In a decision rendered by the Intellectual Property Office of Singapore (IPOS), IPOS ordered for partial revocation against Daidoh Limited’s registered trade mark.
(A) Who are the parties involved in this case?
(a) New Yorker S.H.K Jeans GmbH & Co. KG (“Applicant”)
(b) Daidoh Limited (“Registrant”)
(B) What actually happened?
On 7 September 2011, the Applicant filed for application to register its mark, which was subsequently accepted and published for opposition. The Registrant filed to oppose the Applicant’s mark. In response, on 19 March 2015, the Applicant filed for an application for revocation against the Registrant’s registered trade mark in Class 25.
The Applicant brought the application on the basis of non-use under Section 22(1)(a) and/or (b) of the Trade Marks Act (Cap. 332) that the mark had not been put to genuine use in Singapore within the relevant time periods.
The Applicant also requested for the Assistant Registrar to exercise its discretion to backdate the revocation order to a day falling within the first 5 years after the date of the completion of the registration procedure, pursuant to Section 22(7) of the Trade Marks Act (which was not expressly pleaded), so that it would be able to effectively eliminate the Registrant’s mark from the opposition proceedings (“Backdating Request”).
Lastly, the Applicant requested for an order for partial revocation in its alternative submission. It provided the Assistant Registrar with a list of goods that should be revoked for non-use, having regard to the evidence.
(C) What is/are the issue(s) in dispute?
(a) Whether there was genuine use of the Registrant’s mark;
(b) Whether the Backdating Request could be granted; and
(c) Whether an order for partial revocation can be made.
(a) Genuine Use
Based on the findings and evidence, the Assistant Registrar held that there was genuine use of the Registrant’s mark.
(b) Backdating Request
The Assistant Registrar held that it has no power to backdate a non-use revocation order to a day falling within the first 5 years after the date of the completion of the registration procedure.
(c) Partial Revocation
The Assistant Registrar found that the Registrant’s mark was used in relation to some, but not all, of the goods specified and ordered revocation for the following goods:
boots; shoes; sandals; shoes and boots for sports; footwear; half-boots; slippers; spats; costumes (masquerade).
(E) Rationale for holding
(a) Genuine Use
The evidence provided clearly showed that Style Works Pte Ltd had ordered and imported goods from the Registrant’s wholly owned subsidiary, NewYorker Ltd. These goods were then sold in Takayshimaya and Isetan (Scotts). The Assistant Registrar found that the civil standard of balance of probabilities was sufficed by the three separate sales events that took place at Takashimaya (twice) and Isetan (once). Further, the Registrant provided conclusive proof that its mark had been put to use in 2012 and 2013, both of which fell between the relevant time periods that the Applicant claimed that there was non-use.
(b) Backdating Request
The Assistant Registrar rejected the four submissions the Applicant made in relation to the Backdating Request:
(i) the Applicant relied on the Court of Appeal case of Campomar SL v Nike International Ltd  2 SLR 846 (“Campomar”). The Assistant Registrar explained that the Court of Appeal in Campomar did not hold that backdating is allowed to within the first 5-year period from the date of completion of the registration procedure, which was the issue the Applicant was facing in this case.
(ii) the Applicant argued that there were no policy reasons to prevent the backdating to within the first 5 years from the date of completion of the registration procedure. The Assistant Registrar opined that section 22(1)(a) gives the registered proprietor a “grace period” of a full 5 years to put his mark to genuine use. If the Applicant’s backdating request were to be allowed, it would essentially be granting the Applicant a relief that it was not entitled to in the first place. Additionally, Section 22(7)(b) is worded in such a way that the grace period needs I elapsed before the cause of action, i.e. ground of revocation, can arise.
(iii) the Applicant argued that it had previously successfully revoked the Registrant’s mark, “NEWYORKER BY DAIDOH”, and in that case, the Assistant Registrar exercised her discretion to backdate the effect of the revocation to 6 September 2011. Again, the Assistant Registrar rejected this argument, explaining that the case was not one where a request was made to the Assistant Registrar for it to exercise its discretion to backdate the revocation date to within the first 5 years from the date of completion of registration procedure. The backdated date in the case was after the “grace period”.
(iv) the Applicant also argued that the HMD Practice Circular No. 1/2012 can be departed from in appropriate cases, having regard to the Campomar case, and that this case was an appropriate one. The Assistant Registrar held that the Practice Circular was not formally binding on it but admitted that it had to adopt a consistent approach unless the Practice Circular is incorrect or outdated or should not be followed for other compelling reasons. It dismissed the Applicant’s argument due to its erroneous reliance on the Campomar case. The Applicant also failed to provide any valid reasons for departure from the Practice Circular.
(c) Partial Revocation
In coming to its decision on which goods to revoke, the Assistant Registrar explained that there was no evidence that the Registrant’s mark had ever been used in relation to any type of footwear. Furthermore, the Assistant Registrar opined that to allow the Registrant’s mark to be registered in relation to the revoked goods would result in a specification that is unduly and unfairly wide, after having regard to the use that the Registrant has actually made of its mark. As for costumes (masquerade), the Assistant Registrar opined that this good is a highly specialised type of good for which there was obviously no use and should be revoked.
Point of Interest:
The remaining goods after the partial revocation made by the Assistant Registrar contained goods that the Registrant did not in actual fact use its mark on. However, the Assistant Registrar explained that specific instances of use are only the starting point and its task in making an order for partial revocation is to arrive at a fair specification of goods having regard to the evidence and all the circumstances of the individual case. It was not necessary for the Assistant Registrar to remove all goods that the Registrant did not use its mark on as long as the specification is fair.
Have a question on Intellectual Property?
If you have any questions or require legal advice on Intellectual Property matters, you can request a quote with Renee Xavier. You can also get a Quick Consult with other lawyers. With Quick Consult, from a transparent, flat fee from S$49, a lawyer will call you back on the phone within 1-2 days to answer your questions and give you legal advice.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article