Apple has had its trade mark Sherlock revoked by the Intellectual Property Office of Singapore in a recent case which reinforces the need for trade mark owners to establish evidence of genuine use of their mark – or risk losing it.
Bigfoot Internet Ventures Pte Ltd (the applicant), a wholly-owned international investment subsidiary of the Bigfoot group of companies, applied to revoke the trade mark Sherlock (pictured) belonging to Apple Inc (the registered proprietor), on the ground that it had not been used in Singapore for a continuous period of five years. The trade mark was applied for in 1998 for "computer software; all included in Class 9", and completed registration on March 5 2001. In this revocation, the applicant relied on both Sections 22(1)(a) and 22(1)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed).
The mark Sherlock was first used by Apple as a software application in connection with version 8.5 of the Macintosh computer operating system, Mac OS. Sherlock was an integrated search tool which performed two main functions: as an internet search engine and for searching for (and finding) files within the Mac OS system.
For some time, the Sherlock search tool was also progressively updated along with these newer versions of Mac OS. However, over time, Sherlock was replaced by other tools (although it continued to be included with the default installation). The Sherlock search tool was finally removed altogether from Mac OS in 2007.
The case centred on whether the evidence of use adduced by Apple was sufficient to establish genuine use of the subject mark in Singapore within the relevant periods such that it ought not to be revoked under Sections 22(1)(a) or 22(1)(b) of the Act, namely (i) March 6 2001 to March 5 2006 (the first five-year period) and (ii) March 12 2010 to March 11 2015 (the second five-year period).
Apple found no issues at all with convincing the hearing officer that there had been genuine use of the trade mark during the first five-year period. However, the same could not be said for the second five-year period as the Sherlock software was removed from the Mac OS in 2007.
During oral argument though, counsel for Apple sought to persuade the hearing officer that just because there was a newer operating system did not mean that older versions of the Mac OS were not being used, and that users of older Mac OS versions may still look to download the Update Combo (upgrades and updates).
However, the hearing officer said that "with the effluxion of time, and the obsolescence of the 'Sherlock' application, in the absence of clear and convincing evidence that there are still downloads of the Update Combos from Singapore in the Second 5-Year Period between 12 March 2010 to 11 March 2015 (or indeed any other evidence of genuine use), I cannot arrive at the conclusion that the Subject Mark was put to genuine use in Singapore within the Second 5-Year Period. The burden of proof is on the Proprietors and in my judgment, they have failed to discharge it".
For these reasons, the hearing officer concluded that the subject mark was not put to genuine use in Singapore within the second five-year period and the application for revocation was successful.
Another noteworthy observation of the decision concerned the issues of software updates and whether merely providing software updates on a website was enough.
The hearing officer clarified that, based on the persuasive reasoning found in Ansul BV v Ajax Brandbeveiliging BV [2003] IP & T 970, post-sale products/support (such as upgrades and updates) could amount to genuine use of the subject mark in Singapore. However, the application and acceptance of this principle would depend on the facts of each case.
Prathashini Rague |
Tracey Berger |
Spruson & Ferguson (Asia) Pte Ltd152 Beach Road#37-05/06 Gateway EastSingapore 189721Tel: +65 6333 7200Fax: +65 6333 7222mail.asia@spruson.comwww.spruson.com
