Sentosa Development Corporation (SDC) has filed a trademark lawsuit against Vela, a group of companies specialising in medical equipment production. This includes Vela Holdings, Vela Operations Singapore, Vela Research Singapore and Vela Diagnostics.
According to a report by The Straits Times on the hearing, this was to stop Vela from using the “Sentosa” name to brand its medical equipment lines testing a range of diseases such as HIV and the Zika virus.
This comes after Vela continued using the “Sentosa” name to brand its products, despite SDC not giving its consent to do so.
Vela’s request to use the name first emerged in 2012 but was subsequently turned down by SDC. According to ST, It then proceeded to write to the Ministry of Trade and Industry (MTI), while attempting to revoke or invalidate SDC’s trademarks through a series of legal actions.
Currently, SDC holds the registered trademark for “Sentosa” not only in Singapore, but in Malaysia, Indonesia and China. It registered the trademark in 2015. As such, SDC has argued that the persistent use of the name in will create misunderstanding that Vela’s products are connected to SDC.
Representatives of the organisation also explained that the use of name would also “dilute or even tarnish” the distinctive character of the trademark. It also argued that Vela had deliberately chosen to “free-ride” on the brand to promote its business which was started in 2011.
In response, Vela has counter sued Sentosa with the argument that there is no evidence that the public will regard the term “Sentosa” as a source of goods and services.
It also said that “Sentosa” does not qualify as a trademark as it is used as a location name, and requested for the court to cancel all trademarks registered by SDC since 2005. Lastly, Vela also claimed that SDC was “abusing the trademark registration system” by “obtaining an illegitimate monopoly over all trade use of the name”, the ST report said.
To this, SDC then countered that it gave consent to other third parties to use the “Sentosa” name, such as tenants and event partners who have lawful reasons to do so.
SDC and Vela were unable to comment on Marketing’s queries as the trial is still ongoing.
In a conversation with Marketing, Dinesh Sandhu, managing director of DIA Group, said that Sentosa is “well within its rights to protect its trademark”. From a branding point of view, the medical equipments business has no relation to the business category of SDC which operates in the tourism sector. He said:
There is no conceivable reason to use the ‘Sentosa’ brand name for a medical equipments product, especially in the local Singapore context.
He added that in the past, SDC had been forthcoming in allowing business partners and entities on its island to adopt the Sentosa name for their respective business. He added that the issue might not have been as prominent, if Sentosa benefited from the brand association.
“That is clearly not the case. As such, it is also about protecting the island’s brand equity as a destination at the end of the day,” Sandhu said.
Also weighing in on the issue is Andrew Crombie, founder of crombie.design, who added that the issue, while seeming unnecessary, is not a surprising move. This is because SDC appears to be doing what any large and well-resourced owner of a trademark would do, which is to flex its muscle and defend its brand turf.
As such, SDC’s grounds for challenge make sense if Vela is deemed to use its mark in a way that dilutes the distinctive character of the well-known mark or takes unfair advantage of the distinctive character of the well-known mark.
“While SDC’s ‘Sentosa’ brand name is a ‘well-known mark’ within the jurisdiction of Singapore, I do not believe SDC has a strong case unless it has registered the Sentosa trademark for use under the medical applications, or services class, which may be unlikely,” Crombie added.
As long as Vela uses the Sentosa name without infringing any of SDC’s trademark territory, Crombie is of the view that is “perfectly fine” to do so. This means ensuring there is no visual “passing-off” in the form of a logo or type style. He added that “Sentosa” is a word in public usage as the Malay word for “peace and tranquillity” which has its own meanings and connotations beyond those that SDC has paid to form.
“The categories of business application are completely different – one is a tourist and residential destination, the other is a genotyping process for identifying HIV and other diseases,” Crombie explained. He added:
A reasonable person would not be at all confused between the two brands or the use of ‘Sentosa’ as a trademark.
To Crombie, a more pertinent question on the matter is questioning the “extent should SDC be granted trademark over a common word (Sentosa) beyond their specific business usage (i.e. destination). He believes SDC has achieved a “distinctive secondary meaning” for the word “Sentosa” in the context of the island.