TWO BIRDS, ONE STONED: TWITTER STOPS SINGAPOREAN START-UP FROM REGISTERING BIRD LOGO

Twitter has recently won a legal battle to stop Singaporean tech start-up, VV Technology, from registering a bird logo that Twitter believes is too similar to its own.

VV Technology applied to register its logo of a yellow hummingbird in mid-flight on 10 September 2018 for various IT and software services. VV’s trademark application was opposed by Twitter on 24 September 2019 as the social-media giant believes VV’s trademark to be too similar to its own and will likely confuse the consumers. Convinced by Twitter’s arguments, the Intellectual Property Office of Singapore (IPOS) refused to register VV’s trademark. Unhappy with IPOS’s decisions, VV appealed to the High Court

On 23 November 2022 the High Court dismissed VV’s appeal. In coming to its decision, the court held that there exists a likelihood of confusion as the two logos are similar enough that consumers may think that VV’s logo is simply a new iteration or modification of Twitter’s logo. While the court believed that Twitter’s strong reputation would reduce the risk of direct confusion to a certain extent, however, since many tech companies are providing their services at low or no cost, this means that consumers “will likely give an average level of attention during the procuring process, making it ripe for indirect confusion”.

While V V Technology may not be successful in their registering their logo in Singapore, they were able to register the same logo in Malaysia, Indonesia, and the Philippines.

Is someone using a brand that is similar to yours? Are you planning to start a new gig but not sure if you're stepping on someone's toes with your new brand? Why not talk to us? We're here to help!

Shaped Charges: The Battle of the Golden Bunnies

Swiss court orders Lidl to melt down its chocolate bunnies for infringing Lindt's Gold Bunny trademark

Switzerland’s Federal Supreme Court has ordered German discount retailer, Lidl, to cease selling its "copycat" rabbit-shaped chocolate in Switzerland and to destroy its stock.

In its decision to overturn last year's ruling by the Swiss Commercial Court for Lidl, Switzerland's highest court took account of surveys submitted by Lindt & Sprüngli which showed that its Golden Bunny was well known to the public and the real risk of public confusing the products for each other.

The Supreme Court's decision shows that trademark protection for 3D designs is an important weapon in the fight against copycats wishing to exploit a business's hard earned reputation for its product.

Lindt & Sprüngli has registered the shape of its Golden Bunny as a trademark in various countries and has fought hard to protect the design of one of its best selling products.

Did you know the Malaysian Trademarks Act 2019 allows the registration of shapes as trademarks, including shapes of confectionary and baked goods (see below)?

Talk to us if you're worried that someone may be copying your masterpiece or if you're worried that your products could be infringing someone else's trademark or copyright.

Can we trademark generic words like "LOVE" and "THE"?

Recently, the decision of the UK Intelectual Property Office to allow the registration of the word "Cariad" (Welsh for "love") as a trademark for candles has been widely criticised as this may prevent other businesses from using a relatively generic term on their products. Across the pond, the Ohio State University successfully registered the word “THE” in the United States for t-shirts, baseball caps and hats. In 2020, the US Supreme Court decided that a relatively generic domain name - "Booking.com" can be trademarked. And in Malaysia, local celebrity Neelofa's mum landed in hot soup when she attempted to register "Harimau Menangis" (a common Thai dish) as a trademark.

With businesses hellbent on registering every available word in our lexicon as a trademark, are we not in danger of running out of words to use?

Well, while the above examples are somewhat worrying, cases like this are relatively rare. In fact, numerous attempts to register generic words/phrases as trademarks have failed, e.g. Subway's failed attempts to trademark the word "footlong"; the former POTUS's attempt to trademark the phrase "you're fired".

Generally, you can’t register a generic/descriptive word as a trademark. That is unless you have used your trademark so extensively that when consumers only associate the said generic/descriptive word with your brand (e.g. Body Shop, Kentucky Fried Chicken, The Weather Channel). The reason is simple. Registration gives you exclusive right (monopoly) to use the trademark, and if you are allowed to register a generic/descriptive sign, no one else can use it! Imagine if I register the word “restaurant” as a trademark for restaurant services, no one can use that word to describe their f&b outlet without infringing my trademark rights. Accordingly, the more generic/descriptive a trademark, the harder it is to register.

For example, it took Booking.com 8 years and numerous appeals to get their trademark registered. Ohio State University's registration of the word "THE" took close to 4 years, and Neelofa's mum had to withdraw her trademark application following public outcry.

On the other hand, brands which are invented, arbitrary, or fanciful are comparatively easier to register as trade marks and don’t rely so much on consumer recognition in order to be registrable.