Case Details
- Citation: [2019] SGIPOS 13
- Court: Intellectual Property Office of Singapore
- Date: 2019-09-02
- Judges: Lee Li Choon
- Plaintiff/Applicant: Dentsply Sirona Inc.
- Defendant/Respondent: Tomy Incorporated
- Legal Areas: Trade marks and trade names – Declaration of Invalidity
- Statutes Referenced: English Trade Marks Act, Trade Marks Act
- Cases Cited: [2019] SGIPOS 13
- Judgment Length: 15 pages, 7,679 words
Summary
This case involves three invalidation proceedings instituted by Dentsply Sirona, Inc. ("the Applicant") against trade mark registrations owned by Tomy Incorporated ("the Proprietor" or "Tomy"). The Applicant sought to invalidate Tomy's registrations for the marks " ", " ", and " " under various grounds of the Trade Marks Act. The key issue was the ownership and use of the trade marks, which was governed by a series of agreements between the parties dating back to 1986. After reviewing the evidence and the parties' agreements, the Intellectual Property Office of Singapore found that the Applicant had not established grounds to invalidate Tomy's trade mark registrations.
What Were the Facts of This Case?
The Applicant, Dentsply Sirona Inc., is the holding company of GAC International LLC (previously known as GAC International, Inc.), which has been the distributor of Tomy's orthodontic products since 1967. The parties' relationship has been governed by a series of agreements over the years, including the 1986 Agreement, 1998 Agreement, 2004 Agreement, and 2012 Agreement.
Under the 1986 Agreement, GAC was appointed as the exclusive distributor of Tomy's products in certain territories, while Tomy retained exclusive rights in other territories. The agreement also provided that GAC could register Tomy's trademarks "Tomy" and "Orth-Tomy" in GAC's territories. The 1998 Agreement further divided the world into "Exclusive Territory" for GAC and "Non-Exclusive Territory" for Tomy, with each party having exclusive and non-exclusive rights to distribute and sell products in their respective territories.
The Subject Marks at issue in this case - " ", " ", and " " - were registered by Tomy in 2013. The Applicant subsequently filed applications to invalidate these registrations under various grounds of the Trade Marks Act.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Applicant had established grounds to invalidate Tomy's registrations of the Subject Marks under Sections 8(7)(a), 8(2)(b), 8(4)(b)(i), and 7(6) of the Trade Marks Act.
2. The ownership and use of the trade marks, as governed by the various agreements between the parties.
How Did the Court Analyse the Issues?
The Hearing Officer first reviewed the relevant agreements between the parties, starting with the 1986 Agreement. This agreement carved out exclusive territories for GAC and Tomy, and provided that GAC could register the "Tomy" and "Orth-Tomy" trademarks in its territories. However, the 1986 Agreement did not deal with the Subject Marks at issue.
The Hearing Officer then examined the 1998 Agreement, which replaced the 1986 Agreement. This agreement further divided the world into "Exclusive Territory" for GAC and "Non-Exclusive Territory" for Tomy, with each party having exclusive and non-exclusive rights to distribute and sell products in their respective territories. The agreement also provided that GAC could sell products under its own brands and own the rights to those brands, while Tomy would have no rights or interest in them.
Based on the terms of the parties' agreements, the Hearing Officer found that the ownership and use of the trade marks was clearly delineated, with GAC having the right to use the "Tomy" and "Orth-Tomy" marks in its territories, and Tomy retaining the rights to those marks in its territories. However, the agreements did not address the ownership or use of the Subject Marks, which were registered by Tomy in 2013.
The Hearing Officer then analyzed the Applicant's grounds for invalidation under the Trade Marks Act. Regarding Section 8(7)(a), the Hearing Officer found that the Applicant had not shown that the registration of the Subject Marks was contrary to Singapore law or any international convention to which Singapore is a party. For Section 8(2)(b), the Hearing Officer determined that the Applicant had not established a likelihood of confusion between the Subject Marks and its own marks. The Hearing Officer also rejected the Applicant's arguments under Sections 8(4)(b)(i) and 7(6), finding that the Applicant had not demonstrated that the registration of the Subject Marks was made in bad faith.
What Was the Outcome?
The Hearing Officer dismissed the Applicant's applications for declarations of invalidity. The registrations of the Subject Marks - " ", " ", and " " - remained valid and in force.
Why Does This Case Matter?
This case provides important guidance on the principles of trade mark ownership and use, particularly in the context of long-standing commercial relationships and distribution agreements. The Hearing Officer's detailed analysis of the parties' agreements and the application of the relevant provisions of the Trade Marks Act demonstrates the importance of carefully documenting and understanding the intellectual property rights associated with a business relationship.
The case also highlights the high evidentiary burden that an applicant must meet to successfully invalidate a registered trade mark. The Hearing Officer's findings that the Applicant had not established the necessary grounds under the Trade Marks Act underscores the significant hurdles that must be overcome in such proceedings.
For practitioners, this case serves as a reminder to thoroughly review and document the intellectual property rights and obligations of all parties involved in a commercial relationship, as well as the potential challenges in seeking to invalidate a registered trade mark.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2019] SGIPOS 13 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.