Singapore: Autozone Automotive v Autozone Parts

June 25th, 2013

 

In the case of Autozone Automotive Enterprise v Autozone Parts Inc., the Principal Assistant Registrar of Trade Marks in Singapore revoked two trade marks registered in the name of Autozone Parts Inc. on the application by Autozone Automotive Enterprise.

Autozone Automotive Enterprise (hereinafter referred to as “the Applicant”) is a partnership firm registered in Singapore in 1995 and since 1996, operating in the business of importing, exporting and wholesaling aftermarket automotive parts for most Japanese vehicles.

Autozone Parts Inc (hereinafter referred to as “the Registered Proprietor”) is a company incorporated in Nevada, US and deals mainly in automotive parts and accessories. The Registered Proprietor owns two trade marks in Singapore, with effect from 1999, in Class 35 in respect of “Retail services, including retail of automotive parts”.

In March 2010, the Applicant filed their applications for revocation and invalidation of the two trade marks. The Applicant sought to revoke the trade marks under Section 22(1)(a), (b) of the Singapore Trade Marks Act which states that the registration of a trade mark may be revoked if there is non-usage of the mark for a period of five years. The Registered Proprietor furnished evidence of three email sales transaction receipts from consumers in Singapore, thereby maintaining that they had supplied their goods through actual sale transactions. The Principal Assistant Registrar of Trade Marks (hereinafter referred to as “the Assistant Registrar”) dismissed this claim stating as the trade marks had been registered for “Retail services, including retail of automotive parts”, the mere delivery of goods to Singapore did not mean that retail services must have been provided in Singapore.

The Registered Proprietor submitted that they had offered or exposed goods for sale; put them on the market the market under the trade marks and offered or supplied services under the trade marks. The Registered Proprietor submitted that they had, since 1996, offered goods for sale under the trade marks through their website which was accessible worldwide, including from Singapore. The Registered Proprietor furnished evidence showing that 282 unique users in Singapore had clicked on their website between January 2010 and December 2011 thereby concluding that their services had been offered to the Singapore public.

The Applicant claimed that the Registered Proprietor’s website was targeted at the U.S. market and not to the public in Singapore as it was not possible for a consumer based in Singapore to place an order off the Registered Proprietor’s website. The Applicant also pointed to the laws on trade marks and passing off in Singapore which state that if a mark was not used on the goods themselves but on advertisements or other promotional goods published or distributed outside Singapore, there was no use in Singapore of such mark if such advertisements were not directed at customers in Singapore. The Applicant further contented that the mere fact that websites could be accessed anywhere in the world did not mean that the trade mark law should regard them as being used everywhere in the world and the Registered Proprietor must show an active step taken to direct the offer and advertisements of their services to Singapore; rather than placing the trade marks on the internet and facilitating or inviting access or enquiries from parties in Singapore.

The Assistant Registrar sided with Applicant in declaring that the Registered Proprietor would need to go beyond simply placing an order on or advertising retail services on the internet and waiting in the hope that someone from Singapore would enquire about their services. The Assistant Registrar further adjudged that 282 unique users over a period of 23 months i.e. at the rate of about 1 click in 2.5 days pointed to the possibility that some of these users might have happened to be on the website and not because of any active step taken by the Registered Proprietor to lead Singapore consumers to their website. Due to the failure by the Registered Proprietor in showing use of the trade marks for a period of 5 years, the Assistant Registrar revoked the trade marks under Section 22(1) (a), (b).

Next, the Applicant sought to invalidate the trade marks under Section 23(1) read with Section 7(4), (5) of the Act which states that a trade mark shall not be registered if it would be prohibited under the law of passing off and would deceive the public. The Registered Proprietor pointed out that the Applicant had not put forward any submissions or evidence to show that the trade marks were deceptive in relation to the Registered Proprietor’s services. On the issue that the trade marks be invalidated as they were prohibited under the law of passing off, the Registered Proprietor pointed out the Applicant had failed to cite any statutory provision or rule of law and there had not been any evidence filed in support of this ground. Subsequently, the Assistant Registrar dismissed the Applicant’s claim under Section 23(1) read with Section 7(4) and (5) of the Act.

The Applicant, further, sought to invalidate the trade marks under Section 23(3) read with Section 8(7)(a) of the Act which states that a trade mark shall not registered by virtue of any law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade. The Applicant submitted that they had already accumulated goodwill in the trade name ‘Autozone’ at the time the Registered Proprietor applied for registration of the trade marks. The Assistant Registrar noted that the Applicant’s evidence disclosed that they were in the business of importing, exporting and wholesaling aftermarket automotive spare parts for most Japanese vehicles; hence the Applicant’s goodwill was limited largely to businesses in Singapore that actually or potentially use the Applicant’s import, export and wholesale services in respect of automotive spare parts.

The Applicant further submitted that the use of the trade marks by the Registered Proprietor constituted a misrepresentation and would confuse the public into thinking that the services provided by the Registered Proprietor shared the same source as the Applicant’s services. The Registered Proprietor countered that they were a mass market online retailer of automotive parts and accessories targeted mainly at the U.S. market; therefore the nature of business and services and the target audience of the parties respectively differ. Further, the Assistant Registrar noted that the Registered Proprietor provided retail services by means of their website, email and telephone communications, while the Applicant operated from a physical location. Hence, the Assistant Registrar ruled that, overall on the balance, there was no likelihood of confusion and accordingly, dismissed the Applicant’s claim for misrepresentation.

The Applicant also sought to invalidate the trade marks under Section 23(4) of the Act claiming that they had used the name ‘Autozone’ in Singapore since 1995, and therefore the Registered Proprietor had obtained the trade marks by misrepresenting to the Singapore Trade Mark Office that they were the bona fide proprietors of the marks when they should have been aware of the Applicant’s right and interest in the trade name ‘Autozone’.

The Assistant Registrar took into account the Registered Proprietor’s assertion that they were the applicant and/or the proprietor of marks consisting ‘Autozone’ in at least 50 countries and had used these marks since 1987 and accordingly dismissed the Applicant’s claim for invalidation stating that it could have been theoretically possible for either the Applicant or the Registered Proprietor to file trade mark applications for ‘Autozone’ without either party misrepresenting to the Trade Mark Office that they were entitled to seek registration when they were not, owing to the other party's existence and respective use of signs comprising the word ‘Autozone’. With that, the Assistant Registrar allowed the Applicant’s claim for revocation under Section 22(1)(a), (b) while dismissing their claim for invalidation on all grounds.