Case Details
- Citation: Aussino International Pte Ltd v Aussino (USA) Inc. [2019] SGIPOS 18
- Court: Intellectual Property Office of Singapore
- Date: 2019-12-11
- Judges: Ms Tan Mei Lin
- Plaintiff/Applicant: Aussino International Pte Ltd
- Defendant/Respondent: Aussino (USA) Inc.
- Legal Areas: Trade marks and trade names – Revocation
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2019] SGIPOS 18, [2019] SGIPOS 6
- Judgment Length: 15 pages, 5,113 words
Summary
This case concerns the revocation of a trade mark registration for the "Aussino" mark owned by Aussino (USA) Inc. The applicant, Aussino International Pte Ltd, sought to revoke the registration on the grounds of non-use under Section 22(1)(b) of the Singapore Trade Marks Act. The key issues were whether the registered proprietor had made genuine use of the mark in relation to the registered goods during the relevant 5-year period, and whether use by a related company could be counted as the proprietor's own use.
What Were the Facts of This Case?
The registered proprietor, Aussino (USA) Inc., is a company incorporated in the United States. It acquired the "Aussino" trade mark registration in Singapore in 2016 after a series of ownership changes. The mark was originally registered in 1999 by a Singaporean company, Aussino Group Ltd (AGL).
The mark was first used in Singapore in 1995 by another company, Aussino Home Fashions Pte Ltd (AHF). AHF continued to use the mark in Singapore until around 31 March 2014, when it entered into liquidation. As a result, use of the mark in Singapore was suspended temporarily.
The applicant, Aussino International Pte Ltd, was incorporated in 2014 by a director of the registered proprietor. In October 2017, the applicant entered into discussions with the registered proprietor to revive the "Aussino" brand in Singapore. The applicant then opened its first "Aussino" retail store in Singapore in January 2018, with the registered proprietor's consent to use the mark.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the registered proprietor had made genuine use of the "Aussino" trade mark in relation to the registered goods during the relevant 5-year period of 23 July 2013 to 22 July 2018, as required under Section 22(1)(b) of the Trade Marks Act to avoid revocation.
- Whether the use of the mark by the applicant company, with the registered proprietor's consent, could be counted as the registered proprietor's own use for the purposes of Section 22.
How Did the Court Analyse the Issues?
On the first issue, the court examined the evidence submitted by the registered proprietor to demonstrate its use of the mark during the relevant period. This included:
- Extracts from the "Aussino Singapore" Facebook page operated by AHF, showing promotional materials and comments about Aussino retail stores in Singapore between October 2013 and February 2014.
- An article from a third-party website, www.singpromos.com, dated 22 March 2014, which reported on an "Aussino" storewide closing down sale from 21 March 2014 to 31 March 2014.
- Photos of an "Aussino" retail store at Parkway Parade Shopping Centre, dated sometime in 2011.
The court found that this evidence established genuine use of the mark by AHF, with the registered proprietor's consent, during the period from 24 July 2013 to 31 March 2014.
On the second issue, the court accepted that the use of the mark by the applicant company, Aussino International Pte Ltd, from October 2017 to May 2018, with the registered proprietor's consent, could be counted as the registered proprietor's own use for the purposes of Section 22.
What Was the Outcome?
Based on the evidence, the court found that the registered proprietor had established genuine use of the "Aussino" trade mark in relation to the registered goods during two periods within the relevant 5-year period:
- From 24 July 2013 to 31 March 2014, through the use by AHF with the registered proprietor's consent.
- From October 2017 to 11 May 2018, through the use by the applicant company, Aussino International Pte Ltd, with the registered proprietor's consent.
Accordingly, the court dismissed the applicant's application for revocation of the "Aussino" trade mark registration under Section 22(1)(b) of the Trade Marks Act.
Why Does This Case Matter?
This case provides important guidance on the requirements for demonstrating "genuine use" of a trade mark to resist a non-use revocation action under Section 22(1)(b) of the Singapore Trade Marks Act.
The key takeaways are:
- Use of the mark by a related company, with the registered proprietor's consent, can be counted as the proprietor's own use for the purposes of Section 22.
- Evidence of use does not necessarily need to show the mark being affixed directly to the registered goods, as long as it demonstrates genuine commercial use of the mark in relation to those goods.
- The court will consider the totality of the evidence, including promotional materials, comments from the public, and third-party reports, to assess whether there has been genuine use of the mark.
This case is a useful precedent for trade mark owners seeking to defend their registrations against non-use revocation actions in Singapore.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2019] SGIPOS 18 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.