Are tigers and pumas similar? While both belong to Felidae (the cat) family, they are clearly different animals. In Singapore, that distinction extends beyond biology, and into trade mark law.
My colleague, Megan, previously wrote about Puma’s opposition to Tiger Woods’ trade mark application for the Sun Day Red tiger logo in the United States. Please see https://www.marks-clerk.com/insights/latest-insights/102jsn1-legal-challenges-mount-over-tiger-woods-brand-sun-day-red/ for this article. A similar opposition was filed by Puma against the same application in Singapore. Much like their real-life counterparts, the Registrar of Trade Marks found that the Puma logo and Tiger Woods’ tiger logo to be dissimilar.
In the decision issued by the Registrar, it was emphasised that care must be taken to avoid both under-protection and over-protection of earlier marks. Protection should not be so narrow that it applies only to a specific depiction of an animal, nor so broad that it extends to any depiction of an animal.
In this case, the Registrar first considered the distinctiveness of the Puma logo. For context, a mark which is highly distinctive would enjoy a high threshold before a competing sign will be considered dissimilar to it. In this case, the Registrar found that the Puma logo has a normal level of distinctiveness, which means that it will enjoy only a normal threshold before a competing mark (in this case, Tiger Woods’ tiger logo) will be considered dissimilar to it.
In comparing both parties’ marks, the Registrar found the Puma logo to be visually and conceptually distinct from Tiger Woods’ tiger logo, even though both marks feature depictions of leaping cats. The competing marks were held to be more dissimilar than similar. The Registrar highlighted differences in composition, shape, features, and movement, all of which contribute to the overall impression of the marks. Aural similarity is not considered here, since the case concerned 2 device marks with no textual elements.
Notably, Tiger Woods’ tiger logo features thick lines forming distinctive tiger stripes, an element unlikely to be overlooked, even with imperfect recollection. By contrast, the Puma logo consists of a sleek silhouette of a leaping cat, rendered as a simple outline. These visual distinctions were considered significant and memorable.
Puma also argued that its strong reputation in Singapore increased the likelihood of confusion between both marks. However, this argument was rejected. The Registrar reiterated an established principle in Singapore, that a strong reputation does not automatically increase the likelihood of confusion. In fact, it can have the opposite effect.
This principle was illustrated in multiple cases, including a previous case involving Apple Inc.’s opposition to the stylized mark “WAPPLES”. Please see https://www.marks-clerk.com/insights/latest-insights/102jsgm-what-happens-when-a-well-known-brand-is-unintentionally-embedded-in-a-coined-word/ for a discussion on that case, and in which our Singapore office represented the applicant of the mark “WAPPLES”. In that case, the Registrar found that the widespread recognition of Apple’s brand meant that consumers were less, not more, likely to confuse to “WAPPLES” with ”APPLE”. Similarly, in this case, the Registrar found that the reputation in Puma’s marks diminishes the likelihood that an average consumer would confuse Tiger Wood’s tiger logo with the Puma logo. This is because in Singapore, the use of Puma’s marks is inextricably associated with the text “PUMA”, whether in composite form or situated close by. As such, the visual and conceptual impression of Puma’s marks is firmly tied to a puma.
Ultimately, Puma’s opposition failed not only on the ground of likelihood of confusion but also under claims of passing off and protection of well-known marks. The decisive factor across all grounds was the dissimilarity between the marks, and, as a result, the lack of a likelihood of confusion.