Japanese giants, Matsushita Electrical Industrial Co. (Matsushita) brought opposition proceedings against the applicants, Pensonic Corporation Sdn Bhd, a Malaysian company that applied to register the mark Pensonic with the device of a letter P (trade mark no. T0503804C) for: "Electrical apparatus and instruments, radio and television receiving apparatus, tape and video recorders and combinations thereof, mechanisms for cassette and cartridge tape recorders, stereophonic sound reproducing apparatus and instruments, aerials, loud speakers, head-phones, microphones, radiogramaphones, sound amplifiers and parts and fittings, irons, electric steam irons, electric dry irons, electric flat irons, calculators; all being goods included in Class 9."
The opponents, Matsushita, relied on their numerous Panasonic marks registered in Class 9 in support of their opposition. In addition to contending that the applicants' mark is confusingly similar to their registered Panasonic mark, the other arguments raised were that Panasonic is a well known mark, the applicants' mark should not be registered on the ground of passing off and Pensonic Corporation's trade mark application was in bad faith.
The Panasonic brand was first used in the US in 1955 and registered in 1957. Matsushita extended its use of the Panasonic brand to numerous countries, including Europe, Japan, South East Asia, China, Middle East and Africa over the years. In Singapore specifically, the earliest Panasonic mark was applied for and registered since 1968 and use of the brand began sometime in 1990.
The Pensonic mark was registered in Malaysia in 1984 and over the years, Pensonic-branded products have been marketed and sold in many hypermarkets, chain stores, wholesale and retail outlets in Malaysia, making the Pensonic Group one of the largest manufacturers of electronic home appliances in Malaysia.
In Singapore, Pensonic Corporation began selling their goods in 1984 but stopped in 1986 when they decided to focus on other larger markets. With the intention to re-emerge in the Singapore market, Pensonic Corporation subsequently applied to register Pensonic in Class 9 on March 23 2005.
Having considered the facts and evidence submitted, the registrar decided in favour of Matsushita, concluding as follows:
1) The marks are confusingly similar.
Having compared the marks, the registrar concluded that the marks were visually dissimilar due to the distinctive P device in the Pensonic mark. Nonetheless, she decided that the marks were aurally and conceptually similar. Aurally, the registrar felt that the device element cannot play any part in the comparison and taking the pronunciations into account, there was not much aural dissimilarity between Pen-so-nic and Pa-na-so-nic. Conceptually, both marks are also similar since they are premised on the idea of sound and Pensonic Corporation's contention that the mark meant Sound of Penang was not convincing since there was not much effort taken to educate consumers on the meaning of their mark.
There was no dispute that the goods in both marks were similar or that the channels of trade of Pensonic Corporation and Matsushita were the same.
In addition to comparing the marks, the registrar examined the average consumer in deciding whether there would be a likelihood of confusion. The question was: would the typical brand conscious consumer, who would check the price, features and functions of a product before buying the product, be confused into thinking that the Pensonic brand is the same as or linked to the Panasonic brand? The registrar felt that the answer would be yes.