Lisbeth Enterprises Limited (the applicant), instituted a revocation action on the grounds of non-use against Procter & Gamble International Operations SA (the proprietor) for the subject mark which was registered in Singapore on June 1, 1981, in Class 3. The goods claimed were "Eau de Cologne, perfumes, essential oils, non-medicated toilet preparations, cosmetics, anti-perspirants, soaps, dentifrices and preparations for the hair." While the applicant claimed that the mark should be revoked on the grounds of non-use for a continuous period of five years, the registered proprietor claimed that the subject mark had been used on a fragrance line endorsed by the singer Christina Aguilera.
The applicant operates fitness and beauty clubs in the Asia-Pacific region, with branches in Singapore, Malaysia, Thailand and Hong Kong. They applied for the word mark INSPIRE in Singapore, however the subject mark was cited as an earlier mark. Thereafter, the applicant commenced revocation proceedings against the subject mark.
Subject Mark for Revocation
Mark Being Used by the Proprietor
In this respect, the proprietor's primary defence was that they commenced use of the subject mark prior to the institution of the revocation action by the applicant and that preparations for the commencement of use of the subject mark began before the proprietors became aware that the application for revocation might be made.
While considering whether the evidence of use of the subject mark submitted by the proprietor pertained to use in Singapore, the Registrar examined the dichotomy between the use of the mark on the internet and "the traditional tenet of territoriality in trademarks law." The Registrar further took the view that the proprietor had taken no "active" steps with respect to the availability of the goods bearing the subject mark in Singapore beyond the listings available on the internet.
The Registrar further examined the date of use of the subject mark as submitted by the proprietor to support use of the mark in Singapore. The proprietor submitted that they had commenced use of the mark in early September 2008 and that preparations for use had commenced in 2007 before they were aware of a proposed revocation action. The revocation action was filed on October 16, 2008, in Singapore. The applicant argued, however, that they had filed a corresponding revocation action against the proprietor's Hong Kong registration for the subject mark on February 18, 2008, as a result of which the proprietor would be well-aware before commencement of the use of the subject mark in Singapore.
While considering whether the subject mark had been used for the goods for which it is registered, the Registrar found that the subject mark is registered in respect of a wider specification than the use of the mark on the fragrance line endorsed by Christina Aguilera. In view thereof, the Registrar opined that even if the mark was considered to have been used in Singapore during the relevant period, the use would have been confined to specific goods and not for all the goods claimed under the subject registration.
The applicant further argued that the purported use of the mark by the proprietor did not pertain to the registered mark and was instead "INSPIRE". In addressing this issue, the Registrar examined Section 22(2) of the Trade Marks Act which provides that "....use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered...".The Registrar opined that"INSPIRE" and the registered mark would be considered to be substantially the same and therefore use of INSPIRE (if any) would be considered to be genuine use of the registered mark.
In considering whether the evidence of use of the subject mark as provided by the proprietor fulfilled all the criteria set out to establish genuine use of the subject mark, the Registrar found that the proprietor was unable to demonstrate genuine use of the subject mark in Singapore and that the grounds of revocation under Section 22(1)(a) and (b) of the Trade Marks Act succeed.
This decision by the Registry further reflects the policy consideration behind assessing genuine use of the mark in non-use revocation proceedings and sets out with clarity the considerations of internet use of the mark (i.e. mere advertisements of the mark on the Internet) as opposed to actual use of the mark (i.e. actual internet sales in Singapore of products bearing the mark), while evaluating bona fide use of registered marks in Singapore.
This article was first published in Asia IP on June 30, 2015. For further information, please visit http://www.asiaiplaw.com/ .
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.