Singapore: Apple’s Trade Mark Sherlock Revoked

February 27th, 2017

 

In the matter of Apple Inc (‘Apple’) and Bigfoot Internet Ventures Pte Ltd (‘Bigfoot’), it was uncovered that companies offering post-sale software support provided online could possibly satisfy the ‘evidence of use’ test required under the Trade Marks Act in Singapore. However, the underlying rule in this case is that if a company fails to put their trade mark to genuine use for a five-year period that trade mark will be made available for another company.

In this case, Bigfoot applied to the courts seeking the revocation of Apple’s trademark ‘Sherlock’ which had been used as the name of one of Apple’s software products. This software was used as both a search engine and file searcher. Apple registered ‘Sherlock’ as a trade mark in 2001. The company then proceeded to produce and sell its ‘Sherlock’ software product in connection with the 8.5 version of its Mac computer. In 2015, Bigfoot filed an application to revoke Apple’s trade mark. Bigfoot’s argument was that Apple had not been genuinely using this trade mark, and so it should be open to other companies to use it in their commercial ventures. For Apple to successfully defend its position, the court required that the company showed that it had made genuine use of this trade mark in Singapore.

The normal process of applying to register a trade mark requires that the trade mark is unencumbered and available for use; that is, it has not been registered by another entity. However, there is scope for an application to be made to revoke the trade mark, making it available for use. When this application is made, the owner of the trade mark must prove that the trade mark has been genuinely used in both the five years after registration, and the five years prior to the application of revocation being filed. Therefore, the burden of proof rests with the owner of the trade mark as they can more easily show they made use of the trade mark than the other way around.

On considering this application, the court first looked into whether the trade mark had been genuinely used in the five years after it was registered. This period commenced in March 2001. To establish genuine use, the use must be in accordance with the essential function of the trade mark. This means that it cannot be put to ‘token use’ where the company has used the trade mark purely to preserve it. Apple was able to establish that the trade mark had been genuinely used for the period of time from the inception of the ‘Sherlock’ software in 1998 until 2007 when the software was replaced upon the release of the Mac OS X 10.5 Leopard.

The second point Apple had to prove was that the trade mark had been genuinely used in the five years prior to filing the application to revoke it. This period commenced in March 2010. Many publications confirm that the ‘Sherlock’ software was no longer a part of the Mac OS from 2007 onwards, including one published by Apple itself which states ‘Sherlock itself does not work with Mac OS X 10.5 Leopard.’ Therefore, Apple was required to provide a substantial amount of evidence in order to convince the court that the use of the trade mark was merely token or internal.

For this point, the court concluded that the use of a trade mark in connection with goods that were no longer newly traded could nonetheless constitute genuine use provided the owner made actual use of the mark for goods directly connected to the goods previously sold. Apple submitted that the ‘Sherlock’ software was still available to be downloaded, and furthermore, that Apple provided post-sale software support online could possibly satisfy the ‘evidence of use’ test in Singapore ever since the launch of the software up until the present day. The court rejected Apple’s submission, stating that the fact remains that no one did download the software in this five-year period, and that the mere fact that it still existed did not satisfy the genuine use test.

For these reasons, the court concluded that Apple’s ‘Sherlock’ trade mark should be revoked.