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Singapore: A trade mark saga

14th August, 2012

In the case of Intuition Publishing Ltd. v Intuition Consulting Pte. Ltd., the Singapore High Court relieved Intuition Consulting Pte. Ltd from the trademark infringement claims in the shade of in-sufficient evidence.

The Plaintiff, Intuition Publishing Ltd. which was previously known as Financial Courseware, adopted its present name on 17 April 1998 and has its subsidiary in Singapore involved in the same business with the name of Intuition Publishing Pte. Ltd. The Plaintiff is in the business of providing technology-enabled learning services to various industries. The Plaintiff is the registered proprietor of the five trade marks in Singapore consisting ‘word marks’ and ‘word plus device marks’ (collectively referred to as ‘the Marks’).

The Defendant, Intuition Consulting Pte. Ltd. is a company which was incorporated in Singapore on 13 November 1999. Its business is to provide bespoke, or customized, consultancy training services to multinational companies in the information technology (‘IT’) business. The Defendant’s owns signs such as ‘intuition’, ‘INTUITION’, ‘intuition consulting’, ‘INTUITION CONSULTING’, ‘Intuition Consulting Pte. Ltd.’ and also the logo (a stylised drawing of a head) collectively referred to as the ‘Signs’.

The Plaintiff alleged trademark infringement of its Marks by the Defendant. The Defendant, denying that the claims have any legal basis, made a counterclaim for revocation of the Marks on the basis of non-use for a consecutive period of five years or more.

The Plaintiff claimed that the Defendant had provided bespoke consulting and training services since 1999. The Plaintiff alleged only the ‘Bespoke Services’ and ‘Training Materials’ as the infringing goods and services of the Defendant. Arguments were made with the established evidences that the Defendant had used the Signs in the course of trade. The High Court, although noting that the Defendant had not made any assertions that it did not use the signs in the course of trade, adjudged that the Defendant’s Bespoke Services and Training Materials are not identical to the specifications of the Plaintiff’s Marks.

The High Court pointed out that the Signs are not identical to the ‘word plus device marks’ of the Plaintiff as the marks contain the Plaintiff’s device while none of the Defendant’s sing contain the same device. The High Court also pointed out that two of the Defendant’s sign were identical to the Plaintiff’s word marks, noting that a mark registered in upper case in plain font covers all stylistic permutations of the mark. The High Court further noted the visual and aural component in the word and device marks to be more significant than the device component; thereby adjudging that all the Signs are similar to the Marks.

The High Court, in the next steps, also found a fair similarity between the Defendant’s goods and services with the Plaintiff’s. However, answering to the question that if this hampers the interests and goodwill, the Court sentenced that the Plaintiff has not been able to provide any evidence which reflect that its interests been hampered. In context to the goodwill, the judgment stated that the Plaintiff was not able to support its operational existence in Singapore with documents before the Defendant was incorporated on 13 November 1999.

Noting that both the Plaintiff and Defendant provide customized services and training programs, the High Court stated the consumer group for these services comprise of training managers and associates who commission educational programs. The High Court, thus, quashed any claims that there was a likelihood of confusion because of the similarity between the Marks and the Signs emphasizing the fact that the consumers of both the Plaintiff’s and Defendant’s services were unique.

The Defendant counterclaimed the revocation of the Plaintiff’s mark as it stated that the Marks have not been put to genuine use for a period of five years or more. The Plaintiff was able to provide evidence that shows its word plus device marks have been used without any continuous spam of five years.

The High Court held that the Plaintiff’s word plus device marks have been used and are therefore valid. However, the High Court held that the Plaintiff’s word marks have not been used and therefore ordered the word marks to be revoked.

The High Court also awarded the Defendant with the costs of the claim and counterclaim.