SINGAPORE: IPOS DEFINES THE TERM USE OF MARK

July 31st, 2015

 

In this trade mark revocation hearing before the Hearings and Mediation Group of the Intellectual Property Office of Singapore (IPOS), Lisbeth Enterprises Limited (hereinafter be referred as “the Applicant”), filed an application for revocation of a trade mark on the grounds of non-use. The subject mark was registered in the name of Procter and Gamble International Operations SA (hereinafter be referred as “the Proprietor”).

The Applicant relied on Section 22(1)(a) and 22(1)(b) of the Trade Marks Act in this revocation matter. It is necessary to reproduce the provision here:

  1. —(1) The registration of a trade mark may be revoked on any of the following grounds:

(a) that, within the period of 5 years following the date of completion of the registration procedure, it has not been put to genuine use in the course of trade in Singapore, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

(b) that such use has been suspended for an uninterrupted period of 5 years, and there are no proper reasons for non-use;

(2) For the purposes of subsection (1), use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in Singapore includes applying the trade mark to goods or to materials for the labelling or packaging of goods in Singapore solely for export purposes.

(3) The registration of a trade mark shall not be revoked on the ground mentioned in paragraph (a) or (b) of subsection (1) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the 5 year period and before the application for revocation is made.

(4) Any commencement or resumption of use referred to in subsection (3) after the expiry of the 5 year period but within the period of 3 months before the making of the application for revocation shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.

Following Section 105 of the Trade Marks Act, the Proprietor has the burden of showing use made of the subject mark. In a revocation for non-use, the questions to be asked should be:

1) Whether the evidence pertained to use in Singapore;

2) Whether the evidence of use pre-dated the application for revocation and if so, whether it could still be regarded if it took place within three months before the application for revocation;

3) Whether the evidence of use pertained to the goods claimed;

4) Whether the evidence of use supported a finding of use by the Proprietor or with the Proprietor’s consent; and

5) Whether it is the subject mark that has been used

Issues

Whether the evidence pertained to use in Singapore

The Adjudicator has highlighted that it is clear from Section 22(1)(a) that for a registered proprietor to defend his registration successfully, the use of his registered mark must take place in Singapore. The issue in this matter is that the Proprietor adduced internet printouts and online reviews as evidence of use of the subject mark.

The Adjudicator reiterated the legal position in Singapore is as opined by VK Rajah JA in Weir Warman as follows:

106 In 800-Flowers Trade Mark [2002] FSR 12, Buxton LJ discussed the offer of goods under a trade mark on an Internet website. He stated at 220:

There is something inherently unrealistic in saying that A "uses" his mark in the United Kingdom when all that he does is to place the mark on the Internet, from a location outside the United Kingdom, and simply wait in the hope that someone from the United Kingdom will download it and thereby create use on the part of A.

He added further on the same page:

[T]he very idea of "use" within a certain area would seem to require some active step in that area on the part of the user that goes beyond providing facilities that enable others to bring the mark into the area. Of course, if persons in the United Kingdom seek the mark on the Internet in response to direct encouragement or advertisement by the owner of the mark, the position may be different; but in such a case the advertisement or encouragement in itself is likely to suffice to establish the necessary use. [emphasis added]

 

The adjudicator has also further cited Romanson Co., Ltd v Festina Lotus, S.A. [2015] SGIPOS 3 (Festina) where the principle requiring an “active step” was applied recently. It was concluded that the Proprietor has not demonstrated any “active step” taken in relation to the Singapore market beyond web listings per se on the eBay and Amazon.com websites and accordingly it cannot be concluded that there has been use in Singapore through the eBay and Amazon.com websites.

Whether the evidence of use pre-dated the application for revocation and if so, whether it could still be regarded if it took place within three months before the application for revocation

Based on the evidence of use adduced by the Proprietor, the use of the subject mark is claimed to commence in early September 2008 and the application for revocation was filed on 16 October 2008.

Section 22(3) of the Act, read with Section 22(4), is applicable, to the effect that any use within the period of three months before the application for revocation "shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made".

The Proprietor adduced e-mail discussions in October 2007 on the potential use of INSPIRE on a fragrance to be endorsed by Christina Aguilera. The Applicant contended that by early September 2008, the Proprietor would have been aware that the Applicant had filed a corresponding application to revoke the latter’s Hong Kong trade mark on 18 February 2008.

The Adjudicator found in favour of the Proprietor after perusing through the e-mails discussions adduced by the Proprietor and found that at no point did a concern arise that the subject mark might be challenged for non-use, not in Singapore, not anywhere else where the same or similar mark is registered. Nevertheless, since the Proprietor’s use of the subject mark has not been shown to extend to Singapore, the finding in the Proprietor’s favour does not assist them in the final analysis.

Whether the evidence of use pertained to the goods claimed

The Adjudicator stated that it is clear from Section 22(a) that any use must be “in relation to the goods and services for which it is registered”. The subject mark is registered for "Eau de Cologne, perfumes, essential oils, non-medicated toilet preparations, cosmetics, anti-perspirants, soaps, dentifrices and preparations for the hair". However, the Proprietor has shown use only in relation to "Eau de Cologne and perfumes”. The Adjudicator concluded that even if the evidence bore out genuine use of the Subject Mark in Singapore in the relevant time period, there would still be a revocation, albeit partial, of the registration in respect of "essential oils, non-medicated toilet preparations, cosmetics, anti-perspirants, soaps, dentifrices and preparations for the hair".

Whether the evidence of use supported a finding of use by the Proprietor or with the Proprietor’s consent

Following Festina, it is necessary for the registered proprietor to prove that they have given consent to the third party to use the relevant trade mark in question. In the present case, the Proprietor purports to rely on “evidence of use” – sale of the fragrance “Christina Aguilera INSPIRE” on third party websites – but have not demonstrated that such “use” is with their consent. There are also no circumstances from which to imply such consent. As such, any "use" of the mark as mentioned above would not be relevant for the purposes of defending the registration of the Subject Mark. Nevertheless, the Adjudicator has qualified the above conclusion that it is by no means a static conclusion as Festina is currently on appeal in the courts.

Whether it is the subject mark that has been used

Section 22(1)(a) and Section 22(1)(b) and therefore the grounds for revocation succeeds.

The Applicant has also argued that any use (which is not admitted) by the Proprietor only pertains to "INSPIRE" and not with the French acute accent over the letter "e". The Applicant submitted that the subject mark as registered would be pronounced differently as “in-spee-ray” as opposed to the English word "INSPIRE". The impression of the (French) Subject Mark pronounced the French way conveys sophistication and elegance, but this is not the case for the sign "INSPIRE". The Applicant further submitted that the use was a mark that is different from the subject mark and therefore should be discounted. Nevertheless, the Adjudicator concluded that the distinctive character of is more attributed to the word “Inspire” as a whole than to the French acute accent over the letter "e", such that the general public should perceive “INSPIRE” and                                                                                            the subject mark as substantially of the same distinctive character. As such, the Adjudicator was persuaded that should there be genuine use of a mark “INSPIRE”, it should not be discounted.

Accordingly, it has been held that the Proprietor’s evidence does not fulfill the criteria for “use” in Section 22(1)(a) and Section 22(1)(b) and therefore the grounds for revocation succeeds.