Overview
Société des Produits Nestlé S.A. (Applicant) applied to register "HM-O" in Classes 5 and 29 for goods including 'powdered milk for babies' and 'milk' under Singapore Trade Mark No. 40201708607T. Abbott Laboratories (Opponent) argued that the Applicant's mark is descriptive and/or non-distinctive as 'HMO' is the abbreviated name for human milk oligosaccharides in breast milk.
On 18 June 2019, the Intellectual Property Office of Singapore issued its decision to allow the opposition (Abbott Laboratories v Société des Produits Nestlé S.A. [2019] SGIPOS 11). The case is now on appeal before the High Court of Singapore.
Summary of Decision
Based on the evidence tendered, the Registrar found that 'HMO' has commonly been used as an abbreviation for human milk oligosaccharides in Singapore. The Applicant accepted this finding but argued that with the addition of a hyphen, 'HM-O' was different and distinguishable.
This led to the question of how average consumers would perceive the 'HM-O' mark in light of the hyphen. The Registrar held that given the "joining function" of a hyphen, it simply informs an average consumer that 'HM' and 'O' should be read together and would not be perceived to contain any special meaning. Average consumers also would not have regarded the hyphen as visually or aurally significant. Accordingly, the addition of a hyphen in 'HM-O' did not make it distinctive.
The Registrar proceeded to find that mothers-to-be and parents of infants (in addition to certain segments of the general public) are the average consumers in this case, and would consider 'HM-O' to be descriptive of various goods claimed by the Applicant in Classes 5 and 29. Hence, the Opponent succeeded in the opposition.
In the alternative, the Applicant also contended that 'HM-O' should be registered for non-milk goods in the specifications claimed, as the mark would not be descriptive in this regard. The Registrar considered this to be a request for an order of partial opposition, and commented that there is presently no clear jurisdictional basis for a partial opposition in Singapore.
Key Takeaways
Abbreviations of certain terms may make suitable brand names as they are often easier for consumers to remember. However, such applications may attract objections and oppositions not only because of similarity to existing abbreviations, but also if they would be perceived as synonymous with an underlying descriptive term. Depending on the circumstances, adding punctuation may not be sufficient to change the impression left on a consumer or increase distinctive character.
This update was first published in Vol. 74 No. 21 of the INTA Bulletin.
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