Case Details
- Citation: [2020] SGIPOS 5
- Court: Intellectual Property Office of Singapore
- Date: 2020-04-02
- Judges: Ong Sheng Li, Gabriel, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Florian Mack
- Defendant/Respondent: Golden Cala Trading EST
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2014] SGIPOS 13, [2016] SGIPOS 10, [2016] SGIPOS 2, [2018] SGIPOS 3, [2020] SGIPOS 5
- Judgment Length: 16 pages, 8,246 words
Summary
This case concerns a trade mark opposition between two parties in the contact lens industry. The applicant, Golden Cala Trading EST, applied to register the trade mark "LENS ME" in Singapore. The opponent, Florian Mack, opposed the registration on the grounds of bad faith and passing off. The Intellectual Property Office of Singapore ultimately found that while the opponent had not established bad faith, he had succeeded on the passing off ground. As a result, the application to register the "LENS ME" trade mark was refused.
What Were the Facts of This Case?
The key parties in this case were Florian Mack, a German businessman, and Golden Cala Trading EST, a company incorporated in Saudi Arabia. Both parties were involved in the contact lens industry, primarily operating in the Middle East region.
Mack was the proprietor of the trade mark "LENS ME", which he had registered or applied for in several jurisdictions outside of Singapore, including the European Union, the United Arab Emirates, and the United Kingdom. However, Mack did not have any registrations or applications for the "LENS ME" mark in Singapore. Instead, Mack licensed the mark to a company called Sky Optical LLC, which operated an online store at the domain www.lens.me selling contact lenses.
Golden Cala, on the other hand, applied to register the trade mark "LENS ME" in Singapore and several other jurisdictions, including France, Hong Kong, Bahrain, Germany, and Saudi Arabia. Golden Cala claimed that it had been the first to develop and use the "LENS ME" mark in relation to contact lenses, starting in 2013 when it engaged a South Korean company to produce contact lenses and appointed a Kuwaiti distributor to sell them primarily in the Gulf Cooperation Council (GCC) region.
The parties had been involved in trade mark disputes in other jurisdictions, such as the United Kingdom and the United Arab Emirates, in relation to the "LENS ME" mark or similar marks.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the opponent, Florian Mack, had established a case of bad faith under Section 7(6) of the Trade Marks Act, such that the application to register the "LENS ME" trade mark should be refused.
2. Whether the opponent had established a case of passing off under Section 8(7)(a) of the Trade Marks Act, such that the use of the "LENS ME" trade mark in Singapore would be liable to be prevented by the law of passing off.
How Did the Court Analyse the Issues?
On the issue of bad faith, the court examined the evidence presented by both parties. The opponent, Florian Mack, argued that the applicant, Golden Cala, was aware of Sky Optical's "LENS ME" online store and was seeking to usurp the trade mark. However, the court found that the opponent had not established that the applicant had acted in bad faith in applying to register the "LENS ME" mark in Singapore.
On the issue of passing off, the court applied the three-part test for passing off: (1) the existence of goodwill, (2) misrepresentation, and (3) damage. The court found that the opponent had established the existence of goodwill in the "LENS ME" mark through Sky Optical's online store, even though the mark was not directly applied to the contact lenses sold. The court also found that the applicant's use of the highly similar "LENS ME" mark would amount to a misrepresentation that would be likely to damage the opponent's goodwill.
The court noted that the opponent did not have any registrations or applications for the "LENS ME" mark in Singapore, but held that this was not fatal to the passing off claim. The key consideration was whether the opponent had established sufficient goodwill in Singapore through the use and advertising of the mark on the www.lens.me website, which the court found had been demonstrated.
What Was the Outcome?
The court ultimately held that the opponent had established his case on the passing off ground under Section 8(7)(a) of the Trade Marks Act, but had not established bad faith under Section 7(6). As the opponent only needed to succeed on one ground of opposition, the application to register the "LENS ME" trade mark was refused.
Why Does This Case Matter?
This case is significant for a few reasons:
1. It demonstrates that a party can succeed in opposing a trade mark application on the basis of passing off, even without having a registered trade mark in the jurisdiction. The key is establishing sufficient goodwill through use and advertising of the unregistered mark.
2. The case highlights the importance of considering potential trade mark conflicts across multiple jurisdictions, as the parties were embroiled in disputes in other countries regarding similar marks.
3. The case provides guidance on the analysis of bad faith in trade mark applications, clarifying that the mere awareness of a similar unregistered mark is not sufficient to establish bad faith.
Overall, this decision reinforces the principles of passing off as a viable ground of opposition, even in the absence of a registered trade mark, and underscores the need for trade mark applicants to carefully consider potential conflicts with unregistered marks used in the course of trade.
Legislation Referenced
Cases Cited
- [2014] SGIPOS 13
- [2016] SGIPOS 10
- [2016] SGIPOS 2
- [2018] SGIPOS 3
- [2020] SGIPOS 5
Source Documents
This article analyses [2020] SGIPOS 5 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.