|Money Max trademark (‘Love Gold’)|
|Cartier trademark (‘Love with screw head’)|
|Slotted screw head|
|Lady Rose Mark|
The matter finds its root in January of 2017 when Singapore based jewellery and pawn-shop MoneyMax Jewellery Pte Ltd. applied for the registration of the mark LOVE GOLD in Class 14 and retail and other services relating to jewellery in Class 35. On July 28, 2017 Cartier filed a Notice of Opposition relying on their previous LOVE with screw head trademark which is registered in Class 14.
Cartier stated that it had registered the trademark for the word ‘Love’ where the ‘o’ is replaced by a ‘slotted screw head’ and the ‘e’ is in lowercase. The slotted screw head device appears on its jewellery, specifically, bracelets, rings, earrings and necklaces/pendants. Cartier opposed the application citing relative grounds of refusals as under Section 8 of the Singapore Trade Marks Act, 2005(‘the Act’).
Analysis of the Registrar’s Office
- Before concentrating the analysis of the grounds, Lim Fung Chian Mark, Principal Assistant Registrar of the Office, analyses the case of Love & Co Pte Ltd v. The Carat Club Pte Ltd  1 SLR(R) 561. Justice Chan Seng Onn was of the view that no trader should be permitted to monopolise the word “LOVE” whose use is ubiquitous in the jewellery trade.
- The Office also examines the relative grounds under Section 8(4)(b)(i) of the Act if the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark then a trademark shall not be registered. Section 8(7) of the Act protects an unregistered mark against an identical or similar mark through the passing-off remedy. The Office relies on Monster Energy Company v NBA Properties, Inc. SGIPOS 16 where it was stated that “The common basic criterion in all these grounds of opposition is that there must be identity or similarity between the competing marks”. The Office states that the only similarity between the two marks is the use of the word LOVE which Cartier has no monopoly over. It has not registered the word LOVE as a mark but only the device mark as discussed above. Even in passing off there has to be a similarity between two marks. The Office states “any distinctiveness in the Opponent’s mark resides in the Screw-head Device and possibly the use of a small letter “e”.” Hence, since the same has not been used by MoneyMax, they cannot be restricted from using the mark.
- Under Absolute Grounds listed in Section 7(1)(b) of the Act, trade marks which are devoid of any distinctive character cannot be registered. In pursuance to that Cartier breaks down the mark into various parts. The Office states that “In assessing distinctiveness, a mark should be considered as a whole and not broken up into its component parts.” The Office relies on Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd  2 SLR 941, where a composite device mark LADY ROSE (see table above) was held to be sufficiently distinctive but the individual words LADY and ROSE were held to be non-distinctive. The same was held in the Love & Co. case regarding a composite device mark LOVE DIAMOND.
The Office held that “word “LOVE”[…]should be free for traders to incorporate into their trademarks for jewellery.” The decision can be accessed here.