Case Details
- Citation: [2005] SGHC 139
- Court: High Court of the Republic of Singapore
- Date: 2005-08-05
- Judges: Tay Yong Kwang J
- Plaintiff/Applicant: Nike International Ltd and Another
- Defendant/Respondent: Campomar Sociedad Limitada
- Legal Areas: Res Judicata — Application opposing registration of trade mark dismissed subject to condition that mark specification amended, Trade Marks and Trade Names — Revocation
- Statutes Referenced: Supreme Court of Judicature Act, Trade Marks Act
- Cases Cited: [1988] SLR 921, [2005] SGHC 139
- Judgment Length: 14 pages, 8,133 words
Summary
This case involves a dispute between Nike International Ltd and Campomar Sociedad Limitada over the registration of the "NIKE" trademark in Singapore. Nike International, a US company and the owner of the NIKE brand, opposed Campomar's application to register the NIKE mark in Singapore. The Assistant Registrar of Trade Marks initially dismissed Nike's opposition but required Campomar to amend the specification of the mark. Nike then sought to appeal the decision, but its application was dismissed. When Campomar's amended application was re-advertised, Nike filed a second opposition, which was dismissed by the Principal Assistant Registrar on the grounds of res judicata. Nike appealed this decision to the High Court.
Separately, Nike International also filed an application to revoke Campomar's existing registration of the NIKE mark in class 3 for "perfumery with essential oils" on the grounds of non-use. The High Court had to consider both the appeal against the dismissal of the second opposition as well as the application to revoke Campomar's existing registration.
What Were the Facts of This Case?
The key facts are as follows:
In 1992, the Spanish company Campomar Sociedad Limitada applied to register the "NIKE" trademark in class 3 in Singapore, covering bleaching preparations, cleaning products, polishing preparations, scouring and abrasive preparations, and soaps. In 1997, Campomar's application was advertised before acceptance under the Trade Marks Act 1992.
Nike International Ltd, the US-based owner of the NIKE brand, then commenced opposition proceedings against Campomar's application. In 2001, the Assistant Registrar of Trade Marks (AR Chua) dismissed Nike's opposition but required Campomar to amend the specification of the mark to exclude laundry products and sporting goods/apparel.
Nike International then sought leave to appeal AR Chua's decision out of time. During the hearing on this application, Campomar's counsel stated that Nike would be able to oppose the re-advertised, amended application. Based on this, Nike withdrew its appeal application.
When Campomar's amended application was re-advertised in 2001, Nike filed a second opposition. However, the Principal Assistant Registrar (PAR Anne Loo) dismissed this second opposition on the grounds of res judicata, finding that the issues had already been decided in the first opposition.
Separately, in 2002 Nike International filed an application to revoke Campomar's existing registration of the NIKE mark in class 3 for "perfumery with essential oils" on the grounds of non-use.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the doctrine of res judicata applied to preclude Nike from filing a second opposition against Campomar's amended trademark application, given that the issues had already been decided in the first opposition.
2. Whether Campomar had discharged the burden of showing genuine use of the NIKE mark in relation to the registered goods (perfumery with essential oils), thereby defeating Nike's application to revoke the registration on grounds of non-use.
How Did the Court Analyse the Issues?
On the issue of res judicata, the High Court considered the three essential conditions set out in the Reebok International Ltd v Royal Corp case: (1) a final judgment or decision, (2) identity of subject matter or issue, and (3) identity of parties.
The court found that the first opposition decision by AR Chua was a final order, not an interlocutory one. There was also identity of issues, as both oppositions would have proceeded on the same grounds such as likelihood of confusion. Finally, the court held that the parties were identical, as Nike Singapore was the exclusive licensee of Nike International and the repository of evidence on use of the mark in Singapore.
The court rejected Nike's argument that Campomar was estopped from relying on res judicata due to its representations during the hearing on the appeal application. The court found that Campomar had merely stated that Nike could oppose the re-advertised application, without waiving the res judicata defense.
On the revocation application, the court examined the evidence of Campomar's use of the NIKE mark in relation to perfumery products. The court found that Campomar had discharged the burden of showing genuine use through its importation and export of NIKE-branded perfumes as part of its entrepôt trade, as well as use of the mark on promotional materials.
What Was the Outcome?
The High Court dismissed Nike's appeal against the dismissal of its second opposition to Campomar's trademark application. The court held that the doctrine of res judicata applied, and the Principal Assistant Registrar was correct in declining to revisit the issues already decided in the first opposition.
However, the High Court also dismissed Nike's application to revoke Campomar's existing registration of the NIKE mark for perfumery products. The court found that Campomar had shown genuine use of the mark, defeating the grounds for revocation.
Why Does This Case Matter?
This case provides important guidance on the application of the doctrine of res judicata in trademark opposition proceedings in Singapore. It establishes that even where a trademark application is re-advertised with an amended specification, the Registrar may still be precluded from reconsidering the same issues that were already decided in a prior opposition.
The case also clarifies the requirements for demonstrating genuine use of a trademark to defeat a revocation application. It confirms that use of the mark as part of an entrepôt trade, as well as use on promotional materials, can constitute genuine use under the Trade Marks Act.
This judgment will be a valuable precedent for trademark practitioners in Singapore, particularly when advising clients on the prospects of opposing a re-advertised trademark application or defending against a revocation action.
Legislation Referenced
- Supreme Court of Judicature Act
- Trade Marks Act (Cap 332, 1992 Rev Ed)
- Trade Marks Act (Cap 332, 1999 Rev Ed)
Cases Cited
- [1988] SLR 921 (Reebok International Ltd v Royal Corp)
- [2005] SGHC 139 (Nike International Ltd and Another v Campomar Sociedad Limitada)
Source Documents
This article analyses [2005] SGHC 139 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.