Campomar SL v Nike International Ltd [2011] SGCA 6

Case Details

• Citation: [2011] SGCA 6
• Case Number: Civil Appeal No 78 of 2010
• Decision Date: 28 February 2011
• Court: Court of Appeal of Singapore
• Coram: Chao Hick Tin JA; Andrew Phang Boon Leong JA; V K Rajah JA
• Judgment Delivered By: Chao Hick Tin JA (delivering the judgment of the court)
• Appellant(s): Campomar SL
• Respondent(s): Nike International Ltd
• Counsel for Appellant: Prithipal Singh (K.L. Tan & Associates)
• Counsel for Respondent: Michael Palmer and Toh Wei Yi (Harry Elias Partnership LLP)
• Legal Areas: Trade Marks; Trade Names
• Statutes Referenced: Trade Marks Act (Cap 332, 1999 Rev Ed); Trade Marks Act (Cap 332, 2005 Rev Ed); Trade Marks Rules 1998
• Key Provisions: Trade Marks Act (Cap 332, 2005 Rev Ed), ss 2(1), 8(1), 15(2), 22(7)
• Disposition: Appeal allowed; High Court and Principal Assistant Registrar's decisions set aside; registration of Nike's mark refused; costs to appellant.
• Reported Related Decisions: Campomar SL v Nike International Ltd [2010] 3 SLR 951 (High Court); Nike International Ltd v Campomar SL [2006] 1 SLR(R) 919 (Court of Appeal on revocation); Nike International Ltd and another v Campomar SL [2005] 4 SLR(R) 76 (High Court on revocation).

Summary

Campomar SL v Nike International Ltd [2011] SGCA 6 addressed a critical issue concerning the temporal assessment of "earlier trade mark" status under the Trade Marks Act (Cap 332, 2005 Rev Ed) ("TMA 2005"), particularly when an earlier mark is revoked after a later, identical mark's application date but before the opposition hearing. The Court of Appeal was tasked with determining whether the later mark should be registered despite a period of overlap where both marks would, by virtue of statutory relation-back provisions, concurrently exist on the register.

The Court of Appeal allowed Campomar's appeal, reversing the decisions of the Principal Assistant Registrar of Trade Marks ("PAR") and the High Court. It held that while the Registrar should generally assess an opposition based on the circumstances prevailing at the date of the hearing, this principle cannot override the fundamental prohibition against two identical marks belonging to different proprietors existing on the register, even for a brief period. The Court found that Nike International's application for the "NIKE" mark, if registered, would be deemed effective from 20 November 2001 (its application date under s 15(2) TMA 2005). Campomar's earlier "NIKE" mark, though revoked, was deemed to have ceased only from 21 January 2002 (the date of the revocation application under s 22(7) TMA 2005). This created an impermissible two-month overlap where both marks would concurrently exist on the register.

The Court concluded that allowing registration in such circumstances would infringe s 8(1) of the TMA 2005 and cause confusion. It highlighted that the problem could have been resolved by Nike International seeking an order under s 22(7)(b) of the TMA 2005 to backdate the revocation of Campomar's mark to a date preceding Nike's application, but this was not done. The decision underscores the importance of preventing any period of concurrent registration of identical marks by different proprietors and clarifies the interplay between the relation-back provisions for registration and revocation in trade mark law.

Timeline of Events

1. 2 April 1986: Campomar SL ("Campomar") applied to register the "NIKE" mark in Class 3 for "perfumery with essential oils".
2. 30 December 1989: Campomar's 1986 Mark was duly registered, with the registration taking effect from 2 April 1986.
3. 20 November 2001: Nike International Ltd ("Nike International") filed an application to register the "NIKE" mark in Class 3 for various personal care and cosmetic-related goods.
4. 21 January 2002: Nike International filed an application to revoke Campomar's 1986 Mark under s 22(1) of the Trade Marks Act (Cap 332, 1999 Rev Ed) ("TMA 1999") for non-use.
5. 2006: The Court of Appeal, in Nike International Ltd v Campomar SL [2006] 1 SLR(R) 919, restored the Principal Assistant Registrar's decision to revoke Campomar's 1986 Mark. Campomar's rights to the 1986 Mark were deemed to have ceased from 21 January 2002, the date of the revocation application (s 22(7)(a) TMA 2005).
6. 14 June 2006: Following the revocation, Nike International's registration application was accepted and published for opposition purposes.
7. 14 August 2006: Campomar filed a notice of opposition against Nike International's application.
8. 16 September 2009: At the opposition hearing, the Principal Assistant Registrar of Trade Marks ("PAR") dismissed Campomar's opposition and allowed Nike International's registration.
9. 14 April 2010: The High Court dismissed Campomar's appeal against the PAR's decision.
10. 28 February 2011: The Court of Appeal allowed Campomar's appeal, reversing the decisions of the High Court and the PAR, and refusing the registration of Nike International's mark.

What Were the Facts of This Case?

The respondent, Nike International Ltd ("Nike International"), a US company and wholly-owned subsidiary of Nike Inc, has marketed shoes and apparel globally under the "NIKE" brand since 1972. This case stemmed from Nike International's attempt to register the "NIKE" mark in Singapore for Class 3 goods, primarily personal care and cosmetic products, with the specification later amended to include use "on sports goods or sporting apparel".

The appellant, Campomar SL ("Campomar"), a Spanish company, had previously registered the "NIKE" mark in Class 3 for "perfumery with essential oils" on 30 December 1989, with an effective date of 2 April 1986. This earlier registration became central to the dispute.

On 20 November 2001, Nike International filed its application to register "NIKE" in Class 3. Campomar subsequently opposed this application, relying on its 1986 Mark. In response, on 21 January 2002, Nike International filed an application to revoke Campomar's 1986 Mark for non-use over the preceding five years, as permitted by s 22(1) of the Trade Marks Act (Cap 332, 1999 Rev Ed) ("TMA 1999"). Nike International's registration application was held in abeyance pending the outcome of the revocation proceedings.

The revocation proceedings were protracted. Initially, the Principal Assistant Registrar of Trade Marks ("PAR Loo") revoked Campomar's 1986 Mark for non-use. This decision was overturned by the High Court but subsequently restored by the Court of Appeal in Nike International Ltd v Campomar SL [2006] 1 SLR(R) 919. Consequently, under s 22(7)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) ("TMA 2005"), Campomar's rights to the 1986 Mark were deemed to have ceased from the date of the revocation application, i.e., 21 January 2002.

With Campomar's 1986 Mark revoked, Nike International's application proceeded, was accepted for registration, and published for opposition on 14 June 2006. Campomar filed a notice of opposition on 14 August 2006, primarily arguing that s 8(1) of the TMA 2005 prohibited registration due to its earlier mark, and secondarily alleging bad faith under s 7(6) of the TMA 2005. At the opposition hearing on 16 September 2009, the PAR dismissed both grounds and allowed Nike International's registration. Campomar appealed to the High Court, abandoning the bad faith ground and focusing solely on the s 8(1) issue. The High Court dismissed Campomar's appeal, agreeing with the PAR that the relevant time for assessing an "earlier trade mark" was the date of the opposition hearing, by which time Campomar's mark was no longer registered. Campomar then appealed to the Court of Appeal.

What Were the Key Legal Issues?

The core of the appeal revolved around the interpretation and application of the "earlier trade mark" concept within the Trade Marks Act (Cap 332, 2005 Rev Ed) ("TMA 2005"), particularly concerning the temporal assessment of trade mark rights in opposition proceedings when revocation and registration relation-back provisions interact. The Court had to address the following key legal issues:

• The Relevant Time for Assessing "Earlier Trade Mark" Status: What is the precise point in time at which the existence of an "earlier trade mark" should be determined for the purposes of an opposition under s 8(1) of the TMA 2005? Specifically, should it be the date of the later mark's application, the date of the opposition hearing, or the date of effective registration?
• Interaction of Relation-Back Provisions (ss 15(2) and 22(7) TMA 2005): How do the statutory provisions that deem a registered mark to take effect from its application date (s 15(2)) and a revoked mark to cease from the revocation application date (s 22(7)) interact when these dates create an overlapping period during which two identical marks, belonging to different proprietors, would concurrently exist on the register?
• Prohibition Against Concurrent Identical Marks: Whether the existence of such an overlapping period, even if the earlier mark is no longer on the register at the time of the opposition hearing, constitutes a bar to registration under s 8(1) of the TMA 2005, given the Act's underlying policy against confusion and maintaining the integrity of the register.

How Did the Court Analyse the Issues?

The Court of Appeal began by affirming the general principle that, in considering an opposition to a trade mark application, the Registrar should view the matter as at the date of the opposition hearing. This approach, supported by local and English authorities such as Hugo Boss AG v Reemtsma Cigarettenfabriken GMBH [2009] SGIPOS 7, Kambly SA Specialities de Biscuits Suisses v Intersnack Knabber-Geback GMBH & Co KG [2004] EWHC 943 (CH), Transpay Trade Mark [2001] RPC 10, and Tiffany & Co v Fabriques de Tabac Reunies SA [1999] 2 SLR(R) 541, was deemed "sensible, pragmatic and realistic" (at [18]). The Court agreed with the PAR and the High Court on this point, noting that the definition of "earlier trade mark" in s 2(1) of the TMA 2005 does not provide specific guidance on the relevant time, but its reference to a "registered trade mark" implies a subsisting right.

However, the Court identified a critical additional problem not fully addressed by the lower courts or the cited precedents: the interaction of the relation-back provisions in the TMA 2005. Under s 15(2), a registered mark is deemed to be registered as of the date of its application. Nike International's mark, if registered, would therefore be effective from 20 November 2001. Conversely, under s 22(7), the revocation of Campomar's 1986 Mark was deemed to take effect from 21 January 2002, the date of the revocation application (at [29]).

This created a two-month "overlapping period" from 20 November 2001 to 21 January 2002. During this period, if Nike's mark were registered, both the 1986 Mark and Nike's Mark would concurrently exist on the register, albeit belonging to two distinct proprietors (at [15], [30]). The Court emphatically stated that the TMA 2005 and its predecessor prohibit this phenomenon, as it would run counter to the Act's provisions and cause confusion (at [15], [30], [38], [41]).

The Court distinguished the earlier cases of Hugo Boss, Kambly, and Transpay, noting that they did not appear to have focused on or adequately addressed the significance of such an overlapping period created by relation-back provisions (at [31], [32], [39]). Furthermore, Kambly and Hugo Boss were decided under superseded Acts where the equivalent of s 22(7)(b) of the TMA 2005 had not yet been introduced (at [39]).

Crucially, the Court found guidance in Riveria Trade Mark [2003] RPC 50, a case Campomar had relied on, albeit for a different proposition. While disagreeing with Campomar's argument that Riveria supported assessing the "earlier trade mark" status at the date of application, the Court adopted Mr Allan James's reasoning in Riveria. Mr James had highlighted that for a later mark to be validly registered, an earlier conflicting mark must be revoked effective from a date *preceding* the later mark's application date (at [33], [35]). Otherwise, the subsequent revocation of an earlier mark after the later mark's effective registration date would lead to a retrospective extinguishing of rights during the overlapping period, which is problematic.

The Court underscored that the provisions in s 22(7)(b) of the TMA 2005, which allow the Registrar to order revocation to take effect from an even earlier date if grounds existed, must have been added to address precisely this kind of difficulty (at [38], [40]). Nike International had not sought to invoke this provision to backdate the revocation of Campomar's mark further. Therefore, the Registrar could not disregard the fact that the registration of Nike's mark would result in two identical marks by different parties on the register for a period, which "would infringe s 8(1) of the TMA 2005 and would in turn cause confusion" (at [41]).

What Was the Outcome?

The Court of Appeal allowed Campomar's appeal. It reversed the decisions of the High Court and the Principal Assistant Registrar of Trade Marks, concluding that Nike International's application to register the "NIKE" mark should be refused under s 8(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed).

In the result, Campomar’s appeal is allowed with costs here and below and with the usual consequential orders. [42]

The Court held that the registration of Nike's mark would create an impermissible period of concurrent registration with Campomar's earlier mark due to the relation-back provisions, thereby infringing s 8(1) and causing confusion. Campomar was awarded costs both in the Court of Appeal and in the courts below.

Why Does This Case Matter?

Campomar SL v Nike International Ltd [2011] SGCA 6 is a pivotal decision for trade mark practitioners in Singapore, clarifying the nuanced interplay between opposition, revocation, and the temporal effects of statutory relation-back provisions. The case establishes that while the Registrar generally assesses opposition grounds at the time of the hearing, this assessment must also account for any period of overlap created by the effective dates of registration (s 15(2) TMA 2005) and revocation (s 22(7) TMA 2005). The core ratio is that if allowing a later mark's registration would result in two identical or similar marks belonging to different proprietors concurrently existing on the register for any period, it will be refused under s 8(1) of the TMA 2005 to prevent confusion and maintain the integrity of the register.

Doctrinally, this case refines and distinguishes earlier authorities such as Hugo Boss AG v Reemtsma Cigarettenfabriken GMBH [2009] SGIPOS 7, Kambly SA Specialities de Biscuits Suisses v Intersnack Knabber-Geback GMBH & Co KG [2004] EWHC 943 (CH), and Transpay Trade Mark [2001] RPC 10. While those cases affirmed the "date of hearing" principle for assessing opposition, Campomar highlights that they did not fully grapple with the specific problem posed by relation-back provisions creating an overlapping period of effective registration. The Court explicitly builds on the reasoning in Riveria Trade Mark [2003] RPC 50, adopting its emphasis on the need for an earlier mark's revocation to pre-date a later mark's application to avoid invalidity.

For practitioners, this judgment has significant implications for both litigation and transactional work. It underscores the critical importance of strategically managing revocation proceedings in conjunction with opposition actions. Applicants seeking to register a mark that conflicts with an earlier, vulnerable mark must not only secure its revocation but also ensure that the revocation's effective date, potentially through an order under s 22(7)(b) of the TMA 2005, precedes their own application date. Failure to do so, even if the earlier mark is off the register by the opposition hearing, can still lead to refusal if an overlapping period of effective registration is created. This case reinforces the principle that the trade mark register must be free from any period of statutory conflict between identical marks owned by different entities.

Practice Pointers

• Strategic Use of s 22(7)(b) TMA 2005: When applying to register a mark that conflicts with an earlier mark vulnerable to revocation, proactively seek an order under s 22(7)(b) of the TMA 2005 to backdate the revocation of the earlier mark to a date *prior* to your own application date. This is crucial to prevent any overlapping period of effective registration that could lead to refusal under s 8(1).
• Thorough Evidential Preparation for Revocation: To successfully invoke s 22(7)(b) and secure an earlier effective revocation date, gather robust evidence of non-use extending beyond the five-year period immediately preceding the revocation application. This evidence is necessary to satisfy the Registrar or court that grounds for revocation existed at an earlier date.
• Comprehensive Temporal Analysis in Opposition: In opposition proceedings, always conduct a detailed analysis of the effective dates of both the opposed mark's application (s 15(2) TMA 2005) and any earlier conflicting mark's revocation (s 22(7) TMA 2005). Identify any potential periods of concurrent statutory registration by different proprietors, as this constitutes a strong ground for refusal under s 8(1).
• Integrity of the Register: Remember that the Registrar's primary objective is to maintain a clear and unambiguous register. Arguments in opposition should emphasise how allowing registration would create statutory conflicts or confusion, even if the earlier mark is no longer physically on the register at the time of the hearing.
• Due Diligence in Trade Mark Acquisitions/Licensing: When advising on trade mark transactions, meticulously review the full history of all relevant marks, including application, registration, and revocation dates. Be alert to any potential "overlap periods" that could retrospectively invalidate a registration or create grounds for opposition, even if the marks appear clear on the register at the time of due diligence.
• Distinguishing Precedents: Be prepared to distinguish cases like Hugo Boss, Kambly, and Transpay if they are cited against you, by highlighting that those decisions did not fully address the specific problem of overlapping effective registration periods created by relation-back provisions, which Campomar explicitly resolved.

Subsequent Treatment

As a decision of the Court of Appeal, Campomar SL v Nike International Ltd [2011] SGCA 6 is binding authority in Singapore. The case is significant for clarifying the interaction between the relation-back provisions for trade mark registration (s 15(2) TMA 2005) and revocation (s 22(7) TMA 2005) in the context of opposition proceedings. It firmly establishes that the principle of assessing opposition grounds at the date of the hearing does not permit the registration of a mark if it would lead to any period of concurrent statutory registration of identical or similar marks by different proprietors, thereby infringing s 8(1) of the TMA 2005.

The decision reinforces the fundamental policy objective of preventing confusion and maintaining the integrity of the trade mark register. While subsequent cases have continued to apply the "date of hearing" principle for assessing likelihood of confusion, Campomar serves as a crucial caveat, highlighting that this principle must be applied with due regard to the temporal effects of statutory provisions that can create retrospective conflicts. It has been cited in later cases for its discussion on the relevant date for assessing trade mark rights and the importance of preventing overlaps, solidifying its position as a key authority on these specific procedural and substantive issues in Singapore trade mark law.

Legislation Referenced

• Trade Marks Act (Cap 332, 1999 Rev Ed), s 22(1), s 22(8)(a)
• Trade Marks Act (Cap 332, 2005 Rev Ed), s 2(1), s 7(6), s 8(1), s 8(2), s 15(2), s 22(7), s 22(7)(a), s 22(7)(b), s 23(3)
• Trade Marks Rules 1998 (Cap 322, R 1, 2008 Rev Ed), rule 29(1)
• Trade Marks Act (Cap 332, 1992 Rev Ed), s 23(1)
• Trade Marks Act 1938 (c 22) (UK), s 12, s 12(1)
• Trade Marks Act 1994 (c 26) (UK), s 5(2)(b), s 37, s 40, s 46(6), s 46(6)(a), s 46(6)(b)

Cases Cited

• Campomar SL v Nike International Ltd [2010] 3 SLR 951 (High Court of Singapore) - The High Court decision from which this appeal arose, which dismissed Campomar's appeal.
• Nike International Ltd v Campomar SL [2006] 1 SLR(R) 919 (Court of Appeal of Singapore) - The Court of Appeal decision that restored the revocation of Campomar's 1986 Mark.
• Nike International Ltd and another v Campomar SL [2005] 4 SLR(R) 76 (High Court of Singapore) - The High Court decision that reversed the initial revocation of Campomar's 1986 Mark.
• Riveria Trade Mark [2003] RPC 50 (UK Trade Marks Registry) - Cited for its reasoning on the need for an earlier mark's revocation to pre-date a later mark's application to avoid invalidity.
• Transpay Trade Mark [2001] RPC 10 (UK Trade Marks Registry) - Cited for the principle that events occurring between application and decision date should be considered.
• Hugo Boss AG v Reemtsma Cigarettenfabriken GMBH [2009] SGIPOS 7 (Intellectual Property Office of Singapore) - Cited for the principle that the relevant time for assessing "earlier registrations" is the date of the opposition hearing.
• Kambly SA Specialities de Biscuits Suisses v Intersnack Knabber-Geback GMBH & Co KG [2004] EWHC 943 (CH) (English High Court) - Cited for the principle that the critical date for determining an earlier mark's existence is when the later mark is to be entered on the register.
• Tiffany & Co v Fabriques de Tabac Reunies SA [1999] 2 SLR(R) 541 (Court of Appeal of Singapore) - Cited for the principle that courts should be aware of the realities of the situation at the date the opposition proceeding is heard.
• GE Trade Mark [1973] RPC 297 (House of Lords, UK) - Cited in Kambly for the critical date being the date of entry on the register.
• In the Matter of a Trade Mark “Palmolive” (1932) 44 RPC 269 (UK) - Cited in Kambly for the critical date being the date of entry on the register.

Source Documents

• Original Judgment (PDF) — Litt Law CDN
• eLitigation — Singapore Courts