This is an interesting and deep question ... and perhaps even more so in a trade mark context, as the Singapore IP Office recently discovered.
In a decision issued on 20 December last, this IP Office had to consider this very question in the context of an opposition filed by Cartier:
More precisely, can a trader prevent other traders from registering a trade mark which includes the word “LOVE” for use on jewellery?
Cartier filed an opposition, relying on its earlier 'LOVE' figurative trade mark (in which the O is replaced with the device of Cartier's iconic slotted screw head e the E is in lower case) for, inter alia, jewellery. The opposition related to MoneyMax Jewellery's application to register the signs below as Singapore trade marks for jewellery in Class 14, and retail and other services relating to jewellery in Class 35:
The first Cartier 'LOVE' piece was designed in 1969: it is the famous bracelet that can only be removed using a gold screwdriver that is sold together with the bracelet. A “modern love handcuffs”, it is intended to symbolize the attachment between two lovers.
The Hearing Officer noted that Cartier is not the only owner of a 'LOVE' trade mark. In dismissing the opposition, the decision also stresses how the word 'love' is commonly used by jewellery traders and should not be monopolized by any trader.
The Hearing Officer relied extensively on the judgment in Love & Co Pte Ltd v The Carat Club Pte Ltd  1 SLR(R) 561. In that case the Singapore High Court invalidated the defendant’s plain word mark 'LOVE' which was registered in respect of jewellery, precious stones and precious metals in Class 14, on grounds that it both lacked distinctive character and was an indication which may serve to designate the intended purpose of jewellery (that is, showing love).
Let's see a bit more in detail how the Hearing Officer reasoned.
Comparison of the signs
Considering the relative grounds within section 8 of the Singapore Trade Marks Act, the Hearing Officer found that it was first necessary to identify which elements of the opponent's sign would be distinctive.
Certainly this would not be the case of the word 'LOVE' as such in relation to jewellery. Rather, the distinctive elements of the sign are the screw-head device and possibly the use of a small letter 'e'.
Neither of these elements are present in the applicant's sign.
Hence, the signs should be considered dissimilar.
Distinctiveness of the applicant's sign
Cartier also attempted to rely on the High Court's Love decision to argue that the applicant's sign should not be registered, it being devoid of distinctive character.
|... and an IPKat-approved alternative|
for lovers on a budget
The Hearing Officer rejected this argument, and held that the combination of the Chinese words (which mean 'love gold'), enclosed in a rectangular device, with the words 'LOVE' and 'GOLD', and the arrangement of each of these features as depicted in the application, render the sign as a whole distinctive [really?].
The Hearing Officer concluded as follows:
A bracelet may represent a metaphorical shackle of a person’s loved one. The word “LOVE”, however, should be free for traders to incorporate into their trade marks for jewellery.
In other words: you might need the gold screwdriver to free your beloved from their Cartier bracelet ... but freeing 'LOVE' from trade mark protection (at least for jewellery) might be easier.
[Originally published on The IPKat on 5 January 2019]