Lessons from Angry Birds
Background to the Angry Birds v Angry Bite trade mark
An appeal from the decision of the Registrar refusing an opposition by Rovio Entertainment Ltd (“Rovio”) to registration of a composite mark by Kimanis Food Industries Sdn Bhd (“Kimanis”).
Kimanis, a snack food manufacturer, sought registration of the following trade mark in relation to a range of snack foods in class 30:
Rovio, the developer of the popular Angry Birds mobile phone game, opposed registration based on its ownership of the following registered trade marks:
- , “Angry Birds word mark” in classes 3, 9, 14, 16, 18, 20,21, 24, 25, 27, 28,29, 30, 32, 33, 34, 35, 36, 38, 41 and 43
- “Red Bird mark” in classes 3, 9, 14, 16, 18, 20,21, 24, 25, 27, 28,29, 30, 32, 33, 34, 35, 36, 38, 41 and 43
and ownership of copyright in:
Evidence was filed showing use of Rovio’s marks on a wide range of merchandise including snacks and fast food but limited evidence of marketing in Singapore.
The trade mark claim made by Angry Birds developer
Rovio relied on grounds of opposition based on:
- similarity of marks
- well-known marks
SIMILARITY OF MARKS: The Court considered the “similarity of marks” and the “likelihood of confusion”, upholding the Registrar’s finding that Rovio failed on both elements.
Similarity between the opposing Angry Birds and Angry Bite Marks
Rovio failed in the threshold requirement of ownership of an earlier trade mark similar to the opposed mark. The Court found that the Angry Bite mark was not similar to either of Rovio’s registered trade marks, finding no reason to disturb the Registrar’s findings that:
- the Red Bird mark and the Angry Bite mark are visually dissimilar on the whole
- there is no aural similarity between the Red Bird mark and the Angry Bite mark because the Red Bird mark has no aural component
- the Angry Bite mark does not convey the impression or idea of a bird and the shared emotion of anger is not sufficient to create conceptual similarity
- visually there is some similarity between the Angry Bite mark and the Angry Birds word mark due to the shared letters “ANGRY BI” but the pictorial elements of the Angry Bite mark clearly distinguish it
- the ANGRY element is aurally identical while BIRD and BITE contain some aural dissimilarity
- while the emotion of anger is shared by the Angry Birds word mark and the Angry Bite mark, the marks are conceptually dissimilar on the whole
Critically, despite extensive argument to the contrary, the Court held that it was not entitled to consider the similarity of the Angry Bite mark to a mark created by the combination of Rovio’s registered trade marks, as to do so was not supported by the TMA or precedent and would deprive members of the public of objective certainty regarding which trade marks are protected by registration. While acknowledging that the definition of an “earlier trade mark” leaves open the possibility of relying on an unregistered well-known trade mark, the Court found that Rovio had not adduced sufficient evidence to show that a composite of its marks had acquired the status of an unregistered trade mark.
Likelihood of Confusion not apparent
The Court went on to consider whether there was a likelihood of confusion. The Court affirmed the Registrar’s position on the whole, finding that the Registrar was justified in finding that there was no likelihood of confusion, and the failure of the ground of opposition for the following reasons:
- the likelihood of confusion must be between the opposed marks and the registered marks and it was not relevant to take into account extraneous factors such as the colour of the packets, or the depiction of indicia (a catapult) on Kimanis’ packaging suggesting an association with Rovio’s products. In the absence of relevant trade mark registrations, Rovio did not have proprietary rights over the colour of packaging or the catapult.
- the relevance of reputation in the earlier trade marks to the assessment of the likelihood of confusion was found to turn on the facts, and the Registrar’s finding that in this case the reputation in the ANGRY BIRD device tended to reduce the likelihood of confusion was upheld.
- the Court disagreed with the Registrar’s finding that the ingestible nature of the goods made it more likely that consumers would take extra care, but rather found this to be a neutral factor
WELL-KNOWN MARKS: The Court considered whether there was a “well-known mark”, the “similarity” between the marks and whether use would indicate a “connection” between the parties, upholding the Registrar’s finding on each point.
Well-known marks in Singapore
The opposition ground requires an earlier trade mark that is well-known in Singapore. The Court found no reason to disturb the finding that Rovio’s marks were “well-known in Singapore” at the date of application for the Angry Bite mark.
Similarity of the whole or an essential part to an earlier trade mark
The Trade Marks Act requires that the “whole or an essential part of the trade mark” be identical or similar to an earlier trade mark. The principles that apply are the same as those considered in relation to “similarity of marks” and the Court affirmed the Registrar’s finding that the marks are not similar.
Whether use of the Angry Bite Mark indicates a connection between the parties
The Court upheld the Registrar’s finding that there was no confusing connection for the same reasons that there was no “likelihood of confusion”.
Angry Birds copyright claim against Angry Bites
Rovio argued that the Angry Bite mark infringed copyright in both the Red Bird mark and the copyright work comprising the stylised version of the ANGRY BIRDS words.
US and China copyright registration certificates were held not to be determinative in establishing subsistence of copyright but, on the balance of probabilities it was found that copyright subsists and that the works are owned by Rovio.
The designer of the Angry Bite mark was inspired by Rovio’s ANGRY BIRDS marks but did not copy them – the concept or idea was borrowed but the detailing and features are different. There was no evidence of copying of a substantial part so no copyright infringement was found.
The passing off claim
The Trade Marks Act provides that a mark shall not be registered if “its use in Singapore is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade”. In evaluating this ground the Court affirmed that:
- it must consider whether the normal and fair use of the applicant’s mark in respect of the goods and services for which the mark is sought to be registered would result in passing off;
- the burden of establishing the ground is borne by the opponent
- the determination is to be made on the balance of probabilities
- there must be at least a prima facie case that a passing off claim would succeed, requiring sufficient evidence to establish a prima facie case on goodwill, misrepresentation and damage
Evidence of substantial downloads of the Angry Bird game in Singapore constitutes business activity in Singapore, creating goodwill in Singapore in Rovio’s Red Bird mark and Angry Bird word mark.
The Court upheld the Registrar’s finding that there is no misrepresentation in the Applicant using the Angry Bite mark for broadly the same reasons for which it was found that there was no “likelihood of confusion” and no “confusing connection”.
It was not relevant to this finding that Kimanis had acknowledged that the Angry Bite mark was inspired by “Angry Birds”.
There was minimal evidence of use of marks by Rovio in relation to snack foods in Singapore prior to the date of application for the Angry Bite Mark.
Take home messages for trade mark owners
The outcome of the opposition turned on the opponent’s registered rights. This decision confirms that the Singapore Courts and Trade Mark Office are not entitled to consider the relevance of composite rights which might arguably be derived from a combination of registered marks.
It is important for trade mark owners to carefully develop the best protection strategies for trade marks and, where appropriate, to seek registration of individual elements and composite marks and aspects of packaging and colour.