By Kevin Wong and Lin Lixia

In this recent case in Singapore, the Applicants, Siemens AG, sought to invalidate the mark "Maglev", owned by a Taiwanese company, Sunonwealth Electric Machine Industry Co. Ltd ("the Respondents"), alleging, among other things, that the Respondents’ mark:

(a) Is devoid of any distinctive character

(b) Has become generic in the trade

(c) Was applied for in bad faith

By way of background, the Respondents’ mark in question was registered in Class 11 for "Ventilating fans for commercial equipment, for commercial or industrial use", with effect from 15 November 2000.

In response to the Applicants’ claims, the Respondents argued that their mark had become distinctive of them and produced as evidence, a product pamphlet which describes the MagLev Motor Fan in connection with the introduction in 1999 of its patented "Magnetic Levitation System", subsequently branded under the abbreviation "Maglev" in 2003. On another page, the pamphlet states, "Maglev = Standard magnetic flux + Maglev Flux". Other evidence that was adduced showed the product being described as "Maglev Magnetic Levitation System Motor Fan".

However, the Respondents did not plead Section 23(2), which provides that where a mark has been registered in breach of the abovementioned grounds (a) and (b), it shall not be declared invalid if, as a result of its use, it has acquired a distinctive character in relation to the goods and services for which it is registered. They also did not file written arguments or attend the hearing to argue their case.

The Applicants, on the other hand, advanced the following arguments and evidence in support of their application:

Mark has become generic in the trade

They argued that they had used magnetic levitation technology in connection with railway projects in Germany and China for high-speed trains which float off the tracks so that they may reach speeds of up to 500km/hr. The same technology has also been used in other countries since as early as 1975.

It was further submitted that "Maglev" is a common term used in papers and articles as well as dedicated websites when referring to such technology. The term "Maglev" is listed in the 1988 New Oxford Dictionary as a noun which means, "a transport system in which trains glide above a track, supported by magnetic repulsion and propelled by a linear motion", originating from the late 20th century from the words "magnetic levitation" . It was also noted that there have been international conferences on maglev technology since 1972.

Application for the mark made in bad faith

The Applicants argued that the non-disclosure of the derivation of the mark to the examining Registrar was tantamount to fraud in the registration as an omission to inform the Registrar was as culpable as a fraudulent act.

In arriving at her decision to allow the invalidation application, the Registrar made the following salient points:-

Mark is devoid of distinctive character

A mark may be deemed distinctive if it readily distinguishes one’s goods from another’s. In the instant case, while it is not expressly indicated in the Respondents’ product pamphlet that their products use magnetic levitation technology, it does state that the standard magnetic flux and Maglev flux are used in their fans. Therefore, the Respondents’ fans do employ the type of technology that the term "Maglev" refers to, namely, magnetic levitation. When these fans are referred to as Maglev fans, consumers will wonder if this means the technology used or whether this is a brand name. On this account, the mark is devoid of distinctive character as it is incapable of distinguishing the Respondents’ products without the Respondent's first attempting to educate the public through their product pamphlets. As such, this ground of invalidation succeeded.

Mark has become generic in the trade

Based on the evidence adduced, the word "Maglev" has become customary in the current language and in the established practices of the trade as designating the type of products which use that technology; in other words, "Maglev" has become 'generic'. This ground therefore also succeeded.

Application for the mark made in bad faith

The omission to inform the examining Registrar about the derivation of the mark does not in itself necessitate the inference that the Respondents acted in bad faith and therefore this particular claim failed.

This case highlights to trade mark owners the importance of evaluating the registrability of their brand names as trade marks prior to seeking trade mark protection, in order to avoid the risk of rejection by the trade marks office or challenges from third parties.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.