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.

The registrar added that if the Pensonic brand had continued to be sold and marketed in the Singapore market beyond 1986, alongside the Panasonic brand when it first entered the Singapore market in 1994, then it is possible that the average Singapore consumer would have been able to distinguish between the marks. However, with only the Panasonic brand having been in the Singapore market since 1994, the average consumer of electronic goods would now be confused if he were to see both brands being sold in the same channels of trade.

2) The Panasonic brand is well known.

Having decided that the marks were essentially the same, the registrar went on to determine whether the Panasonic mark is also well known to the relevant sector of the public in Singapore. She concluded that it is, considering the volume of sales of the Panasonic brand over the years as well as the fact that Panasonic-branded goods would be recognized by those in the immediate chain of distribution and sale of those goods and by members of the public.

The registrar added that use of the later mark Pensonic in relation to like electronic goods would "indicate a connection" between Pensonic Corporation's electronic goods and Matsushita's electric goods, thereby leading to confusion as to the source of the products. This in turn would lead to damage to Matsushita's interests, if the consumer buys a Pensonic product thinking it is in fact a Panasonic product.

The registrar did not go on to decide on the issues of dilution and passing off since she had ruled in favour of the opponent on the issues of confusing similarity of the marks and well known status of the Panasonic brand in Singapore. With respect to bad faith, the registrar felt that there was insufficient evidence to make such an inference.

It is mooted that Pensonic Corporation may have succeeded if only they had done more to educate the public that their mark meant "Sound of Penang" or had continued to sell their products in Singapore beyond 1986 (thereby possibly succeeding on the ground of honest concurrent use). These two factors led to their Pensonic brand being unknown to the Singapore consumer and to Panasonic superseding it in popularity and brand recognition in Singapore. So while the Pensonic and Panasonic brands may co-exist in other countries, they are deemed unable to do so in Singapore. It is not surprising that the registrar decided that the Panasonic brand is well known in Singapore and that the re-emergence of the Pensonic brand into Singapore now would no doubt cause confusion in the market, thereby "hurting" the Panasonic brand. Perhaps, the fate of the Pensonic mark would have been different in Singapore if its owner had not left the Singapore market when it did or at least attempted to re-enter the Singapore market much earlier than 2005.

Kevin Wong and Kiran Dharsan

Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd
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Singapore 189721
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