Case Details
- Citation: [2021] SGIPOS 8
- Court: Intellectual Property Office of Singapore
- Date: 2021-07-12
- Judges: Ms Sandy Widjaja, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Baidu Europe B.V.
- Defendant/Respondent: Baidu Online Network Technology (Beijing) Co., Ltd.
- Legal Areas: Trade marks and trade names – Revocation
- Statutes Referenced: English Trade Marks Act, Trade Marks Act
- Cases Cited: [2015] SGIPOS 335, [2017] SGIPOS 4, [2017] SGIPOS 2, [2017] SGIPOS 9, [2019] SGIPOS 18, [2019] SGIPOS 6, [2019] SGIPOS 7, [2021] SGIPOS 8
- Judgment Length: 32 pages, 12,525 words
Summary
This case involves a dispute over the revocation of a trade mark registration for the mark "百度" (pronounced "Bai du"), which is registered in the name of Baidu Online Network Technology (Beijing) Co., Ltd. (the "Registered Proprietor"). The applicant, Baidu Europe B.V. (the "Applicant"), filed an application for revocation of the registration on the grounds of non-use under Sections 22(1)(a) and (b) of the Singapore Trade Marks Act. The Intellectual Property Office of Singapore (IPOS) had to determine whether the Registered Proprietor had put the mark to genuine use in Singapore within the relevant periods, and whether there were proper reasons for non-use.
What Were the Facts of This Case?
The Registered Proprietor is a company established in Beijing, China in 2000 by Mr Robin Lee and Mr Eric Xu. It has been engaging in Chinese web-related goods, including a Chinese language search engine, websites, audio files and images. Baidu Inc., the Registered Proprietor's parent company, was listed on NASDAQ in 2005. The Registered Proprietor, its parent company, and other associated entities are collectively referred to as the "Registered Proprietor" in this case.
The Registered Mark, "百度", was registered in Singapore with effect from 18 August 2010, covering services in Classes 38 (telecommunications) and 42 (computer and IT services). The date of completion of the registration procedure was 14 January 2011.
On 23 October 2018, the Applicant, a company registered in the Netherlands, filed an application for revocation of the Registered Mark based on non-use under Sections 22(1)(a) and (b) of the Trade Marks Act. The Applicant submitted that it has been providing telecommunication and related IT services worldwide, including in Singapore, since at least 9 August 2006.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Registered Proprietor had put the Registered Mark to genuine use in Singapore within the relevant 5-year periods under Sections 22(1)(a) and (b) of the Trade Marks Act.
2. Whether there were proper reasons for any non-use of the Registered Mark during the relevant periods.
3. If the Registered Mark was found to have been used for only some of the registered goods/services, whether partial revocation under Section 22(6) would be appropriate.
How Did the Court Analyse the Issues?
The Hearing Officer first identified the relevant 5-year periods for the revocation action:
- For Section 22(1)(a), the period from 15 January 2011 to 14 January 2016.
- For Section 22(1)(b), the period from 23 October 2013 to 22 October 2018.
The Hearing Officer then examined the legal principles applicable to revocation for non-use, as summarized in the earlier FMTM Distribution Ltd v Tan Jee Liang trading as Yong Yew Trading Company [2017] SGIPOS 9 decision. Key points included:
- The burden of proof is on the registered proprietor to show what use has been made of the mark (Section 105 of the Trade Marks Act).
- A trade mark must be put to genuine, bona fide use in the course of trade to justify its registration and protection.
- The use must be sufficient to maintain or create market share for the goods/services covered by the registration.
- Minimal or token use solely to preserve the registration will not suffice.
Applying these principles, the Hearing Officer examined the evidence submitted by the Registered Proprietor, including the statutory declarations of its legal counsel, Ms Wang Qiu Xiang.
The Hearing Officer found that the Registered Proprietor's evidence showed some use of the Registered Mark, but that this use was limited to China and did not extend to Singapore. The Registered Proprietor failed to demonstrate genuine use of the mark in Singapore during the relevant periods.
The Hearing Officer also rejected the Registered Proprietor's arguments that there were proper reasons for non-use, such as the global expansion strategy of the Baidu group. The Hearing Officer held that these reasons did not justify the complete absence of use in Singapore.
What Was the Outcome?
Based on the findings, the Hearing Officer concluded that the Registered Mark should be revoked in its entirety under Sections 22(1)(a) and (b) of the Trade Marks Act, as the Registered Proprietor had failed to show genuine use of the mark in Singapore during the relevant periods and did not have proper reasons for the non-use.
Why Does This Case Matter?
This case is significant for a few reasons:
1. It reinforces the importance of genuine use of a registered trade mark to maintain the accuracy and integrity of the trade marks register. A registered mark that is not genuinely used can be vulnerable to revocation, even if the registered proprietor has a global business strategy that does not focus on the local Singapore market.
2. The decision provides a clear application of the legal principles governing revocation for non-use under the Singapore Trade Marks Act. It emphasizes that the burden of proof is on the registered proprietor to demonstrate genuine use, and that minimal or token use will not suffice to avoid revocation.
3. The case highlights the need for registered proprietors to carefully monitor and document their use of registered marks, especially in foreign jurisdictions where they may not have a significant commercial presence. Failure to do so can result in the loss of valuable intellectual property rights.
Overall, this judgment serves as an important precedent for trade mark owners and practitioners in Singapore, underscoring the importance of genuine use of registered marks to maintain their protection.
Legislation Referenced
Cases Cited
- [2015] SGIPOS 335
- [2017] SGIPOS 4
- [2017] SGIPOS 2
- [2017] SGIPOS 9
- [2019] SGIPOS 18
- [2019] SGIPOS 6
- [2019] SGIPOS 7
- [2021] SGIPOS 8
Source Documents
This article analyses [2021] SGIPOS 8 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.