NCL Corporation Partially Successful In Opposing Protection of Marks by Norwegian Brand Ltd

Case:

NCL Corporation v Norwegian Brand Ltd. [2023] SGIPOS 5

 

Tribunal/Court:

Intellectual Property Office of Singapore (“IPOS”)

 

Type:

Trade Mark Opposition

 

Applicant:

Norwegian Brand Ltd. (“the Applicant”) operates international air travel routes. It is organised in Ireland, with its parent company headquartered in Norway.

 

Opponent:

NCL Corporation (“Opponent”) operates cruise ships. It is organized in Bermuda.

 

Background:

This case involved two parties with established businesses in the global travel industry. One provides air travel services and the other operates cruises. They share a common word in their respective trade marks, namely, the word “Norwegian”. There is some overlap between the cruise company’s services and the services claimed by the airline company in its international registrations designating Singapore.

 

The Applicant sought to protect its following international trade mark registrations in Singapore:

 

( collectively “Applicant’s Marks”)

 

The Opponent on the other hand has a family of marks (not registered in Singapore) namely “NORWEGIAN”, “NORWEGIAN CRUISE LINE”, “NORWEGIAN STAR”, “NORWEGIAN EPIC”, “NORWEGIAN PEARL”, “NORWEGIAN JEWEL”, “NORWEGIAN JADE” and “THE HAVEN BY NORWEGIAN” with primary focus on the two marks “NORWEGIAN” and “NORWEGIAN CRUISE LINE” (“main NORWEGIAN Marks”) (collectively “Opponent’s Marks”). 

 

The Opponent opposed the protection of the Applicant’s Marks in Singapore relying on two grounds namely:

 

(a) The Opponent’s Marks are “Well Known Marks”
(b) The Applicant was “passing off”  as the Opponent

 

Decision:

 

Whether the Opponent’s marks are well known

 

After reviewing the evidence and considering the parties’ submissions, the Registrar found that:

 

The Opponent’s revenue figures, advertising and promotion, and email and direct mail campaigns, show that it has a tangible business in Singapore which is promoted to an inconclusive extent. However, this alone does not establish that the Opponent’s Marks are well known in Singapore.

 

The Opponent’s evidence does not show how and to what extent it impacts the relevant sector of the public in Singapore such that the Opponent’s Marks, or at least the main NORWEGIAN Marks, are well known to it (as opposed to being merely known).

 

Whether the tort of passing off can be established.

 

In relation to this ground there are 3 elements to be established:

 

Goodwill
Misrepresentation; and
Damage

 

On the assessment of Goodwill

 

The Applicant accepts that the Opponent has goodwill in its business.

 

On the assessment of Misrepresentation

 

Consideration was given to the memorable and dominant elements of both parties marks, and whether there were overlapping services such as “travel services” and “travel booking, reservation or information services relating to travel”.

 

The Registrar also considered market realities in the travel industry, such as the availability of “fly-cruise” packages. The average consumer may be confused into thinking that the Applicant’s services came from a source that is linked to the Opponent

 

Singapore’s Trade Mark Act prohibits the registration of a trade mark if its use in Singapore is liable to be prevented by the law of passing off.

 

With the qualifying phrase “none of the aforesaid related to cruise services” applied to the opposed specifications, the use of only in relation to the qualified services would address the concern of confusion to the public.

 

The  Registrar considered if the main NORWEGIAN Marks are distinctive of the Opponent’s cruise services. The Registrar found that the Opponent had not demonstrated, on the evidence, that “NORWEGIAN” has acquired distinctiveness. Additionally, the words “CRUISE LINE” are also descriptive of the services offered by the Opponent.  Overall, the combination of these word elements to form the mark “NORWEGIAN CRUISE LINE” as a whole is of low distinctiveness.

 

The Registrar was of the view misrepresentation was not established

 

On the assessment of Damages

 

Since misrepresentation was not established, there was no need to address the issue of damage

 

Held:

 

The opposition failed under the first ground and partially succeeded under the second ground but only with the outcome that the opposed specifications are qualified.

 

Points of interest:

 

The proceedings clarified/affirmed the following:

 

Revenue figures, advertising and promotion, and email and direct mail campaigns, is inconclusive to establish if a mark is “Well Known” in Singapore. Instead, such data  show sthat ia tangible business in Singapore  exist. 

 

In determining good will, distinctiveness is generally considered in relation to the class of consumers of the goods in question.