SINGAPORE: FOR A MARK REGISTERED IN BAD FAITH THE BURDEN OF PROOF LIES IN THE PARTY ASSERTING IT AND REQUIRES A HIGH STANDARD OF PROOF

April 12th, 2012

 

In the case of P. T. Swakarya Indah Busana v Haniffa Pte Ltd and another, the Singapore High Court declared the applications filed by two parties to register 15 trade marks were invalid as they were in filed in bad faith.

P. T. Swakarya Indah Busana (hereinafter referred as “the Plaintiff”) is a corporation incorporated in the Republic of Indonesia manufacturing garments bearing the marks “MARTIN”, “MR” and “MARTIN PACEMAKER”. The predecessor to the “Martin Pacemaker” mark was registered by, a director and shareholder of the Plaintiff in 1979 and was updated to the present Martin Pacemaker mark in 1983 and was assigned to the Plaintiff in 1987.

Haniffa Pte Ltd and another (hereinafter referred as “the Defendants”) are related companies. The director of the first Defendant Mr. Abdul Samad is also one of two directors of the second Defendant and controls both Defendants. The first Defendant was incorporated in 1976. The second Defendant was incorporated in 2002 to ensure continuous supply for first Defendant.

The Plaintiff in this case sought a declaration that the 15 trade marks (hereinafter referred to as “the Challenged Marks”) are invalid. Out of the 15 trade marks, six trade marks were initially registered by the first Defendant in 2005. Three were assigned to the second Defendant in 2009 and remaining three assigned to the second Defendant in 2010 and later, nine more marks were registered by the second Defendant.

The Plaintiff’s witnesses further highlighted the evidence that the Plaintiff enjoyed substantial goodwill and reputation in Singapore for shirts bearing the “Martin Pacemaker” mark and “Martin” mark from 1982 without any advertising activities. Plaintiff referred invoices far back as 1982 which referred its Martin Pacemaker shirts known by its target customers as “Martin” shirts. The Court held that at a glance, the word “Martin” is registered in one’s mind and it is only upon further examination that the word “Pacemaker” is recognized.

The Plaintiff’s evidence discloses that a number of imitators tried to ride on the word “Martin” and the Plaintiff took enforcement proceedings against other traders in 1992 over “Marfin”, “Leo Martin” and “Martin King” marks. Court thus, found that Plaintiff’s Martin Pacemaker shirts were known as and referred to by consumers and traders as “Martin” shirts, if not since 1982, at least by 1992 when the Plaintiff took out enforcement action against the use of the “Marfin” mark in originating motions no. 18 of 1992.

The Defendants assert no infringement and gave evidence on how the Defendants came to register the Challenged Marks. The Defendants’ director, Abdul Samad met one Mr. Marcus in the course of purchasing shirts bearing the “Alvin Prada” mark. The Defendants were impressed with his branding skills and engaged Mr. Marcus to create a new brand of men’s wear for the second Defendant, and Mr. Marcus created the “ST MARTIN”. Mr. Marcus explained the choice of the words “ST MARTIN” as St Germain and St Martin are two neighboring regions in Paris, France and he has been to Paris several times.

The Defendants assert that they instructed to conduct a search of the Registry of Trade Marks of Singapore across all classes for the word “Martin” and there was no mark registered with the word “Martin” by itself. Thus, “Martin” was a non-exclusive word and that nobody had the exclusive right to its use. Thus, “Martin Classic” mark was registered by the second Defendant on 28 May 2003. Mr. Marcus explained on how he developed “Martin Classic” mark in 2003, the “Martin Original” mark which was registered in 2005, the “Martin Polo” mark registered in April 2008, and the “Martin Executive” mark registered in July 2010.

The Court however, affirms the Plaintiff’s claim that the Defendants’ registrations of the Challenged Marks, all of which pair the word “Martin” with another word, were made in bad faith. The evidence showed that the Defendants’ director, Mr. Abdul Samad was well aware of the first Defendant’s purchases of the Plaintiff’s Martin Pacemaker shirt. Mr. Marcus’ explanation of how he narrowed down to the word “Martin” (involving a stroll down Parisian boulevards) might have been acceptable if not for Court’s finding of fact that, at the time, the Plaintiff’s shirts were well-known in the market as “Martin” shirts.

The first Defendant further denied purchasing shirts bearing the “Martin” mark. Their challenge was that the “Martin” mark was only introduced in 2006. While Plaintiff’s witness produced invoices that the first Defendant was one of the customers who bought these shirts at price of SGD623,000 between 1995 and 2009 and supplied shirts to the first Defendant bearing the “Martin Gold” mark from 2001 to 2004, in March 2009 the second Defendant procured the registration of a trade mark with the same words. The Court thus, found evidence of Defendants’ intentions in relation to the use of the word “Martin” in the Challenged Marks from its registration of one of those marks, the one with the words “Martin Gold”.

The Plaintiff further exhibited shirts sold by the Defendants bearing the mark “Martin Classic”, but with the word “Classic” in smaller font and in a light gray color. Thus, the Plaintiff asserts that the Defendants had registered the “Martin Original”, “Martin Classic” and “Martin Executive” to emphasis the word “Martin”. The Court held that it would not make sense for the Defendants to invest in developing a brand that would be confused with or diluted by the Plaintiff’s existing brand as well as the other existing brands, particularly when this was the first time that the Defendants were developing a brand. Thus, the Court concluded that the Defendants had registered the Challenged Marks not to develop their own range of brands but in order to take advantage of the fame of the “Martin” mark.

Therefore, this case sets precedent for other cases that for a mark registered in bad faith the burden of proving it lies in the party asserting it. A high standard of proof is required and the relevant time is the date of application to register the mark.

ADIPVEN can assist in advising clients on the strategies that should be adopted for trade mark opposition and trade mark infringement actions. Our Trade Mark attorneys will also be able to assist you for these kinds of actions in Singapore, Malaysia, India, Thailand, Vietnam, Indonesia, Philippines and Brunei. Please do not hesitate to write to us at info@adipven.com if you need any further clarifications on this matter.