The Singapore Court of Appeal recently overruled a High Court decision upholding registration of the trade mark "NIKE" registered by a Spanish Company, Campomar SL (Campomar).
Campomar had registered the mark NIKE" here in 1989 in respect of "perfumery with essential oils" in class 3. Nike International Ltd (Nike International), a US company famous for its NIKE brand of footwear and apparel, also wanted to obtain registration of its trade mark application covering a range of goods in the same class, including those registered by Campomar. Nike International initiated revocation action against Campomar's registration on the basis that perfumes bearing Campomar’s registered "NIKE" mark were not being sold here. Under the Trade Marks Act, registration may be revoked if the mark concerned is not put to genuine use in the course of trade in Singapore within the relevant period of 5 years immediately preceding the revocation application.
In defence of its registration, Campomar produced invoices and a bill of lading (a price list was further admitted at the High Court stage) purportedly showing that NIKE-branded perfume products had been shipped to a Singapore company, Bhojwani’s Pte Ltd (Bhojwani’s), during the intervening period.
On the other hand, Nike International had engaged a local private investigator to conduct a use survey on Campomar’s registered mark. The investigation spanned ten major shopping centres as well as Bhojwani’s, where an employee of the company told the investigator that it only sold perfumes in Indonesia and did not deal in NIKE perfumes.
The application was heard at first instance by the Principal Assistant Registrar of Trade Marks (PAR) who ordered that the registration be revoked, holding that Campomar had not shown any genuine use of the mark during the five-year period. The PAR noted that the burden of showing use of the mark was on Campomar and that, based on the evidence adduced, this burden had not been discharged.
However, the High Court, on appeal by Campomar, did not concur with the PAR’s view and held otherwise. The judge was convinced that the invoices adduced by Campomar related to NIKE-branded perfume products of De Ruy Perfumes SA, an associated company of Campomar.
In reaching his decision, the judge 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. On the facts, the judge was satisfied that Campomar had established that NIKE-branded perfume products were brought into Singapore, notwithstanding that there was neither evidence of Campomar's local marketing or sales efforts, nor affidavit evidence given by Bhojwani’s, which was apparently unwilling to get involved in the litigation.
The Court of Appeal however restored the decision of the PAR. Applying the test propounded in "NODOZ" Trade Mark (a 1962 UK judgement), it did not find the evidence produced by Campomar "overwhelmingly convincing". In particular, it was noted that 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", that party must show that it had done everything reasonably possible to obtain the requisite evidence. On the facts, it was not enough to merely explain that the importer (Bhojwani’s) had refused to co-operate as it could have been compelled to do so.
This case is illustrative of the judicial approach in Singapore towards non-use revocation. It should also serve as a warning to trade mark owners that a finding of genuine use of a mark in revocation proceedings will not be made lightly, especially where single instances of use are concerned. It is therefore generally prudent to ensure proper documentation of use and adduction of all relevant document trails in revocation proceedings.
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.
