Case Details
- Citation: [2018] SGIPOS 20
- Court: Intellectual Property Office of Singapore
- Date: 2018-11-29
- Judges: David Llewelyn
- Plaintiff/Applicant: Chicago Mercantile Exchange Inc.
- Defendant/Respondent: Intercontinental Exchange Holdings, Inc.
- Legal Areas: Trade marks and trade names – Declaration of Invalidity
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2014] SGIPOS 3, [2016] SGCA 64, [2017] SGIPOS 2, [2018] SGHC 81, [2018] SGIPOS 20
- Judgment Length: 21 pages, 9,794 words
Summary
This case involves a dispute over the validity of two trade mark registrations owned by Intercontinental Exchange Holdings, Inc. (the "Proprietor") - the "BRENT" mark and the "BRENT INDEX" mark. Chicago Mercantile Exchange Inc. (the "Applicant") applied for declarations of invalidity of these trade marks on the grounds that they were registered in breach of Sections 7(1)(b), 7(1)(c), and 7(1)(d) of the Singapore Trade Marks Act.
The Intellectual Property Office of Singapore (IPOS) hearing officer, David Llewelyn, ultimately dismissed the Applicant's applications, finding that the Applicant had failed to establish that the trade marks were registered in breach of the Act. The hearing officer concluded that the trade marks were sufficiently distinctive at the time of registration to warrant protection under Singapore's trade mark laws.
What Were the Facts of This Case?
The Proprietor, Intercontinental Exchange Holdings, Inc. (also known as "ICE"), is a large U.S. corporation that operates a number of leading financial exchanges and provides a broad range of trading, clearing, and risk management services. The Applicant, Chicago Mercantile Exchange Inc., is part of the CME Group and operates marketplaces for the exchange, trading, and clearing of various financial products.
The Proprietor registered the "BRENT" mark (Trade Mark No. 40201511598P) and the "BRENT INDEX" mark (Trade Mark No. 40201511601W) in Singapore on 6 July 2015. Both marks were registered in Class 36 for a range of financial services, including calculating, collecting, and reporting financial price indices and related information.
On 27 July 2016, the Applicant applied for declarations of invalidity of the Proprietor's trade mark registrations. The Applicant argued that the marks were registered in breach of Sections 7(1)(b), 7(1)(c), and 7(1)(d) of the Trade Marks Act, which relate to the distinctiveness (or lack thereof) of the trade marks.
What Were the Key Legal Issues?
The key legal issues in this case were whether the "BRENT" and "BRENT INDEX" trade marks were registered in breach of the absolute grounds for refusal under Sections 7(1)(b), 7(1)(c), and 7(1)(d) of the Singapore Trade Marks Act.
Specifically, the Applicant argued that the trade marks were:
- Devoid of any distinctive character (Section 7(1)(b))
- Descriptive of the services for which they were registered (Section 7(1)(c))
- Customary in the current language or in the bona fide and established practices of the trade (Section 7(1)(d))
If the Applicant could establish any of these grounds, the trade mark registrations would be liable for invalidation under Section 23(1) of the Act, unless the Proprietor could show that the marks had subsequently acquired distinctiveness under Section 23(2).
How Did the Court Analyse the Issues?
The hearing officer, David Llewelyn, began by outlining the applicable law and the burden of proof. He noted that under the Singapore Trade Marks Act, there is no overall onus on the Proprietor, and the undisputed burden of proof falls on the Applicant in invalidation proceedings.
The hearing officer then examined each of the three grounds of invalidity raised by the Applicant in turn. For each ground, he considered the evidence and arguments put forward by both parties.
On the issue of distinctiveness under Section 7(1)(b), the hearing officer found that the Applicant had failed to show that the trade marks were devoid of any distinctive character at the time of registration. He noted that the marks were not merely descriptive of the financial services covered by the registrations.
Regarding the descriptiveness ground under Section 7(1)(c), the hearing officer again concluded that the Applicant had not demonstrated that the trade marks were directly descriptive of the registered services. He found that the marks had some degree of inherent distinctiveness.
Finally, on the issue of customary use under Section 7(1)(d), the hearing officer determined that the Applicant had not established that the trade marks were customary in the current language or the bona fide and established practices of the trade at the time of registration.
Overall, the hearing officer was not satisfied that the Applicant had discharged its burden of proof on any of the three grounds of invalidity. He therefore dismissed the applications for declarations of invalidity.
What Was the Outcome?
The hearing officer dismissed the Applicant's applications for declarations of invalidity of the Proprietor's "BRENT" and "BRENT INDEX" trade mark registrations.
As a result, the trade mark registrations remain valid and enforceable. The Proprietor retains the exclusive right to use these marks in relation to the registered financial services in Singapore.
Why Does This Case Matter?
This case is significant for a few key reasons:
First, it provides guidance on the application of the absolute grounds for refusal under Sections 7(1)(b), 7(1)(c), and 7(1)(d) of the Singapore Trade Marks Act. The hearing officer's analysis of the distinctiveness, descriptiveness, and customary use of the trade marks at the time of registration offers valuable insights for trade mark practitioners.
Second, the case highlights the importance of the burden of proof in trade mark invalidation proceedings. The hearing officer's clear statement that the onus lies with the applicant, rather than the registered proprietor, is an important principle for parties to understand when challenging the validity of registered trade marks.
Finally, the case demonstrates the high threshold that must be met to successfully invalidate a registered trade mark on absolute grounds. The hearing officer's findings indicate that trade mark registrations will not be easily removed from the register, even where there are arguments around lack of distinctiveness or descriptiveness.
Overall, this decision reinforces the strength of registered trade mark rights in Singapore and the challenges faced by third parties seeking to remove such rights from the register.
Legislation Referenced
Cases Cited
- [2014] SGIPOS 3
- [2016] SGCA 64
- [2017] SGIPOS 2
- [2018] SGHC 81
- [2018] SGIPOS 20
Source Documents
This article analyses [2018] SGIPOS 20 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.