Audemars Piguet indeed qualifies as such, we can probably only wait for the day the issue is surfaced before the Court, as many past cases have received subjective treatment on the matter.

Was there ‘dilution in an unfair manner’?

Supposing that Audemars Piguet indeed qualifies as well-known to the public at large, the next question is to ask whether there was ‘dilution in an unfair manner’ of its mark. For there to be dilution, there must be a “lessening of the capacity” of Audemars Piguet’s trade mark “to identify and distinguish [its] goods or services, regardless of whether there is any competition between the proprietor of the trade mark and any other party, and regardless of any likelihood of confusion on the part of the public” (see s 2(1), Trade Marks Act). Did the uniqueness, exclusivity, and prestige of the AP brand get whittled away by Mr Nizam's actions? 

This anti-dilution right was created to "preserve the uniqueness of a trade mark which is associated in the public's mind with a particular product and created in the public consciousness an impression or symbol of the excellence of the particular product in question", said the US Supreme Court in Moseley v V Secret Catalogue (in that case, the trader used “Victor’s Secret” as a spoof of “Victoria’s Secret"). Our own Law Minister K Shanmugam also said that dilution relates to “where the reputation and value of the well-known mark is diluted by blurring or tarnishment, even though there may not be consumer confusion, for example, if someone uses a well-known mark on inferior quality goods or on goods… of an obscene nature”.

While we cannot say whether ayam penyet is inferior in quality to watches, since comparing the two would be akin to comparing apples to oranges, Mr Nizam's sign may have led to the public’s association of Audemars Piguet's logo to Mr Nizam's ayam penyet, which may have in turn reduced the uniqueness of Audemars Piguet's trade mark.

Was there an unfair advantage?

Another question is whether Mr Nizam’s use of the mark would be considered as taking “unfair advantage” of AP’s trade mark. “Unfair advantage” is aimed towards stopping a trader from increasing his sales by ‘free riding’ or, like a parasite, feeding on the reputation of the earlier trade mark (as observed in L’Oreal SA in Europe).

Admittedly, the link may not be quite clear as to how an ayam penyet stall could free ride on the reputation of a Swiss watch brand. Regardless, Audemars Piguet was likely acting based on the principle that prevention is better than cure. It may have been better in Audemars Piguet's opinion to nip the problem in the bud, especially since Mr Nizam's stall did “go viral” for its logo, before things became more complicated.

If you’re craving some fried chicken after reading this article, we’re afraid we can’t help you. But if some of the issues here sparked your appetite for intellectual property law – or if you have a legal problem that needs solving, our doors are wide open. Drop us an email at ask@that.legal and #LetsTalkAboutYourChallenge.