Singapore: Move To Quash Applications To Revoke Trade Marks Fails

In a recent unreported High Court judgement, a preliminary move to quash applications to revoke two registered trade marks from the Singapore register was dismissed on appeal.

The Applicants, Reemtsma Cigarettenfabriken Gmbh, filed for revocation of Trade Mark Nos. T87/05010G and T74/59825G for "HUGO BOSS" and "BOSS" respectively, on the basis that the Respondents, Hugo Boss AG, had not within the period of 5 years following registration put the marks to genuine use, and/or that such use of the marks had been suspended for an uninterrupted period of 5 years, and there were no proper reasons for non-use. The Applicants were granted leave to serve each Notice of the application (known as an Originating Motion) out of jurisdiction on the Respondents in Germany.

The Respondents subsequently filed two applications for an order declaring that the Notices had not been duly served on them.

The Court made no order on these applications at the hearing. On appeal, the Respondents claimed that they had not received a copy each of the Notice as they were not amongst the documents in the two packages left by the process server at the Respondent’s premises. They also claimed that the "letter of service" signed by the process server did not indicate that the Notices were included in the packages.

However, the Court dismissed the appeal, ruling that the Applicants had shown that they had complied with the Rules of Court governing service out of jurisdiction. The Applicants had proved service by exhibiting the certificate of service issued by the judicial authorities of the German district court at Bad Urach. The certificate stated that the Notices were handed over to the Respondent’s employee after an authorised representative of the Respondents was not found on the premises. The Court disagreed with the Respondent’s contention that the certificate was unclear and inadequate, ruling that the Respondents had failed to prove on a balance of probabilities that the applications were not served at all.

This case is illustrative of the importance of proper service out of jurisdiction in, amongst other things, trade mark revocation actions taken against parties based overseas.