Bridgestone vs Deestone: Thai tyre maker allowed to keep brand name

Bridgestone (left) had made an application under the Singapore Trade Marks Act relating to Deestone's use of what Bridgestone claimed constitutes its family of "stone" marks.
Bridgestone (left) had made an application under the Singapore Trade Marks Act relating to Deestone's use of what Bridgestone claimed constitutes its family of "stone" marks.PHOTOS: FACEBOOK/BRIDGESTONE, FACEBOOK/DEESTONE

SINGAPORE - The Intellectual Property Office of Singapore (IPOS) on Tuesday allowed Thai tyre maker Deestone to retain its namesake brand despite opposition from Japanese tyre manufacturer Bridgestone Corporation, which owns the Bridgestone and Firestone tyre brand.

This follows a failed application by Bridgestone under the Singapore Trade Marks Act relating to Deestone's use of what Bridgestone claimed constitutes its family of "stone" marks. Deestone, incorporated in Thailand in 1978, had applied to trademark its Deestone brand on Feb 3, 2015.

The family of marks doctrine provides that where another party also applies for registration of a mark incorporating common characteristic of that family, the public may assume that the new mark is an addition to the family of marks, and be confused or deceived if that is not the case.

IPOS's principal assistant registrar of trade marks Tan Mei Lin - the case's hearing officer - held that while the marks were owned by two separate legal entities, this was not necessarily fatal to Bridgestone's case that they owned a family of marks, IPOS said in a statement on Tuesday (April 3).

Moreover, IPOS found that Bridgestone's evidence fell short of supporting a finding that the Bridgestone and Firestone brands were used and recognised by consumers as a family of marks.

The evidence showed that Bridgestone and Firestone had been used and promoted as separate and independent brands and no evidence was adduced to show that there were attempts to educate consumers that the two brands come from the same corporate family, IPOS said.

Ms Tan found that the distinctiveness of the Bridgestone and Firestone brands lies in the marks as wholes and therefore should be compared to the application mark as wholes without giving special regard to any particular element.

With regard to the similarity of the marks, IPOS found that the Deestone brand was dissimilar from both brands visually and aurally.

As marks-similarity is a necessary requirement for all the grounds of opposition, the fact that the application mark was found to be more dissimilar than similar to the Bridgestone and Firestone marks meant that the opposition failed on all grounds, IPOS concluded.