Case Details
- Citation: [2010] SGHC 140
- Title: Campomar SL v Nike International Ltd
- Court: High Court of the Republic of Singapore
- Date of Decision: 05 May 2010
- Case Number: Originating Summons No 1353 of 2009
- Judge: Choo Han Teck J
- Coram: Choo Han Teck J
- Plaintiff/Applicant: Campomar SL
- Defendant/Respondent: Nike International Ltd
- Counsel for Appellant: Prithipal Singh (K.L. Tan & Associates)
- Counsel for Respondent: Michael Palmer and Toh Wei Yi (Harry Elias Partnership)
- Legal Areas: Trade marks and trade names
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (notably ss 2(1), 8(1), 13)
- Procedural Posture: Appeal against decision of the Principal Assistant Registrar of Trade Marks (PAR) allowing Nike’s application
- Key Prior Appellate Decision: Nike International Ltd v Campomar SL [2006] 1 SLR(R) 919
- Judgment Length: 3 pages, 1,622 words
Summary
Campomar SL v Nike International Ltd [2010] SGHC 140 concerned an opposition to Nike’s application to register the mark “Nike” in Class 3 for “perfumery with essential oils”. Campomar relied on its earlier registration of “Nike” (applied for in 1986) and argued that Nike’s later application was barred because the marks and the relevant goods/services were identical. The central dispute, however, was not the similarity of the marks, but the timing question: whether Campomar’s 1986 mark could still qualify as an “earlier trade mark” for the purposes of the opposition, given that it had been revoked by proceedings initiated in 2002.
The High Court (Choo Han Teck J) dismissed Campomar’s appeal. The court held that the relevant time for determining whether an application mark is refused under s 8(1) of the Trade Marks Act is the time of the opposition proceedings. Because Campomar’s 1986 mark had already been revoked by that time, it was not a “registered trade mark” and therefore did not fall within the definition of “earlier trade mark” under s 2(1). As a result, s 8(1) could not operate as a ground of refusal.
What Were the Facts of This Case?
Campomar was the proprietor of a registered trade mark “Nike” in Class 3 for “perfumery with essential oils”. The application for this mark was dated 2 April 1986 (the “1986 mark”). The mark later became the subject of revocation proceedings initiated by Nike.
On 20 November 2001, Nike filed an application to register the trademark “Nike” (the “application mark”) in Class 3. Campomar opposed this application on the basis that the application mark was identical to its 1986 mark. In parallel, on 21 January 2002, Nike applied to revoke Campomar’s 1986 mark.
In Nike International Ltd v Campomar SL [2006] 1 SLR(R) 919, the Court of Appeal ruled in Nike’s favour and ordered that Campomar’s rights to the 1986 mark be deemed to have ceased from the date of the application for revocation proceedings, namely 21 January 2002. Nike’s application to register the “Nike” mark was held in abeyance pending the outcome of the revocation proceedings. After the Court of Appeal decision, Nike’s application was restored and accepted. The application mark was published on 14 June 2006.
Following publication, Campomar filed a Notice of Opposition on 14 August 2006. The opposition was grounded, in substance, on the statutory bar in s 8(1) of the Trade Marks Act: that a trade mark shall not be registered if it is identical with an earlier trade mark and the goods/services are identical. Campomar’s argument depended on treating its 1986 mark as an “earlier trade mark” for the purposes of Nike’s application. Nike resisted, contending that Campomar’s revocation meant the 1986 mark did not qualify as an “earlier trade mark” at the time the opposition right arose and/or at the material time for assessing the statutory bar.
What Were the Key Legal Issues?
The principal legal issue was definitional and timing-based: whether Campomar’s 1986 mark could be considered an “earlier trade mark” under s 2(1) of the Trade Marks Act for the purposes of applying s 8(1) to Nike’s application. This required the court to determine the “relevant date” for assessing whether the earlier mark existed as a registered trade mark at the time the opposition was decided.
Campomar advanced a view that the relevant date should be the date of Nike’s application (20 November 2001). It argued that, under the definition of “earlier trade mark” in s 2(1), the relevant inquiry should focus on whether the earlier mark’s application was made earlier than Nike’s application. On that approach, the 1986 mark would qualify because it was applied for earlier (2 April 1986) and, according to Campomar, it was not deemed to cease until 21 January 2002.
Nike and the PAR, by contrast, treated the opposition proceedings as the appropriate point in time. The PAR held that because the 1986 mark was no longer registered at the time the opposition was to be determined, it could not be an “earlier trade mark”, and therefore s 8(1) did not apply. The High Court had to decide whether the statutory scheme required this opposition-time approach.
How Did the Court Analyse the Issues?
Choo Han Teck J began by identifying the burden of proof. It was not disputed that, in an opposition, the burden lay on Campomar. The court then framed the main issue as whether Campomar’s 1986 mark could be considered an “earlier trade mark” under s 2(1) for the purposes of s 8(1). The analysis turned on both the wording of the statutory definition and the practical realities of opposition proceedings.
First, the court rejected Campomar’s contention that s 2(a) of the Act itself indicated the relevant date for determining whether an earlier trade mark existed. While s 2(a) defines an “earlier trade mark” as a registered trade mark (or international trade mark (Singapore)) whose application for registration was made earlier than the trade mark in question, the court emphasised that the definition does not expressly state when the “earlier trade mark” must be registered. In other words, s 2(a) tells the court what qualifies as an “earlier trade mark”, but it does not, by itself, answer the timing question of when the earlier mark must still be registered.
From the wording of s 2(a), the court reasoned that it is not enough that the earlier application was filed earlier. The earlier mark must also be a “registered trade mark”. Therefore, the question whether Campomar’s mark was “registered” at the relevant time remained unanswered unless one identified the correct procedural moment for the assessment.
Secondly, the court addressed Campomar’s reliance on Riveria Trade Mark [2003] RPC 50, a UK decision. Campomar used Riveria as support for the proposition that the relevant time to consider an “earlier trade mark” is the date of the application for the subsequent mark. In Riveria, the Trade Marks Registry had to decide the validity of a subsequent trade mark in circumstances where the earlier mark was revoked after the subsequent mark’s registration. The Registry held that the subsequent mark was invalid because the earlier mark was still valid at the time the subsequent mark was registered and at the time the invalidation application was made.
Choo Han Teck J found Riveria unhelpful. The court drew a distinction between (i) proceedings concerning the validity of a subsequent mark at the time of its registration, and (ii) opposition proceedings where the later mark has not yet been finally registered and the question is whether there are grounds to refuse registration. The court observed that Riveria necessarily depended on the circumstances at the time of registration. By contrast, in the present case, the court was concerned with whether there were grounds to oppose a registration that was still subject to opposition.
To support the opposition-time approach, the court adopted reasoning consistent with Transpay Trade Mark [2001] RPC 10, where the UK Trade Marks Registry held that it was proper to take into account events occurring between the date of application and the date the final decision is made. The High Court considered this approach more appropriate for opposition proceedings, because the statutory refusal grounds operate at the stage when the Registrar (or the court on appeal) is deciding whether the later application should be refused.
Choo Han Teck J further reinforced this approach by reference to local appellate authority on the realities of opposition. The court cited Tiffany & Co v Fabriques de Tabac Reunies SA [1999] 2 SLR(R) 541, where the Court of Appeal had held that courts must be aware of the realities at the date the opposition proceedings are heard, particularly in assessing likelihood of confusion. While Tiffany concerned confusion rather than the definition of “earlier trade mark”, the principle was analogous: the legal assessment should reflect the state of affairs at the time the opposition is determined.
Applying these principles, the court concluded that the time that determines whether the application mark was an “earlier trade mark” under s 8(1) is the time of the opposition proceedings. Since Campomar’s 1986 mark had already been revoked by that time, it was not a “registered trade mark” and therefore did not qualify as an “earlier trade mark”. Consequently, the statutory bar in s 8(1) could not be invoked.
In dismissing the appeal, the court also implicitly confirmed that the statutory scheme is not purely mechanistic based on filing dates. Instead, it requires attention to the operative legal status of the earlier mark at the time the opposition is decided. This is particularly important where revocation has retrospective effect (deemed cessation from the date of revocation application), because the earlier mark’s legal existence as a registered right may not survive to the opposition stage.
What Was the Outcome?
The High Court dismissed Campomar’s appeal. The practical effect of the decision was that Nike’s application to register “Nike” in Class 3 proceeded without being blocked by s 8(1) based on Campomar’s revoked 1986 mark.
Costs were ordered to be taxed if not agreed, meaning that the parties would resolve costs either by agreement or through taxation, consistent with standard practice.
Why Does This Case Matter?
Campomar SL v Nike International Ltd is significant for trade mark practitioners because it clarifies the timing for assessing whether an earlier mark qualifies as an “earlier trade mark” for the purposes of s 8(1) opposition. The decision establishes that, where the earlier mark has been revoked by the time the opposition is heard, it will not be treated as an “earlier trade mark” because it is no longer a “registered trade mark”. This is a decisive point in oppositions that rely on identical marks and identical goods/services.
From a doctrinal perspective, the case underscores that statutory definitions may not, by themselves, determine the relevant date for legal assessment. Even where the definition of “earlier trade mark” refers to earlier filing dates, the court will still require the earlier mark to be in the legally relevant status (registered) at the time the refusal ground is applied. This approach promotes coherence in the trade mark registration process: refusal grounds are assessed at the stage when the Registrar (or the court) is deciding whether registration should be granted.
Practically, the decision alerts applicants and opponents to the risk of relying on an earlier registration that is vulnerable to revocation. If revocation proceedings are ongoing or likely to succeed, the opponent must consider whether the earlier mark will remain registered at the opposition stage. Conversely, applicants seeking registration should be aware that even if an earlier mark existed at the time of their application, subsequent revocation may remove the statutory basis for refusal under s 8(1) if the revocation takes effect before the opposition is determined.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 2(1) (definition of “earlier trade mark”) [CDN] [SSO]
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 8(1) (relative grounds for refusal where marks and goods/services are identical) [CDN] [SSO]
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 13 (publication and opposition proceedings) [CDN] [SSO]
Cases Cited
- Nike International Ltd v Campomar SL [2006] 1 SLR(R) 919
- Riveria Trade Mark [2003] RPC 50
- Transpay Trade Mark [2001] RPC 10
- Tiffany & Co v Fabriques de Tabac Reunies SA [1999] 2 SLR(R) 541
Source Documents
This article analyses [2010] SGHC 140 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.