Case Details
- Citation: Bigfoot Internet Ventures Pte Ltd v Athleta (ITM) lnc [2018] SGIPOS 10
- Court: Intellectual Property Office of Singapore
- Date: 2018-07-02
- Judges: Ms See Tho Sok Yee
- Plaintiff/Applicant: Bigfoot Internet Ventures Pte Ltd
- Defendant/Respondent: Athleta (ITM) lnc
- Legal Areas: Trade marks and trade names – Revocation
- Statutes Referenced: Oaths and Declarations Act, Oaths and Declarations Act (Cap 211), Trade Marks Act
- Cases Cited: [2017] SGIPOS 16, [2017] SGIPOS 6, [2018] SGIPOS 10
- Judgment Length: 13 pages, 5,788 words
Summary
This case involves an application by Bigfoot Internet Ventures Pte Ltd to revoke the registered trade mark "ATHLETA" owned by Athleta (ITM) Inc. Bigfoot sought revocation on the grounds of non-use of the mark in Singapore within the relevant time periods. The Intellectual Property Office of Singapore (IPOS) had to determine whether Athleta had genuinely used the mark in Singapore, as required under the Trade Marks Act, to maintain its registration.
After considering the evidence submitted by Athleta, the IPOS hearing officer found that Athleta had demonstrated genuine use of the "ATHLETA" mark in Singapore during the relevant time periods. Accordingly, the application for revocation was dismissed, and Athleta's trade mark registration was maintained.
What Were the Facts of This Case?
Athleta (ITM) Inc. is a Californian company that owns the registered trade mark "ATHLETA" in Singapore. The mark is registered in Class 25 for "Clothing, footwear, headgear and clothing accessories". Athleta was founded in 1998 and in 2008 became a wholly-owned subsidiary of the Gap Inc. group of companies.
On 9 March 2017, Bigfoot Internet Ventures Pte Ltd filed an application to revoke Athleta's trade mark registration on the grounds of non-use. Bigfoot alleged that Athleta had not genuinely used the "ATHLETA" mark in Singapore within the relevant time periods specified in the Trade Marks Act.
In response, Athleta filed evidence in the form of a statutory declaration by its Vice President, Patricia McMahon. The key points from McMahon's declaration were that Athleta had maintained "steady sales" of its products to Singapore through its online website, with total sales in Singapore between 2010 and 2016 amounting to close to S$190,000.
To support this claim, Athleta provided email correspondence between one of its customers in Singapore, Constance See, and Athleta's customer service department in 2013. This email exchange showed that Ms See had placed an order for various Athleta clothing and accessory items, which were shipped to her address in Singapore.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether Athleta had genuinely used the "ATHLETA" trade mark in Singapore within the relevant time periods specified in the Trade Marks Act, so as to maintain its registration.
2. The applicable legal principles for determining whether use of a trade mark constitutes "genuine use" under the Act.
How Did the Court Analyse the Issues?
The hearing officer first outlined the relevant legal principles for determining genuine use of a trade mark under the Trade Marks Act:
1. There must be genuine or bona fide use of the trade mark in relation to the goods or services, in the course of trade, within the relevant time periods.
2. For use to be considered "genuine", it does not have to be significant in a quantitative sense, as long as it was in accordance with the essential function of a trade mark to guarantee trade origin. However, token use solely to preserve rights or internal use by the proprietor is not genuine use.
3. There is no fixed rule that de minimis use cannot constitute genuine use - it depends on the facts of each case.
4. The fewer the acts of use relied on, the more solidly they need to be established.
Applying these principles, the hearing officer examined the evidence submitted by Athleta. She found that the email correspondence between Athleta's customer service and the Singaporean customer, Constance See, demonstrated genuine use of the "ATHLETA" mark during the relevant time period.
The email exchange showed that Ms See had placed an order for various Athleta clothing and accessory items, which were shipped to her address in Singapore. While one item was unavailable, the hearing officer found this was likely due to an inventory issue rather than a complete lack of availability of Athleta products for sale in Singapore.
The hearing officer also noted that Athleta's evidence showed it had maintained "steady sales" of its products to Singapore through its online website, with total sales between 2010 and 2016 amounting to close to S$190,000.
What Was the Outcome?
Based on the evidence provided, the hearing officer was satisfied that Athleta had demonstrated genuine use of the "ATHLETA" trade mark in Singapore during the relevant time periods. Accordingly, the application for revocation filed by Bigfoot Internet Ventures was dismissed, and Athleta's trade mark registration was maintained.
Why Does This Case Matter?
This case provides useful guidance on the legal principles and evidentiary requirements for establishing "genuine use" of a trade mark under the Singapore Trade Marks Act. It shows that even relatively limited sales and shipments of trademarked goods to Singapore can constitute genuine use, as long as the use is bona fide and in accordance with the essential function of a trade mark.
The case also highlights that the fewer the acts of use relied on, the more solidly they need to be evidenced. In this instance, Athleta was able to provide specific documentary proof of a customer order and shipment to Singapore, which was found to be sufficient to demonstrate genuine use.
For trade mark owners, this decision reinforces the importance of maintaining clear records and documentation of any use of their marks, even if the sales volumes are relatively low. Such evidence can be crucial in defending against non-use revocation actions. Conversely, for those seeking to challenge a trade mark registration, this case shows the high evidentiary bar that must be met to prove non-use.
Legislation Referenced
- Oaths and Declarations Act
- Oaths and Declarations Act (Cap 211)
- Trade Marks Act
Cases Cited
- [2017] SGIPOS 16
- [2017] SGIPOS 6
- [2018] SGIPOS 10
- Nike International Ltd v Campomar SL [2006] 1 SLR(R) 919
- Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2009] 2 SLR(R) 814
- Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR(R) 1073
Source Documents
This article analyses [2018] SGIPOS 10 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.