Essity Hygiene and Health Aktiebolag v Tianrong Co Ltd [2025] SGIPOS 1

Background

Essity Hygiene and Health Aktiebolag (the Opponent) opposed a trade mark application by Tianrong Co., Ltd (the Applicant) for the mark “TENEI” in Classes 3 and 5. The Opponent owned several earlier registered trade marks incorporating the word “TENA”, including “TENA” alone and “TENA” with various graphics, used for hygiene and health products like skincare, incontinence products, and diapers.

The Opponent challenged the Applicant’s mark on several grounds under Singapore’s Trade Marks Act:

  1. That the marks were similar, and used for identical or similar goods, creating a likelihood of confusion among the public (Section 8(2)(b)).
  2. That the Applicant’s use of the mark would amount to passing off (Section 8(7)(a)), based on the Opponent’s goodwill, likely misrepresentation, and potential damage.
  3. That the Opponent’s marks were well-known in Singapore, and the Applicant’s mark would either cause confusion or indicate a connection likely to damage the Opponent’s interests (Section 8(4)(b)(i) & (ii)).
  4. That the Applicant’s trade mark application was made in bad faith (Section 7(6)).

Key Issues

The case required the IP Adjudicator to determine, for each ground of opposition, whether the Opponent had met the legal requirements, including proving:

  1. Similarity between the competing marks and goods, leading to a likelihood of confusion.
  2. The existence of goodwill in Singapore at the relevant time, and the likelihood of misrepresentation and damage for passing off.
  3. That the Opponent’s marks were well-known in Singapore.
  4. That the Applicant filed the application in bad faith.

The Decision

The IP Adjudicator dismissed the opposition on all grounds. The Applicant’s trade mark application was allowed to proceed to registration.

Reasoning of the Tribunal

The decision was based on a detailed assessment of the evidence presented by the Opponent for each legal ground:

  • Likelihood of Confusion: The tribunal compared the marks visually, aurally, and conceptually.
    • Visual Similarity: The Adjudicator found a high level of visual dissimilarity between the marks, noting the different lengths, letters used, and the distinct visual components (the “A” and the Chinese character “三l” / pronounced “EI”) which an average consumer wouldn’t ignore.
    • Aural Similarity: The marks were found to have a medium level of aural similarity, primarily due to the similar first syllable “TEN”. However, the tribunal acknowledged that the second syllables “-NAH” and “-NAY” are different, even considering the possibility of slurring by consumers.
    • Conceptual Similarity: Both marks were found to be meaningless to the average consumer in Singapore and thus had no conceptual similarity.
    • Overall Impression: Crucially, the Adjudicator concluded that, despite some aural similarity, the high visual dissimilarity meant the marks were overall dissimilar.
    • Similarity of Goods: The Adjudicator found a low level of similarity between the specific goods listed in the application (“lotion (for cosmetic purposes)”, “shampoos”) and the Opponent’s goods (primarily hygiene, incontinence, and diaper products), although some overlap existed.
    • Conclusion on Confusion: Since the marks were found to be overall dissimilar, the inquiry under this section could have stopped there. However, the Adjudicator continued and found no likelihood of confusion. Factors militating against confusion included the high visual dissimilarity, the likelihood that many consumers would purchase these goods in brick-and-mortar stores where they could inspect the products, and the insufficient evidence of actual confusion.
  • Passing Off: To succeed here, the Opponent needed to prove goodwill, misrepresentation, and damage.
    • Goodwill: The Opponent claimed significant sales and promotional efforts. However, they failed to provide sufficient evidence of goodwill existing specifically in Singapore at the relevant date (the date of the Applicant’s filing, September 16, 2021). No specific sales figures for Singapore or the period before the relevant date were provided. Advertising evidence covered periods after the relevant date and lacked metrics like “hits” or downloads by Singaporean consumers.
    • Misrepresentation: Because the marks were found to be dissimilar and there was no likelihood of confusion under the previous ground, the claim for misrepresentation also failed.
    • Damage: This was not considered necessary given the failure to prove goodwill and misrepresentation.
    • Conclusion: The passing off ground failed.
  • Well-Known Marks: The Opponent relied on the same evidence as for goodwill to prove its marks were well-known in Singapore.
    • The Adjudicator found this evidence insufficient to show the marks were well-known to any relevant sector of the public in Singapore. Evidence of use and registration in other countries like Taiwan and Hong Kong was not considered relevant without proof that this led to recognition in Singapore. Decisions from foreign tribunals were also not given weight without evidence that similar legal principles applied.
    • The threshold for being “well-known in Singapore” requires recognition by any relevant sector of the public. The threshold for being “well-known to the public at large” (required for Section 8(4)(b)(ii)) is even higher, requiring recognition by most sectors.
    • Conclusion: The Opponent failed to meet either threshold based on the evidence presented. These grounds failed.
  • Bad Faith: Bad faith requires distinct proof of dishonesty or conduct falling short of acceptable commercial behavior.
    • The Opponent alleged the Applicant knew of their marks and intentionally copied them.
    • However, the Adjudicator found no nexus or pre-existing relationship between the parties. The Applicant’s action of applying for the mark was not considered dishonest or commercially unacceptable.
    • Conclusion: The bad faith ground failed.

Significance for Your Business

This case offers several crucial takeaways for businesses, particularly concerning trade mark protection and disputes:

  • Evidence, Evidence, Evidence: This is the most significant lesson. Successfully opposing a trade mark or claiming rights like goodwill or well-known status absolutely requires concrete, specific evidence. General statements about “significant sales” or global presence are not enough. You must provide:
    • Specific sales figures for the relevant goods in Singapore.
    • Sales data broken down by relevant time periods, especially before the date the competitor filed their application.
    • Detailed evidence of marketing and promotional expenditure in Singapore.
    • Proof of the reach and effectiveness of your marketing efforts in Singapore (e.g., website hits, downloads, specific advertising campaigns and their results).
  • Goodwill Must Be Local and Timely: For passing off, goodwill must be proven to exist in Singapore and at the specific date the alleged wrongful act began (the competitor’s filing date).
  • “Well-Known” Status Requires Proof of Recognition in Singapore: Merely being known in other countries is generally not sufficient to prove your mark is well-known in Singapore. You must demonstrate recognition by the public or relevant sectors within Singapore.
  • Visual Impression Matters (Often More Than Aural): While aural similarity is considered, high visual differences between marks can be enough to prevent a finding of overall similarity and likelihood of confusion. Consumers don’t compare marks side-by-side and have imperfect recollection, but they still notice distinct visual elements.
  • Likelihood of Confusion Isn’t Automatic: Even if there’s some similarity between marks and goods, confusion isn’t guaranteed. Factors like how and where consumers typically buy the goods and the level of attention they pay can prevent confusion.
  • Bad Faith Is Difficult to Prove: Allegations of bad faith are serious and require cogent evidence. Simply filing an application for a mark similar to one you know exists is not automatically bad faith; you typically need to show dishonesty or a clear improper motive, often involving a pre-existing link or blatant copying.

In conclusion, the Essity v Tianrong case is a powerful reminder that owning trade mark registrations is only one part of brand protection. Enforcing those rights or relying on common law rights like goodwill requires diligent record-keeping and the ability to produce strong, specific evidence demonstrating the use, reputation, and distinctiveness of your brand in the relevant jurisdiction and at the relevant time. Businesses must be prepared to support their claims with data if they want to successfully challenge competitors.