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Our intellectual property practice has more than 23 years’ experience of delivering trademark and patent protection and prosecution services.  Our clients’ business interests are always at the heart of the advice we give.  

With strong experience in the fast growing and dynamic Asia Pacific market, we are able to offer expertise across a diverse range of technologies and industry sectors. 

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Commentary

SUCCESSFUL REVOCATION: FMTM Distribution Limited (the Franck Muller Group) vs Van Cleef & Arpels

Our firm represented FMTM Distribution Limited (the Franck Muller Group) and successfully revoked Van Cleef & Arpel’s MYSTERY SET trademark registration in respect of watches, in a revocation action that went to a full hearing on 2 March 2017.

What is notable about the decision is that IPOS appears to have set a relatively low bar for what registered trademark proprietors must show in terms of use, in order to defend against a revocation action on the basis of 5 years’ non-use.

Although there were no photographs from Van Cleef & Arpel’s website nor other brochures or marketing collaterals showing the actual use or application of MYSTERY SET as a trade mark in connection with jewellery or on product packagings, IPOS did not draw any adverse inference from this and held that there was no strict need to adduce such evidence.

Van Cleef & Arpel’s evidence comprising only four invoices, each for single items, over a period of 4 years (two of which were to Indonesian buyers, one to a Singapore buyer and the fourth to an unknown buyer) was held to be sufficient to show genuine use in the course of trade in Singapore.

Reading the decision, in particular the section thereof which reads

“Taking the relevant characteristics of the products or services on the relevant market into account, I am of the view that quantity as well as turnover of the relevant products constitute genuine use of the Subject Mark. In this regard, I agree with the Proprietors that the relevant goods are luxury items and as such have a smaller consumer base which justifies the low volume, high value transactions on an annual basis”,

it is clear that for luxury brands, a few sales transactions worth hundreds of thousands of dollars are counted as more “weighty” in effect.

The full decision [2017] SGIPOS 6 can be found at https://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2017/2017-sgipos-6.pdf

Other reports on the case can be found at

http://www.straitstimes.com/singapore/van-cleef-arpels-can-use-mystery-set-only-for-jewellery

and

http://watchesbysjx.com/2017/06/franck-muller-trumps-van-cleef-arpels-over-trademark-for-watches.html

COURT OF APPEAL CLARIFIES MEANING OF “EARLIER TRADE MARK”: Campomar SL v. Nike Int'l Ltd [2011] SGCA 6

Under Section 22(7), a successful revocation of a mark takes effect either from the date of the revocation application or earlier if the court is satisfied that there are grounds for the revocation to be effective at a date before the revocation application was filed.

Section 15(2) provides that where an application for registration of a mark is granted, the mark is deemed to be registered as of the date of the application for registration, viz. the effective date of registration would “relate back” to the date of the trademark application. The Court of Appeal noted that the effect of these two provisions is that “if the date of application for registration of a later mark occurs before the date of application for revocation or an earlier mark, on a successful registration of the later mark and revocation of the earlier mark, there would be two identical or almost similar marks on the register at the same time at some point”. It added that therefore, one of the objects of enacting Section 22(7)(b) must have been to address this precise problem.

The Court of Appeal accepted the Appellant’s argument that the fact remained that the 1986 Mark had remained on the register until 21 January 2002 and was only effectively removed after the effective registration date of the Respondent’s 2001 Mark (20 November 2001). The Court of Appeal held that allowing the registration of the Respondent’s 2001 Mark would be contrary to the provisions of the Act, and the PAR should not have disregarded the fact that the registration of the Respondent’s 2001 Mark would have given rise to there being on the register two identical marks being owned by two different proprietors for a period of time (i.e. between 20 November 2001 and 21 January 2002). The remedy for this problem could have been resolved in this case by resorting to Section 22(7)(b) of the Act. In considering this issue, the Court of Appeal found guidance from the case of Riviera Trade Mark [2003] RPC 50, in particular the remarks of Mr Allan James of the UK Trade Marks Registry to the effect that an earlier mark must be revoked effective from a date which preceded the date of application for registration of a later conflicting mark before the later mark could be validly registered. However, this was not done in this case. Consequently, the appeal was allowed.

Concluding remarks

This case has therefore clarified that the relevant point in time for considering the issue of whether there is an “earlier trade mark” is on the date of the hearing of the opposition or the date when the mark is to be entered on the register, as the case may be. It has also highlighted the importance for those seeking revocation of a conflicting earlier mark to ensure that the revocation takes effect from the date on which the earlier trade mark is deemed to have been registered.

(Case Note: March 2011)

SUCCESSFUL TRADEMARK DISPUTE RESOLUTION

We successfully defended our Japanese client against a revocation action filed by a German company against our client’s flagship brand   , which is registered in Singapore for clothing and other fashion items and apparel. Although some of the items in the specification of goods were removed from the trademark registration as a result of the revocation application, the main bulk of the items of importance to our client remained intact.

We obtained a favourable decision wherein the Assistant Registrar found that the totality of evidence submitted by the registrant “pointed towards an effort to launch both women’s and men’s clothing (and related items) bearing the Subject Mark in Singapore. It appeared to be a sequential process involving first bringing in limited quantities in established department stores to generate interest through sales events, before finally setting up a permanent location. The facts did not fit [the German company’s] a theory that the Registrant was simply trying to sell a few items here and there in order to (pre-emptively) defeat an action for non-use revocation.”

The Assistant Registrar also found that the German applicant’s private investigators’ evidence “even at its highest … did not have the effect of addressing, let alone negating, the Registrant’s evidence of use. As a whole, I found the Applicant’s PI evidence to have been of limited value to the overarching question: Had the Subject Mark been put to genuine use in relation to the goods for which it was registered, within the relevant time periods, so that the registration ought not be revoked under the first or second subsections of Section 22(1) TMA?”

The  Assistant Registrar also rejected the German applicant’s bid to obtain a backdating of the revocation order to apply to a period within the 5-year grace period of use. The Assistant Registrar held that there was no legal foundation for such a request since there can be no grounds for revocation during the 5-year grace period.

See the full decision at [2017]SGIPOS 16: https://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2017/2017-sgipos-16.pdf

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  • Trademark opposition and revocation proceedings
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Francine Tan  Law Corporation 

Address:   133 New Bridge Road, #13-02
Singapore 059413
 

Telephone: +65  6224 1230

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Email: ftan@francinetan.com

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