Rovio v Kimanis: Trade Mark Dispute over 'Angry Bite' & 'Angry Birds' Marks

Rovio Entertainment Ltd, the creator of the Angry Birds game, appealed against the decision of the principal assistant registrar of trade marks, who dismissed their opposition to Kimanis Food Industries Sdn Bhd's trade mark application for "Angry Bite". Rovio argued that the "Angry Bite" mark was similar to their registered "Red Bird Mark" and "Angry Birds Word Mark", potentially causing confusion and infringing on their copyright. The High Court of Singapore, presided over by Justice George Wei, dismissed the appeal, finding that the marks were dissimilar and there was no likelihood of confusion or copyright infringement. The court also addressed whether two separately registered trade marks can be combined to form a composite mark for comparison purposes, ultimately deciding against it.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Appeal Dismissed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Written Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Rovio Entertainment Ltd, creator of Angry Birds, opposed Kimanis Food Industries' 'Angry Bite' trade mark. The High Court dismissed the appeal.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
ROVIO ENTERTAINMENT LTDAppellantCorporationAppeal DismissedLost
KIMANIS FOOD INDUSTRIES SDN BHDRespondentCorporationOpposition DismissedWon

3. Judges

Judge NameTitleDelivered Judgment
George WeiJudgeYes

4. Counsels

Counsel NameOrganization
Moiz Haider SithawallaTan Rajah & Cheah
Tham Chang XianTan Rajah & Cheah
Teo Kwan Soon PaulRavindran Associates

4. Facts

  1. Rovio is a software development and entertainment company known for the Angry Birds game.
  2. Kimanis Food Industries is a snack food manufacturer based in Malaysia.
  3. Rovio owns registered trade marks for "Red Bird Mark" and "Angry Birds Word Mark".
  4. Kimanis applied to register the "Angry Bite Mark" for snack foods.
  5. Rovio opposed the registration based on similarity, likelihood of confusion, and copyright infringement.
  6. The Principal Assistant Registrar dismissed Rovio's opposition.
  7. Rovio appealed to the High Court.

5. Formal Citations

  1. Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd, TA No 11 of 2014, [2015] SGHC 216
  2. Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd, , [2014] SGIPOS 10

6. Timeline

DateEvent
Angry Birds game first released
Priority Claim for Red Bird Mark and Angry Birds Word Mark
Date of Filing for Red Bird Mark and Angry Birds Word Mark
Kimanis Food Industries Sdn Bhd applied to register the Angry Bite Mark
Judgment reserved

7. Legal Issues

  1. Trade Mark Infringement
    • Outcome: The court found no trade mark infringement as the marks were dissimilar and there was no likelihood of confusion.
    • Category: Substantive
    • Sub-Issues:
      • Similarity of marks
      • Likelihood of confusion
      • Goodwill
      • Misrepresentation
      • Damage
  2. Copyright Infringement
    • Outcome: The court found no copyright infringement as there was no proof of copying a substantial part of the artistic works.
    • Category: Substantive
    • Sub-Issues:
      • Subsistence of copyright
      • Originality
      • Copying of a substantial part
  3. Passing Off
    • Outcome: The court found no passing off as there was no misrepresentation leading to a likelihood of confusion and damage.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage

8. Remedies Sought

  1. Prevention of Trade Mark Registration

9. Cause of Actions

  • Trade Mark Infringement
  • Copyright Infringement
  • Passing Off

10. Practice Areas

  • Trade Mark Opposition
  • Intellectual Property Litigation

11. Industries

  • Entertainment
  • Food Manufacturing

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appealCourt of AppealYes[2014] 1 SLR 911SingaporeAffirmed the step-by-step approach in assessing similarity of marks, similarity of goods or services, and likelihood of confusion.
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and anotherHigh CourtYes[2013] 1 SLR 489SingaporeDiscussed the idea of royalty conveyed by the “ST REGIS” trade mark and the use of the fleur-de-lis device.
Infamous Nut Co Ltd’s Trade MarksUK Trade Mark RegistryYes[2003] RPC 7United KingdomAddressed the question of whether there was a likelihood of confusion under s 5(2)(b) of the UK’s Trade Mark Act when the opponent relies on proprietorship of more than one earlier trade mark.
McDonald’s Corp v Future Enterprises Pte LtdCourt of AppealYes[2005] 1 SLR(R) 177SingaporeConsidered the similarity between the marks in question under s 15 of the Old TMA, taking into account the fact that McDonald’s logo (the golden arches) was often used with McDonald’s registered trade marks even though the logo does not form a part of the registered trade marks.
The Polo/Lauren Co. LP v Shop in Department Store Pte LtdCourt of AppealYes[2006] 2 SLR(R) 690SingaporeApplied the three-step approach and affirmed the High Court’s finding that the sign “POLO PACIFIC” was not similar to “POLO”. The Court of Appeal also found that there was no likelihood of confusion.
10 Royal Berkshire Polo Club Trade MarkAppointed PersonYes[2001] RPC 32United KingdomThe court found that the mark “POLO” was not similar to “10 Royal Berkshire POLO CLUB” even though the evidence before the Appointed Person established that the average consumer would expect “POLO” brand toiletries to come directly or indirectly from the same undertaking.
Time Inc. v Li San ZhongIntellectual Property Office of SingaporeYes[2014] SGIPOS 14SingaporeThe conclusions of the principal assistant registrar in that case were based largely on the PAR’s decision in our present case
Wagamama Ltd v City Centre Restaurants plcUnknownYes[1995] FSR 713UnknownThe similarity of marks comparison is “more a matter of feel than science”
Future Enterprises Pte Ltd v McDonald’s Corp.Court of AppealYes[2007] 2 SLR(R) 845SingaporeAn appellate court should not disturb the findings of fact of a trade mark tribunal unless there is a material error of principle.
SC Prodal 94 SRL v Spirits International NVHigh Court of JusticeYes[2003] EWHC 2756 (Ch)England and WalesIt is not the duty of this court to overturn a decision of the Trade Mark Registry simply because it comes to the conclusion that it might have decided the case differently.
Hai Tong Co Pte Ltd v Ventree Singapore Pte Ltd and another and another appealCourt of AppealYes[2013] 2 SLR 941SingaporeAddressed the viewpoint the court should assume when assessing similarity and the likelihood of confusion.
Sarika Connoisseur Cafe Pte Ltd v Ferrero SpACourt of AppealYes[2013] 1 SLR 531SingaporeConcerned with the interpretation of s 55(2), which gives the proprietor of a well known trade mark the right to “restrain by injunction the use in Singapore, in the course of trade and without the proprietor’s consent, of any trade mark which, or an essential part of which, is identical with or similar to the proprietor’s trade mark, in relation to identical or similar goods or services, where the use is likely to cause confusion”
Novelty Pte Ltd v Amanresorts Ltd and anotherCourt of AppealYes[2009] 3 SLR(R) 216SingaporeEmphasised that pursuant to s 2(7)(a) of the TMA, the trade mark need only be well known to “any relevant sector of the public” in Singapore to be deemed “well known in Singapore”.
Mars Australia Pty Ltd v Delfi Chocolate Manufacturing SAAustralian Trade Marks OfficeYes[2014] ATMO 113AustraliaThe court stated that if the reputation in the “MALTESERS” trade marks were taken into consideration (coupled with the recognition of the Australian consumer’s imperfect recollection), this would tend to reduce the likelihood of deception or confusion between it and the applicant trade mark, “MALTITOS”.
The CIR Muller & Co’s Margarine LtdHouse of LordsYes[1901] AC 217United KingdomDefined goodwill as “the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom…”
CDL Hotels International Ltd v Pontiac Marina Pte LtdCourt of AppealYes[1998] 1 SLR(R) 975SingaporeAcknowledged that a “valuable demand may be created in a product or business prior to its being monetised.”
Jamal Abdulnaser Mahmoud Al Mahamid v Global Tobacco Manufacturers (International) Sdn BhdHigh CourtYes[2015] SGHC 42SingaporeGoodwill may be shown through various means, such as sales figures. The court also noted that sales or evidence of marketing alone does not establish goodwill.
Wild Child Trade MarkAppointed PersonYes[1998] RPC 455United KingdomThe opponent’s evidence, which comprised two declarations from the opponent’s managing director on the use of the earlier mark, did not clearly establish use of the mark as a trade mark and was an insufficient basis for a claim in passing off.
Reckitt & Coleman Products Ltd v BordenUnknownYes[1990] RPC 341UnknownTo succeed in passing off, aside from goodwill, it is necessary to show: (a) a misrepresentation by the defendant (whether intentional or not) leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the plaintiff; and (b) damage or the likelihood of damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.
800-Flowers Trade MarkUnknownYes[2000] FSR 697England and WalesStressed the importance of questions such as the purpose of the website and advertisement, and who are the intended customers.
Euromarket Designs Inc v PetersUnknownYes[2001] FSR 20England and WalesStressed the importance of questions such as the purpose of the website and advertisement, and who are the intended customers.
Starbucks (HK) Ltd v British Sky Broadcasting Group PLCSupreme CourtYes[2015] UKSC 31United KingdomIt is at least necessary to show that some form of commercial activity is carried out in the relevant jurisdiction, which could include customers making telephone or online bookings in that jurisdiction for services overseas
PT Lea Sanent v Levi Strauss & Co.Intellectual Property Office of SingaporeYes[2006] SGIPOS 6SingaporeIn commenting on the phrase “liable to be prevented” by the law of copyright in s 8(7)(b) of the TMA, the registrar held that “the placement of the word “liable” sets the level of inquiry at a speculative level”.
Campbell’s Trade MarkUK Trade Mark RegistryYes[2008] ETMR 56United KingdomThe registered trade mark in question was the title “The Official Guide to International Women’s Month” in the form of a figurative, stylised trade mark. An application for a declaration of invalidity was brought by the applicant under, inter alia, s 5(4)(b) TMA UK on the ground that the use of the trade mark was liable to be prevented by virtue of copyright.
Re Team Lotus Mark ApplicationUnknownYes[1999] ETMR 669UnknownThe opponent succeeded in opposing the registration of the applicant mark. The opponent claimed ownership of the copyright in various marks, and the applicant did not question his assertion of ownership.
King Features Syndicate, Inc v O and M Kleeman, LtdHouse of LordsYes[1941] AC 417United KingdomA dispute arose over whether the defendant had infringed the copyright in cartoon drawings of “Popeye the Sailor Man.”
Kenrick & Co v Lawrence & CoQueen's Bench DivisionYes(1890) 25 QBD 99England and WalesAddressed the assessment of substantiality when the author’s expression over and above the underlying idea is simple.
Politechnika Ipari Szovetkezet v Dallas Print Transfers LtdUnknownYes[1982] FSR 529UnknownAddressed the assessment of substantiality when the author’s expression over and above the underlying idea is simple.
Spectravest Inc v Aperknit LtdUnknownYes[1988] FSR 161UnknownThe case concerned copyright in drawings (design) of cats sitting in various positions, all wearing boots. The defendants produced drawings (design) of dogs in a variety of positions also in boots.
Anheuser-Busch v Budejovicky BudvarUnknownYes[1984] FSR 413UnknownThe mere proof of a few occasional sales to a very limited group of people such as staff of a foreign embassy is unlikely to be enough to prove that the mark is recognised as a badge of recognition by the public or a section of the public

13. Applicable Rules

Rule Name
Trade Marks Rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap. 332, 2005 Rev Ed)Singapore
Copyright Act (Cap 63, 2006 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trade Mark
  • Copyright
  • Passing Off
  • Likelihood of Confusion
  • Similarity of Marks
  • Goodwill
  • Angry Birds
  • Angry Bite
  • Red Bird Mark
  • Angry Birds Word Mark
  • Artistic Works

15.2 Keywords

  • trade mark
  • copyright
  • passing off
  • intellectual property
  • Rovio
  • Kimanis
  • Angry Birds
  • Angry Bite

17. Areas of Law

Area NameRelevance Score
Trademarks90
Copyrights80
Commercial Law30
Contract Law20

16. Subjects

  • Trade Mark Opposition
  • Copyright Infringement
  • Intellectual Property