World
Intellectual Property - IP Laws - Singapore
Revoking
of Spanish company's NIKE Registration:
The Singapore
Court of Appeal overruled a High Court decision upholding the registration
of the trade mark NIKE which had been registered by a Spanish company,
Campomar.
Campomar
had registered its trade mark NIKE in Singapore as "perfumery
with essential oils" in class 3. Another company, Nike
International which was famous for its NIKE brand of footwear and
apparel also wanted to obtain registration, covering a range of
goods in the same class including those covered by Campomar's registration,
and initiated a revocation action against Campomar's registration
on the basis that the perfumes bearing trade mark NIKE were not
being sold in Singapore and that the Trade Mark Act was not put
to genuine use.
In defence
of its registration, Campomar produced invoices and a bill of lading
purportedly showing that NIKE-branded perfumes had been shipped
to a Singapore company, Bhojwani's, during the intervening period.
However, Nike International engaged a local investigator to investigate
into the matter and who while conducting a survey came to know from
an employee of Bhojwani's that it only sold perfumes in Indonesia
and did not deal in NIKE perfumes. The application was heard
by the Principal Assistant Registrar (PAR) who ordered that the
registration be revoked, holding that Campomar had not shown any
genuine use of the mark.
However,
the High Court, on appeal by Campomar, did not agree with the PAR's
view and was convinced that the invoices adduced by Campomar related
to NIKE-branded perfume products of De Ruy Perfumes, an associated
company of Campomar. The judge in this case referred to the
notion that a single transaction could suffice as genuine use provided
that there was convincing proof, if not conclusive proof of the
same. The judge was satisfied that Campomar's NIKE-branded
perfume products were brought into Singapore, irrespective of whether
there was evidence of Campomar's local marketing or sales efforts.
The Singapore
Court of Appeal however restored the decision of the PAR on the
basis that it did not find the evidence produced by Campomar "overwhelmingly
convincing", and there was not a single piece of evidence from
Singapore to show that the relevant goods had actually arrived here.
It was held that where a party is required to prove a certain fact
to the extent of being "overwhelmingly convincing", the
party must show that it had done everything reasonably possible
to obtain the requisite evidence.
This case
should serve as a warning to trade mark owners that a finding of
genuine use of a mark in revocation proceedings will not be made
lighly, especially where single instances of use are concerned.
It is prudent to ensure proper documentation of use and to adduce
all relevant document trails in revocation proceedings.
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