Case Details
- Citation: [2022] SGIPOS 2
- Court: Intellectual Property Office of Singapore
- Date: 2022-03-01
- Judges: Assistant Registrar Chee Sze Yin
- Plaintiff/Applicant: Choi Sun Mi
- Defendant/Respondent: Comfort Lab Inc
- Legal Areas: Trade marks and trade names – Revocation
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2015] SGIPOS 6, [2021] SGIPOS 11, [2022] SGIPOS 2
- Judgment Length: 15 pages, 2,633 words
Summary
This case involves an application by Choi Sun Mi to revoke the trade mark registration of "Comfort Lab Inc." on the grounds of non-use. The Intellectual Property Office of Singapore (IPOS) found that Comfort Lab Inc. failed to show genuine use of the registered trade mark on the goods for which it was registered, and therefore granted the revocation application.
What Were the Facts of This Case?
Comfort Lab Inc., also known as Kabushiki Kaisha Comfort Lab, is a company operating from Osaka, Japan and is the registered proprietor of the trade mark in question. Choi Sun Mi is the CEO of Comfortlab Co., Ltd., a company operating from Seoul, South Korea.
On 4 May 2020, Choi Sun Mi filed an application to revoke the trade mark registration of Comfort Lab Inc. on the grounds of non-use under Section 22(1)(a) and (b) of the Singapore Trade Marks Act. Comfort Lab Inc. filed a counter-statement and evidence in support of maintaining the registration.
The relevant time periods considered were: (a) the first 5 years following the completion of the registration procedure from 19 January 2013 to 18 January 2018 (the "First 5-Year Period"), and (b) the successive 5-year periods from 20 January 2013 to 19 January 2018, 5 May 2015 to 4 May 2020, and any other such periods in between.
What Were the Key Legal Issues?
The key legal issue was whether Comfort Lab Inc. had put the registered trade mark to genuine use in Singapore in relation to the goods for which it was registered, within the relevant time periods, as required under Sections 22(1)(a) and (b) of the Trade Marks Act.
Specifically, the Assistant Registrar had to determine whether Comfort Lab Inc.'s evidence showed genuine use of the trade mark on the registered goods of "coats; sweaters; shirts; underwear (underclothing); nightwear; socks and stockings; T-shirts; headgear for wear; shoes and boots".
How Did the Court Analyse the Issues?
The Assistant Registrar applied the analytical framework set out in the Technopharma decision, which requires the registered proprietor to demonstrate five key elements to establish genuine use of the trade mark: (i) use in Singapore, (ii) use during the relevant time periods, (iii) use in relation to the registered goods, (iv) use by the proprietor or with its consent, and (v) use in the registered form or a form not altering the distinctive character.
The Assistant Registrar focused her analysis on the third element - whether Comfort Lab Inc. had used the trade mark in relation to the registered goods. She found that Comfort Lab Inc.'s evidence only showed use of the trade mark on "insoles", which were not included in the registration. The Assistant Registrar agreed with the applicant that "insoles" and "shoes" (which were included in the registration) were distinct goods, and use on one could not be considered use on the other.
Additionally, the Assistant Registrar noted that Comfort Lab Inc. had not adduced any evidence of use on the other registered goods such as coats, sweaters, shirts, and so on.
What Was the Outcome?
Given the failure to establish genuine use of the trade mark on the registered goods, the Assistant Registrar concluded that the revocation application must be granted. The trade mark registration was revoked with effect from 19 January 2018, the day after the end of the First 5-Year Period.
The applicant, Choi Sun Mi, was also awarded costs to be taxed, if not agreed.
Why Does This Case Matter?
This case provides important guidance on the requirements for demonstrating genuine use of a registered trade mark in order to defend against a non-use revocation action in Singapore.
The decision reinforces that the registered proprietor bears the burden of proof and must establish use on each of the goods covered by the registration, not just related or complementary goods. Merely showing use on a product that is distinct from the registered goods, even if they are commercially linked, will not be sufficient.
The case also highlights the need for registered proprietors to carefully monitor their use of trade marks and maintain robust evidence to defend against potential revocation actions. Failure to do so can result in the loss of valuable trade mark rights.
Legislation Referenced
Cases Cited
- [2015] SGIPOS 6 - Lisbeth Enterprises Limited v Proctor & Gamble International Operations SA
- [2021] SGIPOS 11 - Technopharma Limited v Unilever PLC
- [2022] SGIPOS 2 - Choi Sun Mi v Comfort Lab Inc
Source Documents
This article analyses [2022] SGIPOS 2 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.