Jean Mercier v Baume & Mercier

GoldLion Enterprise Singapore Pte Ltd, applied to register the mark "Jean Mercier" in Class 14 for "watches; clocks; tie clips; tie pins; buckles of precious metals; keychains; cufflinks; jewellery and costume jewellery; all included in Class 14". The application was opposed by Richemont International SA, Switzerland, in respect of their registered trade mark "Baume & Mercier" in Class 14 for "jewellery, articles not included in other classes made of precious metal or coated therewith, precious stones, clocks and watches", on the basis that the mark "Jean & Mercier" is confusingly similar to their registered trade mark.

Actually, the said mark has been assigned by Baume & Mercier SA to Richemont International SA with 15 other trade mark registrations in Class 14 for "Baume & Mercier" in various forms in Singapore. The opposition was not successful before the Principal Assistant Registrar of the Singapore Registry of Trade Marks. Richemont International SA appealed to the High Court Singapore on the following grounds:

1. Section 8(2)(b) of the Trade Marks Act, which states that a trade mark shall not be registered if because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public;
2. Section 8(3) of the Act, which states that if a trade mark is identical with or similar to an earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected, the later trade mark shall not be registered if the earlier trade mark is well known in Singapore; use of the later trade mark would indicate a connection between those goods/services and the proprietor of the earlier trade mark; there exists a likelihood of confusion on the part of the public because of such use; and the interests of the proprietor of the earlier trade mark are likely to be damaged by such use.
3. Under the law of passing off;
4. The application was made in bad faith;
5. The mark was not capable of distinguishing the goods dealt with in the course of trade from the goods of other traders and therefore it is not distinctive.

The High Court found that the marks are not similar, in order that the public would be confused as to the trade origin of the goods. The Court found that the mark "Baume & Mercier" is a combination of two surnames linked by an ampersand. The mark "Jean Mercier" was considered by the Court as one name comprising a first name "Jean" and the surname "Mercier". It was felt that "Jean" and "Baume" were not phonetically same. The Court referred to the decision in "In the Matter of Broadhead’s Application for Registration of a Trade Mark (195) 67 RPC 209 at 215 where it stated: "Where you get a common denominator, you must, in looking at the competing formulae, pay much more regard to the parts of the formulae that are not common- although it does no flow from that --- that you much treat the words as though the common part was not there at all."

Richemont International SA had argued that the marks were conceptually similar on the basis that they share the same "idea" of being French-sounding names. This also failed because the Court found that since there is tendency on the part of not a few members of the public to mispronounce unfamiliar foreign names, the conceptually similarity was too far-fetched.

Richemont International SA contended that the PAR had erred in law by making a global assessment of the facts and deciding that the goods were similar. The Judge found the contention to be valid.

The Court upheld the decision of the Registrar that there is no likelihood of confusion on the part of the public once it was found that the marks were dissimilar, even though the goods were similar.

Accordingly, the Court dismissed the appeal under section 8(3) and upheld the Registrar’s decision because the marks were not similar and the goods were similar. The appeal also failed on other grounds - passing off, bad faith and lack of distinctiveness.