No Monopoly Over "Blue": "vivo BlueOS" Dissimilar to "BluOS"
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We recently succeeded in defending an opposition before IPOS in Lenbrook Industries Limited v Vivo Mobile Communication Co., Ltd. [2026] SGIPOS 2.
The opposition concerned Vivo’s application to register "Vivo BlueOS" in Class 09 (TM No. 40202402174Y). The Opponent relied on its earlier Class 09 registration for "BluOS" (TM No. 40201400191S; IR No. 1153891) and opposed the application under Sections 8(2)(b), 8(4)(b)(i) and 8(7)(a) of the Trade Marks Act. The opposition failed on all grounds.
Section 8(2)(b): Similarity of Marks and Likelihood of Confusion
Does Adding a House Mark Change the Analysis?
At first glance, the dispute appeared to centre on the shared elements "Blu/Blue" and "OS". However, as the learned Principal Assistant Registrar Sandy Widjaja ("PAR") made clear, the proper inquiry under Staywell is not a mechanical comparison of overlapping components, but a holistic assessment of the marks as wholes.
The learned PAR identified that the key distinction at the outset is the addition of the word "vivo" in the Application Mark. Both marks shared the elements "Blu/Blue" and "OS". However, the inquiry under Staywell requires a holistic mark-for-mark comparison across visual, aural and conceptual similarity.
The PAR ultimately held that the marks were:
- Visually dissimilar
- Aurally dissimilar
- Conceptually neutral
Central to that conclusion was the finding for the distinctiveness of the word "vivo" in the Application Mark.
In assessing visual dissimilarity, the decision clarifies that distinctiveness is not dictated by typography. The fact that "vivo" appeared in small letters did not diminish its significance in the overall visual impression.
As for aural similarity, the PAR accepted that in ordinary pronunciation, first-position elements carry primacy and tend to anchor listeners’ recollection. Placed at the beginning of the mark, "vivo" assumed particular prominence and materially shaped the aural impression conveyed by the subject mark.
Conceptually, the PAR concluded that it was more likely than not that the ordinary public would regard "vivo" as an invented word and that the average Singaporean consumer was unlikely to ascribe any particular meaning to "vivo", such that its conceptual impact was neutral. Accordingly, the marks were conceptually neutral overall, or conceptually different if some segment of the public were to understand "vivo" as having a foreign-language meaning.
The PAR further observed that it was not relevant that "vivo" functioned as a house mark when assessing the mark at the mark similarity analysis stage.
Distinctiveness of the Opponent’s Earlier Mark: No Monopoly Over "Blue"
The PAR accepted that "OS" is descriptive of operating systems in Class 9, and that "Blu" would readily be understood as a truncation of "Blue". In that context, the Opponent’s Earlier Mark was found to possess only a low to moderate degree of distinctiveness. The PAR also gave some weight to the state of the register, cautioning against inadvertently conferring a monopoly over common words such as "Blue". While the register does not prove marketplace conditions, it can illuminate whether certain elements are commonly adopted and therefore less inherently distinctive. That assessment inevitably narrowed the scope of protection available to the Opponent.
Goods Similar — But No Likelihood of Confusion
The goods were found to be similar. However, similarity of goods does not automatically establish confusion.
In assessing likelihood of confusion under Section 8(2)(b), the PAR noted that:
Operating systems and software are highly technical. Consumers evaluate functionality, compatibility, and suitability before purchase. The PAR accepted that such goods require intentional assessment as to their specific function, performance and thus suitability. This reduces the risk of imperfect recollection leading to confusion.
The PAR also noted that the Opponent relied on sales figures and evidence relating to products incorporating BluOS software. The PAR found that the evidence did not establish sufficient reputation of the earlier mark in Singapore to tip the balance in favour of confusion.
Accordingly, Section 8(2)(b) failed.
Section 8(4)(b)(i): Well-Known Mark
The well-known mark ground also failed. The earlier mark was not proven to be well-known in Singapore as at the relevant date. Without sufficient similarity and without established well-known status, the claim under Section 8(4)(b)(i) could not succeed.
Section 8(7)(a): Passing Off
The passing off ground failed as well.
No actionable misrepresentation was established. The evidence did not demonstrate that use of the Application Mark would lead the relevant public to believe that the goods were connected with the Opponent.
Reflections
The decision serves as a careful reaffirmation of several foundational principles in opposition practice.
The fact that "vivo" appeared in lowercase did not detract from its dominance and distinctiveness in the overall impression.
Ghows LLC was pleased to represent the Applicant in this opposition before IPOS. The case illustrates how the addition of a distinctive house mark can change the overall impression, particularly where the shared element is not highly distinctive to begin with. Similarity cannot be assumed simply because certain letters overlap.
Read the decision on IPOS website here.