IPOS dismisses trade mark opposition on ground that competing marks are not similar: Allen & Gledhill

29 June 2026

Merck KGaA v Pfizer Inc [2026] SGIPOS 7

In Merck KGaA v Pfizer Inc, the Intellectual Property Office of Singapore (“IPOS”) dismissed an opposition application filed under the Trade Marks Act 1998 (“Act”), finding that the competing marks of two pharmaceutical companies were not similar to each other.

Allen & Gledhill Partner Toh Jia Yi successfully defended Pfizer Inc in the proceedings.

Facts

On 1 February 2024, the applicant, Pfizer Inc (“Applicant”), filed an application to register a trade mark comprising the word “ABRYSVO” together with a circle logo (“Application Mark”). The Application Mark was opposed by Merck KGaA (“Opponent”), which was the registered proprietor of a trade mark comprising the word “MAVENCLAD” together with a circle logo (“Opponent’s Mark”). The competing marks are as follows:

Application Mark	Opponent’s Mark

At the time of the decision, the Opponent’s Mark was used only on prescription medicine for the treatment of multiple sclerosis. The Application Mark was first adopted by the Applicant in 2023, in the United States, in relation to vaccines against the respiratory syncytial virus, which were administered through injection by medical professionals and were sold in Singapore in or around January 2025.

The Opponent relied on section 8(2)(b) of the Act for the opposition, among other grounds.

Ground of opposition under section 8(2)(b) of the Act

Section 8(2)(b) of the Act provides:

“A trade mark must not be registered if, because … it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public.”

As set out in the landmark decision of the Singapore Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc & Anor and another appeal [2014] 1 SLR 911 (“Staywell”), in order to succeed in an opposition under section 8(2)(b) of the Act, the Opponent must establish that:

(a) the competing marks are similar;

(b) the goods and services of the competing marks are identical or similar; and

Each of these conditions must be established, and they are assessed step by step.

Visual similarity

The parties did not dispute that the Opponent’s Mark possessed a high degree of inherent technical distinctiveness as a whole. The parties diverged, however, on the issue of non-technical distinctiveness and, in particular, on which was the dominant and distinctive component of the Opponent’s Mark.

The Principal Assistant Registrar (“PAR”) found the textual component, and not the circle logo, to be the dominant and distinctive component of the Opponent’s Mark. The PAR disagreed with the Opponent’s submission that, being an invented word, “MAVENCLAD” would be unfamiliar to consumers and therefore difficult to recall, such that consumers would instead be drawn to the familiar and recognisable element, in this case the circle. The PAR stated that there was no general rule that invented words, by virtue of being unfamiliar, are difficult for consumers to recall. Moreover, even where a word is difficult, consumers would not simply disregard it, particularly where, as was the case with the Opponent’s Mark, the word is not negligible and is highly distinctive.

The PAR also found that the Opponent’s circle logo was a simple device that evoked no particular concept for the average consumer and was more likely to be perceived as a decorative element than as an element indicating commercial origin. In contrast, the word “MAVENCLAD” was long, the font used was large and clear, and the word had a high degree of technical distinctiveness.

Having found the word “MAVENCLAD” to be the dominant and distinctive component of the Opponent’s Mark, the PAR proceeded to compare the competing marks visually. The PAR found that the textual component was also the dominant and distinctive component of the Application Mark, for the same reasons that the PAR found in relation to the Opponent’s Mark.

The PAR disagreed with the Opponent’s submission that the marks were visually similar on the basis of a striking visual similarity between the Applicant’s and the Opponent’s circle logos, which were said to be identical in concept (consisting of a series of arcs set in a concentric circle) and very similar in size. The PAR stated that visual similarity was to be assessed by examining each of the marks in question as a whole, bearing in mind their dominant and distinctive components and by reference to the overall impressions created by the mark or signs.

Having found that the dominant and distinctive components of the competing marks lay in their respective word elements, “ABRYSVO” and “MAVENCLAD”, the Opponent’s case that the marks were visually similar on account of the circle logos necessarily failed.

Aural similarity

The parties agreed that the marks were aurally dissimilar.

Conceptual similarity

The PAR found that as the circle logos in both the Opponent’s Mark and the Application Mark were simple devices that evoked no particular concept for the average consumer, their contribution to the conceptual character of each mark as a whole was negligible. In relation to the textual components, both “ABRYSVO” and “MAVENCLAD” were invented words that carried no meaning and conveyed no ideas or association. The PAR stated that where the dominant and distinctive components of competing marks are meaningless invented words, there is neither conceptual similarity nor conceptual dissimilarity between them, i.e. the marks are conceptually neutral.

Conclusion on marks-similarity and opposition under section 8(2)(b) of the Act

Having found the competing marks to be visually and aurally dissimilar and conceptually neutral, the PAR concluded that the marks were, overall, dissimilar. Since the threshold requirement of similarity of competing marks was not met, it was not necessary to embark on the remaining two steps of the Staywell test. The opposition under section 8(2)(b) of the Act therefore failed.

Conclusion

The Opponent’s ground of opposition under section 8(4)(b)(i) and section 8(7) of the Act also failed. As a result, the PAR ruled that the Application Mark may proceed to registration.

Comment

This decision serves as a reminder that trade mark similarity is assessed based on the overall impression created by the competing marks, taking into account the relative significance of their various elements. In particular:

The existence of similar design elements does not necessarily make two marks similar. Where a mark contains a distinctive word element, simple geometric or decorative device elements may carry less weight in the marks-similarity analysis.

Invented words can be highly distinctive and memorable. The decision rejects any general assumption that consumers will struggle to recall coined brand names. Distinctive invented words may therefore play a dominant role in determining trade mark similarity.

For brand owners, this decision illustrates the importance of building and maintaining trade mark portfolios around distinctive brand names rather than relying heavily on commonplace design elements. While logos and device features can contribute to brand recognition, the weight they carry in a marks-similarity assessment will differ from case to case. The decision also serves as a reminder that clearance, filing, and enforcement strategies should be considered holistically, with particular attention paid to the aspects of a mark that are most likely to be regarded as distinctive and origin-indicating by the relevant public.

Reference materials

The decision is available on the IPOS website www.ipos.gov.sg.