Two trade mark registrations belonging to a renowned designer goods company were recently revoked in the Singapore High Court.
In this unreported case, Reemtsma Cigarettenfabriken, the applicant, manufactured and sold cigarettes. Hugo Boss, the respondent, designed, manufactured and sold high-fashion apparel for men. Hugo Boss was the proprietor of two Singapore trade mark registrations in International Class 34, for BOSS in respect of cigarettes and HUGO BOSS in respect of cigarettes; cigars; tobacco for cigarettes; pipe tobacco; lighters and matches (the marks). Reemstma brought an action under sections 22(1)(a) and/or (b) of the Trade Marks Act (Cap 332, 1999 Rev Ed) (the Act) to revoke the marks on the basis of non-use.
Briefly, the issues before the Court were:
whether there had been "genuine use" of the marks within the statutory period; and
whether the court had the discretion to allow the marks to remain on the Trade Marks Register, notwithstanding that the grounds for revocation under Section 22 were made out.
The Court allowed Reemtsma's applications with costs. With regard to whether there had been "genuine use" of the marks within the statutory period, summarizing the relevant legislation, section 22 of the Act states that a trade mark registration may be revoked if:
within a five year period following the date of completion of the registration procedure, the mark has not been put to genuine use in the course of trade in Singapore in relation to the goods/services covered by the registration; or
such use has been suspended for an uninterrupted five year period
and there are no proper reasons for non-use in either case.
On the facts, Belinda Ang, the High Court judge presiding over this case, found that it was not even necessary to determine whether there had been "genuine use" of the marks within the statutory period as Hugo Boss's evidence of actual use of the marks in relation to the goods concerned was scanty and unsatisfactory. Hugo Boss relied on product catalogues and an annual Hugo Boss buyers' conference held in Singapore to support their contention of having used the marks in Singapore. However, this evidence failed to convince the judge as there were various inadequacies in the company's affidavits. On the contrary, an adverse inference was drawn against the company due to several observations concerning its affidavits which included the following:
cigars were not featured at all in the product catalogues;
Hong Kong address and telephone/facsimile numbers were printed on the order forms;
no evidence adduced of catalogues purportedly sent to Singapore;
the statement "Not every article is available for all countries" printed on the order form;
no evidence adduced of Singapore sales figures;
no affidavit from Hugo Boss's local franchisee;
invoices submitted in respect of buyers' conference described the event as a fashion show; and
the admission that sales of Hugo Boss cigars and smoker's accessories were not actively pursued in Singapore because of statutory restrictions on advertising.
Moreover, Reemtsma adduced evidence from an employee in a Hugo Boss franchise outlet as well as from a regional director of a tobacco company, confirming that they had not come across the use of the marks for the relevant goods in Singapore. The judge therefore had no difficulty in dismissing the respondent's purported evidence of use completely.
As to whether the Court had the discretion to allow the marks to remain on the Trade Marks Register, notwithstanding that the grounds for revocation under section 22 were made out, Ang held that, on a proper construction of section 22 of the Act, the Court did not have the discretion to maintain a mark on the register in the situation where grounds for revocation had been established. Having considered the case and academic authorities before her, she concluded that the word "may" in section 22 (that is "The registration of a trade mark may be revoked on any of the following grounds: ..." [emphasis added]) created an obligation rather than a discretion.
Finally, Ang dismissed Hugo Boss's submission that the Court should allow the marks to remain on the register because Reemtsma's proposed marks were confusingly similar; this would operate to stop Reemtsma, which intended to register its mark once the marks were revoked. She held that this argument erroneously conflated a revocation application with an opposition hearing. It would bypass the procedures established for registering a mark and an opposition hearing and was therefore not permissible.
This case provides an interesting insight into the court's interpretation of section 22 of the Act, which, it is submitted, must be the correct interpretation in the context of this provision. Otherwise, the very purpose of and intent behind the non-use revocation process would risk being defeated by the resulting unpredictability and arbitrariness of the outcome. It should also serve as a warning to trade mark owners, especially those who register their marks extensively world-wide, that colourable or unsubstantiated use of their registered trade marks in Singapore is unlikely to be enough to fend off non-use revocation in this jurisdiction.
|
| Gladys Mirandah |
