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12th September, 2017

This case deals on whether the use of a trade mark only in references to invoices would constitute as “use” per the Singapore Trade Marks Act.

In this revocation proceeding before the IPOS, the Applicants sought to revoke the trade mark “MYSTERY SET” (hereinafter be referred as “the subject mark”) on the ground of non-use. The date of completion of registration of the subject mark was 23 April 2008 in Class 14 in respect of “jewellery and watches”.

Section 22(1) of the Singapore Trade Marks Acts states that a trade mark may be revoked if it has not been put to genuine use in relation to the goods or services for which it is registered and in the course of trade in Singapore within the period of 5 years following the date of completion of the registration procedure. One of the grounds for revocation was based on the ground that that there had been no genuine use of the mark in relation to jewellery and watches during the 5-year period immediately following registration, i.e. from 24 April 2008 to 23 April 2013.

The proprietors’ evidence for use within the said 5-year period comprised five invoices issued by one of its retail stores in Singapore which referred to “MYSTERY SET”. The proprietors argued that Section 27(4)(d) of the Singapore Trade Marks Act which expressly provided that a person uses a sign (mark) if, in particular, he uses the sign (mark) on an invoice.

However, it is to be noted that Section 27 is a provision that states what would constitute infringement of a registered trade mark in Singapore. The Applicants argued that Section 27(4)(d) is not applicable to a non-use revocation action stating that the Proprietors could have easily provided other types of evidence such as advertising and packing materials showing use of the mark. The Proprietors relied on the decision Capitol Records LLC v Steven Corporation Pte Ltd [2010] SGIPOS 14 (“Capitol Records”) where in that action, genuine use was established based on invoices alone. The Hearing Officer in the instant case has agreed with the Proprietors that Capitol Records serves as an authority that Section 27(4) applies to Section 22 and that there is no strict requirement that the mark is to be applied onto the goods to establish genuine use. The Hearing Officer concluded that there is no need to determine if Section 27(4) applies to Section 22 as the categories of use under Section 22 are not closed, the operative word in that provision being “includes”. The Hearing Officer went on to state that even section 27(4) only provides illustrations of the types of evidence which can be considered and that other types of evidence can be considered to establish genuine use.

The applicants further argued that only one out of the five invoices should accepted as evidence of use in Singapore as the remaining four invoices were made out to buyers from Indonesia. Furthermore, the applicants contended that, of the four remaining invoices that were made out to buyers in Indonesia, these transactions could possibly to the proprietor’s own counterparts in Indonesia as the payment method was indicated as “boutique account” which, the applicants contended, indicated that they were instances of “business-to-business” transactions. The Hearing Officer however, accepted the submissions of the proprietors that the fact that the buyers having an Indonesian address does not detract from the fact that they still reflect sales made in Singapore, the proprietors’ retail shops in Singapore serve as the point of sale, that the currency of the transactions was in Singapore dollars and that even if the goods were intended solely for overseas markets, that is, for export purposes (which is not admitted), there is still use of the Subject Mark in Singapore. Accordingly, it was concluded that all five invoices can be taken into consideration.

The Applicants further argued and submitted evidence to the effect that there is descriptive use of “MYSTERY SET” to refer to the method employed by jewellers for setting precious gemstones in close pattern such that one cannot see any trace of the metal prongs holding them together. The Hearing Officer, after perusing the evidence comprising a write-up on the technique in the proprietors’ website and an article from a magazine tendered by the applicant, concluded that “invisible setting” is the trade name for the technique in question, and the term “Mystery Setting” is coined by the Proprietors to describe a variant of the technique which has been patented by them. Accordingly, the Hearing Officer found that the mark has been used in a trade mark sense based on the evidence tendered.

The applicant’s revocation partially succeeded as it was concluded the Proprietors have demonstrated use of the mark “MYSTERY SET” in Singapore within five years after the completion of registration for jewellery only as none of the invoices indicate the sale of watches.