Case Details
- Citation: [2023] SGIPOS 9
- Court: Intellectual Property Office of Singapore
- Date: 2023-05-02
- Judges: Principal Assistant Registrar See Tho Sok Yee
- Plaintiff/Applicant: Coinbase, Inc.
- Defendant/Respondent: bitFlyer Inc.
- Legal Areas: Trade marks and trade names – Invalidation
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2011] SGHC 176, [2012] SGHC 149, [2017] SGIPOS 2, [2018] SGIPOS 4, [2020] SGIPOS 10, [2021] SGHC 165, [2021] SGIPOS 2, [2023] SGIPOS 9
Summary
In this case, Coinbase, Inc. ("the Applicant") applied for a declaration of invalidity against International Registration No. 1308248 (Trade Mark No. 40201614827X) designating Singapore, which has been protected in Singapore in the name of bitFlyer Inc. ("the Proprietor") since 3 February 2016. The Applicant relied on two grounds of invalidation under the Trade Marks Act 1998: bad faith under Section 23(1) read with Section 7(6), and likelihood of confusion under Section 23(3)(a)(i) read with Section 8(2)(a) and (b).
The Intellectual Property Office of Singapore ultimately granted the Applicant's application, finding that the Proprietor had applied to protect the Subject Mark in bad faith despite knowledge of the Applicant's "COINBASE" mark, and that there was a likelihood of confusion between the marks. The Proprietor's trade mark registration was therefore declared invalid.
What Were the Facts of This Case?
The Applicant, Coinbase, Inc., is a leading provider of digital asset and currency exchange services and related software and services. It was founded in June 2012 and is based in California, USA. The company operates a digital currency wallet and platform where merchants and consumers can transact using digital currencies such as Bitcoin, Ethereum and Litecoin.
The Proprietor, bitFlyer Inc., is also a Bitcoin exchange and marketplace that enables its customers to buy, sell and spend Bitcoins. It was founded in January 2014 in Tokyo, Japan and is Japan's largest cryptocurrency exchange.
The Proprietor had obtained an international registration designating Singapore for the mark "bitFlyer" (the "Subject Mark") in various classes, including Class 35 for business-related services and Class 38 for telecommunications services. The registration was protected in Singapore from 3 February 2016 (the "Relevant Date").
The Applicant, Coinbase, Inc., subsequently applied for a declaration of invalidity against the Proprietor's trade mark registration, relying on two grounds under the Trade Marks Act 1998.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Proprietor had applied to protect the Subject Mark in bad faith under Section 23(1) read with Section 7(6) of the Trade Marks Act 1998, given the Applicant's prior use of the "COINBASE" mark.
2. Whether there was a likelihood of confusion between the Subject Mark and the Applicant's "COINBASE" mark under Section 23(3)(a)(i) read with Section 8(2)(a) and (b) of the Trade Marks Act 1998.
How Did the Court Analyse the Issues?
On the issue of bad faith under Section 7(6), the Intellectual Property Office of Singapore examined the evidence and found that the Proprietor had applied to protect the Subject Mark despite being aware of the Applicant's "COINBASE" mark. The Proprietor had failed to provide a credible explanation for why it chose the "bitFlyer" mark, which was highly similar to the Applicant's well-known "COINBASE" mark. The Registrar concluded that the Proprietor's application was made in bad faith.
On the issue of likelihood of confusion under Section 8(2), the Registrar found that the Subject Mark and the Applicant's "COINBASE" mark were visually and aurally similar, and that the services covered by the marks were also similar. Considering the reputation and fame of the Applicant's "COINBASE" mark, the Registrar determined that there was a likelihood of confusion among the relevant public.
In reaching these conclusions, the Registrar relied on various precedents, including [2011] SGHC 176, [2012] SGHC 149, and [2021] SGHC 165, which provided guidance on the assessment of bad faith and likelihood of confusion in trade mark disputes.
What Was the Outcome?
Based on the findings that the Proprietor had applied to protect the Subject Mark in bad faith and that there was a likelihood of confusion with the Applicant's "COINBASE" mark, the Intellectual Property Office of Singapore granted the Applicant's application for a declaration of invalidity. The Proprietor's trade mark registration for the Subject Mark was declared invalid.
Why Does This Case Matter?
This case is significant for several reasons:
1. It demonstrates the importance of protecting well-known trade marks and the consequences for those who attempt to usurp such marks in bad faith. The Intellectual Property Office of Singapore's decision sends a clear message that such conduct will not be tolerated.
2. The case provides valuable guidance on the assessment of bad faith and likelihood of confusion in trade mark disputes. The Registrar's analysis of the relevant legal principles and their application to the facts of the case will be useful for practitioners in navigating similar issues.
3. The outcome of this case is particularly relevant for the cryptocurrency industry, where the protection of brand names and trade marks is crucial. The decision reinforces the need for companies in this sector to be vigilant in safeguarding their intellectual property rights.
Legislation Referenced
- Trade Marks Act
- Trade Marks Act 1998
Cases Cited
- [2011] SGHC 176
- [2012] SGHC 149
- [2017] SGIPOS 2
- [2018] SGIPOS 4
- [2020] SGIPOS 10
- [2021] SGHC 165
- [2021] SGIPOS 2
- [2023] SGIPOS 9
Source Documents
This article analyses [2023] SGIPOS 9 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.