By Mark Teng, Executive Director (Link) & Michael Yee, Incoming Trainee ‘23

Singapore’s very own local brew, Tiger Beer, was recently featured in the pilot episode of Marvel’s “The Falcon and The Winter Soldier” series. This is the first time anything Singapore-related has made an appearance in the Marvel Cinematic Universe (“MCU”). It is possibly attributed to the fact that a fictitious Southeast Asian island called “Madripoor” was inspired by Singapore itself as seen from luxury hotels bearing resemblance to Singapore’s Marina Bay Sands. We can’t speak for anyone else, but after seeing Tiger Beer appear on screen, we at That.Legal LLC couldn’t help but crack open a cold one as well!

Being featured in a multi-billion-dollar franchise without having to spend a single cent (reference) is a testament to the power of the “Tiger Beer” brand, and the efforts that Heineken Asia Pacific Asia (the owner of the Tiger Beer trade mark and brand) have expended to build and protect their intellectual property.

Heineken Asia Pacific has registered its Tiger Beer trade mark in various forms and in multiple jurisdictions, including but not limited to, Singapore, Australia and the United States of America, and some of these registrations even date back to the 1940s. Without such trade mark protections, the company would have been at risk of others “freeloading” off their brand. This is especially the case in overseas markets where the common law tort of passing off may be difficult to prove.

There are many other benefits to the registration of trade marks and if you wish to learn more, you can check out our other blog posts on these topics:

The “Tiger” in Tiger Beer is the distinctive element of the trade mark and yet, Heineken Asia Pacific seems content to allow other “Tiger” related trade marks to co-exist (e.g Tiger Airways (the airline), Tiger Sugar (the famous bubble tea), Tiger Brokers (the online trading platform) or Tiger Balm. Having in mind the benefits of trade mark registration, perhaps you might be asking yourself why this is the case.

To answer this question, one must first understand how trade marks work in Singapore. When someone registers a trade mark, he must stipulate the goods and/or services that he wishes the said trade mark to protect. Once the trade mark is registered, it only protects those goods and/or services. For example, if the Tiger Beer mark protects only “beer and stout”, then no one else may use “Tiger” in relation to beers and stouts, or risk infringing the trade mark. On the flip side, this also means that using “Tiger” in relation to anything that is not beer and not stout, would not infringe the said trade mark.

This being the case, multiple similar trade marks may co-exist on the trade marks registry so long as there is no overlap in the goods and/or services that they protect and there is no likelihood of confusion (a legal test). To illustrate, the Tiger Beer, Tiger Sugar, Tiger Brokers and Tiger Balm marks are allowed to co-exist because the goods/services they protect are totally different and there is no overlap in their specifications.

Tiger Beer protects, inter alia, “beers and stouts”, Tiger Sugar protects, inter alia, “milk beverages”, Tiger brokers protects, inter alia, “computer software related to financial information, investment, and trading, namely, electronic trading software and investment portfolio management software” and Tiger Balm protects, inter alia, “toiletries; cosmetics and essential oils”.

Trade marks must be registered in respect of a class of goods/services (or multiple such classes) and then within each class, there will be protection over specific goods/services. Thus, it is totally possible for a company to protect a variety of goods/services (spanning different industries/sectors) using the same trade mark – such a trade mark is colloquially known as a “multiclass” trade mark.

One such company that does this is Tiger Airways – which has registered the exact same trade mark, “TIGER AIRWAYS” in plain text, in respect of three (3) different classes (Class 35, 39 and 43), which are as broadly as follows:

Class 35:        Advertising; business management; business administration; office functions

Class 39:        Transport; packaging and storage of goods; travel arrangement

Class 43:        Services for providing food and drink; temporary accommodation

Contrary to popular belief, trade marks are protected in respect of the actual goods/services specified under these classes rather than the classes themselves. Tiger Airways’ specifications in detail are as follows:

Class 35:        Business administration services relating to air transport and franchising; business management services relating to air transport and franchising; business advisory and consultancy services relating to air transport and franchising; direct mail advertising; business advisory and business management services; advertising services; display services for merchandise; publicity services; marketing and promotional services, market analysis and research; import-export agency services; procurement and buying of goods on behalf of a business; window dressing; advisory and consultancy services relating to the aforesaid; all the foregoing provided on-line from a computer database or the global communications network; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a store, on an aircraft, from a general merchandise catalogue by mail order or by means of telecommunications, or from a general merchandise global communications network web site; compilation of mailing lists; ordering serices by means of mail, telephone and all other communication and telecommunication; all included in Class 35.

Class 39:        Air transport services; tourist office and travel agency services for arranging travel; package holiday services; travel booking, reservation or information services; tourist information; air passenger transport services and air cargo transport services; courier services; transport and delivery of goods; transportation of passengers` luggage; luggage storage services; vehicle rental, charter and parking services; handling of baggage, cargo and goods; advisory and consultancy services relating to the aforesaid; all the foregoing provided on-line from a computer database or the global communications network; all included in Class 39.

Class 43:        Arranging and booking of holiday accommodation; hotel reservation services; provision of food and drink; catering services; advisory and consultancy services relating to the aforesaid; all the foregoing provided on-line from a computer database or the global communications network; all included in Class 43.

The classification system is more of an administrative manner for which the intellectual property offices around the world may charge for applications and other official fees.

We understand that it may be a daunting task for a company to navigate itself through the intricacies of trade mark protection, but our job as trade mark specialists is to help businesses maximise the protection of their trade mark rights within the confines of what is allowable under the law.

We typically advise our clients on the appropriate class(es) to register their trade marks under and we help choose specifications (within each class) that will offer the widest/greatest protection for your brand, at the lowest cost, bespoke to your business.

If you have any questions regarding how to protect your brand, or simply want to know more about intellectual property protection, exploitation and management, do drop us an email at ask@that.legal and #LetsTalkAboutYourChallenge (over a cold one).