Introduction

After a few rounds of trade mark advocacy, we finally managed to get our client’s trade mark registered. Find out more in this (just a bit more than) 5-minute read.

Our client, Floor Xpert Pte. Ltd., describes themselves on their website (www.floorxpert.com) as follows:

“Where we fulfill all your flooring needs, from installation to cleaning and even servicing. With more than a decade of experience in the flooring industry, our team has satisfied and delighted both commercial and residential clients. Here at Floor Xpert, we offer only the best and most innovative flooring solutions for your home and workplace.”

The Singapore Trade Mark Act (“TMA”) has been the cornerstone for businesses to ensure adequate protection for their brand. A successful registration of a trade mark offers a plethora of protection, including the ability to compel an errant competitor to stop using a similar-looking mark or even pay damages for causing confusion with an applicant’s branding. In almost all cases, the protection received from registering a trade mark far outweighs the cost. 

Click here to find out 3 key reasons why you should register your trade mark.

To protect trade fairness, the TMA recognises that protection cannot be at the expense of stifling progress or disrupting the ability of other traders to conduct business. Section 7(1)(b)/(c) of the TMA prevents applicants from registering a sign that is inherently non-distinctive or descriptive of the characteristics of its goods or services. For example, it is not permissible for a business to register a trade mark for the word “APPLE” if its business involves the sale of apples. On the other hand, registering the word “APPLE” for electronic goods is, obviously, permissible. To find out more about the concept of distinctiveness, click here.

Nevertheless, a sign that is, at face value, non-distinctive or descriptive may thereafter acquire a distinctive character if an applicant can prove that his/her sign has been relied on as a badge of origin for an extended period (usually 5 years) prior to the date of application for registration. For completeness, Section 7(2) of the TMA reads:

“A trade mark must not be refused registration by virtue of subsection (1)(b), (c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.”

The thorny issue that logically follows is, “how exactly can one prove that his/her brand has acquired such a distinctive character?”

What is “acquired distinctiveness through use”?

A mark that is inherently non-distinctive may acquire distinctiveness through use if a significant proportion of the relevant class of persons rely on the sign as an indicator of the origin of the goods or services to which the sign is applied. This necessarily entails an overall assessment of the evidence that may be furnished by an applicant. Critically, such an assessment is highly specific to the factual matrix of each case. As such, examiners ought to approach any alleged evidence with a healthy dose of caution, common sense and marketplace realities while having regard to the perception of the relevant public for the goods and services.

Floor Xpert

To briefly summarise, our client, Floor Xpert Pte Ltd (the “Applicant”) had sought to register the sign “FLOOR XPERT” (the “Application Mark”) in Class 37 (for [f]loor polishing; installing wood flooring; floor maintenance services; fitting of floor coverings; maintenance and repair of flooring; advisory services relating to flooring; constructing decks; tiling services; application of floor coating materials; installation services; repair, maintenance and installation consultancy services), and 2 other classes.

To a reader, it would be readily apparent that “Floor Xpert” is a common misspelling of “Floor Expert”. Therefore, such an application found itself in contravention of Section 7(1)(b) of the TMA for being inherently non-distinctive as it communicates to the public that the Applicant is an expert in relation to flooring. Consequently, the trade mark examiner from the IP Office of Singapore objected to the application.

Complications Faced

Whilst the Applicant filed evidence in a bid to prove that distinctiveness had been acquired through use, the examiner did not accept such evidence because the evidence (in the examiner’s view) did not show use of the Application Mark in the form that it was applied for, but rather different derivative forms of the sign which the examiner did not take into account in the assessment for acquired distinctiveness through use. These were:

1.    the company name “Floor Xpert Pte. Ltd”;

2.    the Applicant’s stylised “Floor Xpert” logo;

3.    the domain name http://www.floorxpert.com/; and

4.    the social media handle @FloorXpert.

Can Company Names be used as Evidence of Use of a Mark?

Well, the examiner did not think so initially, but in our view, which was endorsed by the registrar on appeal, it depends on the evidence and context.

In the present case, the learned registrar who delivered the final Grounds of Decision agreed with the Applicant that company/trade names can serve a dual function: (1) as a corporate name; and (2) as an identifier and badge of origin for the goods or services in question. The only difference between the Application Mark and the Applicant’s corporate name is “Pte. Ltd.”

We argued that most (if not all) Singaporeans would know that “Pte. Ltd.” is a mere abbreviation for “Private Limited” used to refer to a company. As an element that is wholly descriptive and functional, the use of “Floor Xpert Pte. Ltd.” would be understood by the relevant public that the Applicant is known as “Floor Xpert” and would therefore likely treat the Application Mark, “Floor Xpert”, as a badge of origin.

While the evidence, in this case, was sufficient for acquired distinctiveness to be found, this may not always be the case. For instance, if an applicant incorporates a company but the entity does not use its company name as a brand, it may not be said that the company name was used as a trade mark.

In the present case, the Applicant used its full company name as a trade mark in connection with its corporate Facebook page. Significant time and money were spent advertising on the social medial platform which translated into an upward trend of actual sales. Since the activities were tied to the business of providing flooring solutions under the Application Mark, it thus stands to reason that the evidence relating to “Floor Xpert Pte. Ltd.” is relevant in the assessment of distinctiveness.

The same line of analysis was also applied to social media handles and domain names such as “@FloorXpert” and “http://www.floorxpert.com/” respectively. Insofar as the words “Floor Xpert” may be combined, we argued that the combination was merely a limitation of such social media handles and domain names from permitting spaces. Importantly, it does not detract from the critical point that the company referred to itself unmistakably as “Floor Xpert”. The Applicant had constantly targeted and engaged Singapore-based actual and potential customers with its domain name and social media handle. It buttresses the point that the goods and services provided originated from a business known as “Floor Xpert” and indicates trade origin above mere Internet presence.

Must the evidence explicitly relate to the services in a particular class?

The evidence provided to show services that relate to a particular class does not need to be explicitly fleshed out when it comes to showing acquired distinctiveness through use. For ease of reference, we rehash the services that the Applicant sought to register under Class 37:

“Floor polishing; installing wood flooring; floor maintenance services; fitting of floor coverings; maintenance and repair of flooring; advisory services relating to flooring; constructing decks; tiling services; application of floor coating materials; installation services; repair, maintenance and installation consultancy services.”

The gist of the objection here was that the examiner found that some of the evidence furnished by the Applicant related to design services and design consultancy, which falls outside the scope of Class 37. In other words, the examiner was of the view that the evidence was more suited for a class that relate to aesthetic flooring as opposed to Class 37’s more practical flooring services.  

We argued that design services and design consultancy were not necessarily mutually exclusive services to the services in Class 37. Specific to the present case, the Applicant adduced evidence proving that they not only provided advice on the choice of flooring but also recommended designs that would be suitable for the floor area having regard to a myriad of considerations such as durability and structural integrity, amongst others. By that nature, these activities would fall squarely within “advisory services relating to flooring” and “repair, maintenance and installation consultancy services”.

In an overall assessment, the registrar agreed that evidence provided by the Applicant was sufficient to show acquired distinctiveness through use in Class 37. 

Conclusion

It is pertinent to note that there was little to no discussion by the registrar on case law or legal principles. In his written judgement, the registrar mentioned that this was intentional as much of the analysis on acquired distinctiveness through use turns on the relativity of the evidence furnished by the Applicant.

As we have emphasised constantly, every case turns on its own facts. What may work for the Applicant in this case, may not necessarily work for your business. To that extent, the registrar noted that significant weight was given to the fact that no other trader in the marketplace used “Floor Xpert”. If so, this may have triggered confusion as to trade source.

Whilst having a trade name such as “Floor Xpert” may be a powerful tool given the level of non-distinctiveness towards its trade, it is important to note that acquired distinctiveness through use is not necessarily an easy bar to cross.

If you have faced similar opposition from the IP Office of Singapore, or you are in the midst of branding / re-branding, you may wish to consider seeking legal advice to create a brand that may be protected and therefore valued.

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This post does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of That.Legal LLC accepts or assumes responsibility, or has any liability, to any person in respect of this post.