Spat over hotel name: Park Regis denied trademark in Singapore

Park Regis in Merchant Road and St Regis in Tanglin Road (above). Their spat over the use of the word “Regis” ended with the Court of Appeal denying Park Regis the right to register its trademark here. -- ST PHOTO: ASHLEIGH SIM
Park Regis in Merchant Road and St Regis in Tanglin Road (above). Their spat over the use of the word “Regis” ended with the Court of Appeal denying Park Regis the right to register its trademark here. -- ST PHOTO: ASHLEIGH SIM
Park Regis in Merchant Road (above) and St Regis in Tanglin Road. Their spat over the use of the word “Regis” ended with the Court of Appeal denying Park Regis the right to register its trademark here. -- ST PHOTO: ASHLEIGH SIM
Park Regis in Merchant Road (above) and St Regis in Tanglin Road. Their spat over the use of the word “Regis” ended with the Court of Appeal denying Park Regis the right to register its trademark here. -- ST PHOTO: ASHLEIGH SIM

Its similarity to St Regis may suggest two hotels are linked: Appeals court

Not only does Park Regis sound a lot like St Regis, it also could suggest that the two hotels are linked.

These are the reasons why a high-profile spat over the use of the word "Regis" ended last Friday with the Court of Appeal denying Park Regis the right to register its trademark here.

The ruling marks the first time that the Sydney-based StayWell Hospitality Group, which started with a Park Regis in Sydney in 1968 before expanding in Australia and abroad, has a decision against its mark.

According to intellectual property lawyer Wong Siew Hong, failure to register a trademark means its use could lead to a trademark infringement suit. "The practical effect is that Park Regis will have to cease using the name," he said.

StayWell's executive director and corporate counsel Richard Doyle pointed out yesterday that the group did register a form of the Park Regis trademark here in 2010 without objection.

This trademark comprises the words Park Regis in English and Chinese next to each other, he said.

"StayWell is in the process of seeking legal advice relating to the court decision," he added, after expressing "extreme" disappointment at the decision.

He pointed out how the chain successfully overcame similar objections in Indonesia and Britain.

The case was sparked in 2008, when StayWell applied to register a trademark for Park Regis, the four-star hotel it opened in 2010 in Merchant Road, with the Intellectual Property Office of Singapore.

But the application was opposed by US-based Starwood Hotels & Resorts Worldwide together with its subsidiary Sheraton International, which owns St Regis.

Starwood had registered the St Regis mark in Singapore in 1995, before opening the luxury six-star hotel in Tanglin in 2008. Regis is the Latin word for royal.

In 2011, a Principal Assistant Registrar of Trade Marks ruled that the public was likely to be confused by the two names.

This was overturned in the High Court last year when StayWell appealed. Then came the Court of Appeal hearing in July.

In a 90-page judgment, Chief Justice Sundaresh Menon and Appeal Judges Chao Hick Tin and V. K. Rajah found there was no visual similarity between the two marks.

There was, however, some degree of "conceptual similarity and a significant degree of of aural similarity".

But how much confusion will these cause?

The High Court believed very little, because the two hotels marketed themselves differently, given that one was four- star and the other six.

The appeals court disagreed.

"Confusion in trademark law extends to consumers believing that the users of the competing market are economically linked," wrote Chief Justice Menon.

"We find it not unlikely that the public would be induced by the similarity of the marks and the common industry in which they are used into believing that there is at least some economic link between the St Regis Singapore and the Park Regis Singapore.

"This is especially so given that it is common for large hotel chains to operate differently branded hotels carrying different logos, united only by use of a common denominator in their names."

The court noted the common denominator serves as "an assurance of source and therefore quality", pointing to examples such as "Hyatt Regency, Grand Hyatt and Park Hyatt".

vijayan@sph.com.sg