Nike International Ltd and Another v Campomar Sociedad Limitada [2005] SGHC 139

Case Details

• Citation: [2005] SGHC 139
• Court: High Court
• Decision Date: 05 August 2005
• Coram: Tay Yong Kwang J
• Case Number: Originating Motion No 25 of 2004; Originating Motion No 26 of 2004
• Hearing Date(s): April and July 2001 (Initial Opposition); 2005 (High Court)
• Appellants: Nike International Ltd; Nike Singapore Pte Ltd
• Respondent: Campomar Sociedad Limitada
• Counsel for Appellants: Christopher Woo and Clarence Lee (Harry Elias Partnership)
• Counsel for Respondent: Patrick Yap (K L Tan and Associates)
• Practice Areas: Trade Marks; Res Judicata; Revocation for Non-use

Summary

This decision by the High Court of Singapore addresses two distinct but related appeals arising from a long-running dispute between the global sportswear giant Nike and the Spanish company Campomar Sociedad Limitada regarding the "NIKE" trademark in Class 3. The first appeal, Originating Motion No 25 of 2004 ("OM 25"), concerned the application of the doctrine of res judicata in trademark opposition proceedings. The second appeal, Originating Motion No 26 of 2004 ("OM 26"), dealt with the revocation of a registered trademark on the grounds of non-use under the Trade Marks Act.

The core of the dispute in OM 25 was whether Nike International Ltd ("Nike International") and its exclusive licensee, Nike Singapore Pte Ltd ("Nike Singapore"), were precluded from filing a second opposition against Campomar’s trademark application after a first opposition had already been dismissed by the Assistant Registrar. The Appellants argued that because the trademark application had been re-advertised following an amendment to its specification, they were entitled to a fresh opportunity to oppose. However, the High Court affirmed the decision of the Principal Assistant Registrar ("PAR"), holding that the doctrine of res judicata applied. The court found that the issues raised in the second opposition were identical to those already adjudicated in the first, and that the parties were effectively the same. This holding reinforces the finality of administrative decisions within the Intellectual Property Office of Singapore ("IPOS") and prevents parties from re-litigating the same grounds of opposition through procedural technicalities.

In OM 26, the court examined the threshold for "genuine use" required to maintain a trademark registration. Nike sought to revoke Campomar’s registration for "perfumery with essential oils" in Class 3, alleging that the mark had not been used in Singapore for a continuous period of five years. While the Registrar initially found in favor of Nike, the High Court reversed this decision. Tay Yong Kwang J held that Campomar had demonstrated genuine use through its entrepôt trade—specifically, the importation and subsequent export of NIKE-branded perfumes through Singapore. The court clarified that even a limited volume of commercial activity, if bona fide and intended to create or maintain a market for the goods, constitutes genuine use. This aspect of the judgment is particularly significant for Singapore’s status as a global trading hub, as it confirms that use of a mark in the context of import-export activities satisfies statutory requirements even if the goods are not sold to the local retail public.

Ultimately, the High Court dismissed Nike’s appeal regarding the second opposition and allowed Campomar’s appeal against the revocation of its mark. The judgment serves as a comprehensive authority on the intersection of procedural finality and the substantive requirements of trademark maintenance in Singapore.

Timeline of Events

1. 21 August 1992: Campomar Sociedad Limitada applies to register the "NIKE" trademark in Class 3 in Singapore (Application No. 6710/92).
2. 10 October 1997: Campomar’s application is advertised in the Government Gazette before acceptance under the Trade Marks Act 1992.
3. April and July 2001: The first opposition proceedings brought by Nike International are heard by Assistant Registrar ("AR") Chua.
4. 16 July 2001: AR Chua delivers her decision, dismissing Nike’s opposition but imposing a condition that Campomar amend the specification of goods to exclude laundry products and sporting goods/apparel.
5. 24 July 2001: Nike International requests an extension of time to apply for the AR's grounds of decision.
6. 24 August 2001: Nike International files an application for leave to appeal out of time against AR Chua’s decision.
7. 11 October 2001: During the hearing for leave to appeal, Nike International withdraws its application following certain statements made by Campomar’s counsel regarding the right to oppose the re-advertised mark.
8. 30 November 2001: Campomar’s amended application is re-advertised in the Trade Marks Journal.
9. 21 January 2002: Nike International files an application to revoke Campomar’s existing registration (No. T86/01874G) for "perfumery with essential oils" on the grounds of non-use.
10. 25 January 2002: Nike International and Nike Singapore file a second opposition against the re-advertised application.
11. 26 September 2003: PAR Anne Loo dismisses the second opposition on the grounds of res judicata.
12. 29 November 2004: The Registrar allows Nike’s revocation application, ordering the revocation of Campomar’s mark.
13. 05 August 2005: The High Court delivers judgment, dismissing Nike's appeal in OM 25 and allowing Campomar's appeal in OM 26.

What Were the Facts of This Case?

The dispute involved two major entities: Nike International Ltd, a United States company well-known for its "NIKE" brand of footwear and apparel, and Campomar Sociedad Limitada, a Spanish company. Nike Singapore Pte Ltd, the second appellant in OM 25, acted as the exclusive licensee of Nike International in Singapore. The conflict centered on the use and registration of the "NIKE" mark in Class 3, which generally covers cosmetics, soaps, and perfumery.

On 21 August 1992, Campomar applied to register "NIKE" in Class 3 for a wide range of goods, including bleaching preparations, cleaning products, soaps, and perfumery. This application was made under the Trade Marks Act (Cap 332, 1992 Rev Ed). Nike International opposed this application (the "First Opposition") on several grounds, including the likelihood of confusion with its own famous mark and allegations of bad faith. The First Opposition was heard by AR Chua in 2001. AR Chua found that while there was some similarity, the opposition failed on the merits. However, she exercised her discretion under the proviso to s 18 of the 1992 Act to dismiss the opposition subject to the condition that Campomar amend its specification to exclude "bleaching preparations and other substances for laundry use" and "sporting goods and apparel."

Nike International initially sought to appeal this decision but missed the deadline. It applied for leave to appeal out of time. During the hearing for this leave application on 11 October 2001, a discussion occurred between counsel. Campomar’s counsel, Mr. Patrick Yap, stated that because the mark would be re-advertised following the amendment, Nike would have a fresh opportunity to oppose it. Relying on this statement, Nike International withdrew its application for leave to appeal. When the amended application was re-advertised on 30 November 2001, Nike International and Nike Singapore filed a "Second Opposition." Campomar then raised the plea of res judicata, arguing that the issues had already been decided by AR Chua. PAR Anne Loo agreed and dismissed the Second Opposition, leading to the appeal in OM 25.

Parallel to the opposition proceedings, Nike International targeted an existing registration held by Campomar. Campomar had registered "NIKE" in Class 3 for "perfumery with essential oils" as far back as 1986 (Registration No. T86/01874G). On 21 January 2002, Nike filed for revocation of this mark under s 22(1) of the Trade Marks Act (Cap 332, 1999 Rev Ed), alleging that there had been no genuine use of the mark in Singapore for a continuous period of five years. The relevant five-year period was identified as 21 January 1997 to 20 January 2002.

In the revocation proceedings, Campomar provided evidence of use, which included two specific invoices. The first, dated 5 November 1996 (slightly before the relevant period), showed the sale of NIKE perfumes to a Singapore company, Sincere Custom Services Pte Ltd. The second, dated 21 March 2001 (within the relevant period), showed a sale of NIKE perfumes to another Singapore entity, J J Mark (S) Pte Ltd. Campomar also produced promotional materials and evidence that the goods were imported into Singapore and subsequently exported to other markets like Dubai and Malaysia. The Registrar, however, found this evidence insufficient, noting that the 2001 invoice was for a relatively small amount (US$11,000) and that there was no evidence of the mark reaching the Singapore retail public. The Registrar ordered the revocation of the mark, which Campomar appealed in OM 26.

The High Court was thus tasked with determining whether the Second Opposition was barred by res judicata and whether Campomar’s import-export activities constituted "genuine use" of the trademark in Singapore.

What Were the Key Legal Issues?

The High Court identified several critical legal issues that required resolution across the two motions:

• The Applicability of Res Judicata: Whether the doctrine of res judicata applies to decisions made by the Registrar of Trade Marks in opposition proceedings. This involved determining if AR Chua’s decision in the First Opposition was a "final" judgment and whether the issues and parties in the Second Opposition were identical to the first.
• The Effect of Counsel's Representations: Whether Campomar was estopped from raising the plea of res judicata because its counsel had previously stated that Nike would be able to oppose the re-advertised mark. The court had to decide if this statement constituted a waiver of the right to plead res judicata or an abuse of process.
• The Definition of "Genuine Use": What constitutes "genuine use" under s 22(1) of the Trade Marks Act. Specifically, whether entrepôt trade (importing for the purpose of re-export) and the use of the mark on promotional materials are sufficient to defeat a revocation application for non-use.
• The Burden of Proof in Revocation: The court had to address the application of s 105 of the Trade Marks Act, which places the burden of proving use on the proprietor of the mark once a prima facie case of non-use is alleged.

How Did the Court Analyse the Issues?

I. Res Judicata and the Second Opposition (OM 25)

The court began its analysis of res judicata by citing the three essential conditions established in Reebok International Ltd v Royal Corp [1988] SLR 921: (1) there must be a final judgment or decision; (2) there must be an identity of subject matter or issue; and (3) there must be identity of parties. (at [10])

1. Finality of the Decision
Nike argued that AR Chua’s decision was not "final" because it was subject to a condition (the amendment of the specification) and because it was made in "pre-acceptance" proceedings. The court rejected this, noting that the AR had fully adjudicated the merits of the opposition. The decision disposed of the First Opposition entirely. Tay Yong Kwang J observed that a decision is final for res judicata purposes even if an appeal is possible, provided the right to appeal is not exercised or the appeal is exhausted. He noted at [40]:

"Where an appeal lies against a decision but the right is not invoked by the party entitled to that right, that decision is still final for the purposes of res judicata."

2. Identity of Subject Matter
The Appellants contended that the Second Opposition involved a "different" mark because the specification had been narrowed. The court found this argument unpersuasive. The grounds for opposition—likelihood of confusion and bad faith—remained exactly the same. The narrowing of the specification did not create a new cause of action; rather, it was a direct result of the first adjudication. The court agreed with PAR Anne Loo that the issues were "in essence the same even though the subsequent arguments might come in different packaging." (at [44])

3. Identity of Parties
Although Nike Singapore was not a party to the First Opposition, the court held that it was "privy" to Nike International. As the exclusive licensee, its interests were identical to the trademark owner’s. Furthermore, Nike Singapore had provided the evidence used by Nike International in the first round. Thus, the requirement for identity of parties was satisfied.

II. The Estoppel and Abuse of Process Argument

Nike argued that Campomar should be barred from raising res judicata because of Mr. Yap’s statement that Nike "would be able to oppose" the re-advertised mark. The court examined the transcript of the 11 October 2001 hearing. It found that Mr. Yap was merely stating a procedural fact—that the law allows for opposition upon re-advertisement. He did not promise that Campomar would waive any substantive defenses, such as res judicata. The court held that there was no "clear and unequivocal" representation that could ground a proprietary estoppel or make the plea of res judicata an abuse of process. (at [46-47])

III. Genuine Use and Revocation (OM 26)

The analysis then shifted to the revocation of Campomar's existing mark. The court emphasized that "genuine use" does not require a massive volume of sales, nor does it strictly require sales to the general public in Singapore.

1. Entrepôt Trade as Genuine Use
The court found that Campomar’s activities involved importing NIKE perfumes into Singapore and then exporting them. Under s 22(2) of the Trade Marks Act, the application of a mark to goods in Singapore which are then exported constitutes use of the mark in Singapore. The court noted that Singapore’s economy relies heavily on entrepôt trade, and it would be "antithetical" to this status to hold that such trade does not count as genuine use. (at [55])

2. Quantum and Bona Fides
The court addressed the Registrar’s finding that the use was "minimal." Citing Laboratoire De La Mer Trade Marks [2002] FSR 51, the court noted that even a small amount of use can be "genuine" if it is not merely "colorable" (i.e., done solely to maintain the registration). The court found that the 2001 invoice for US$11,000 represented a real commercial transaction. The court also noted at [57]:

"In 'NODOZ' Trade Mark [1962] RPC 1, it was acknowledged that a single use of the trademark could suffice in an application for revocation for non-use if it was a bona fide use."

3. Promotional Materials
The court also considered evidence of promotional materials. While the Registrar was skeptical of their impact, the High Court held that such materials could constitute use of a mark, following the principle in REVUE Trade Mark [1979] RPC 27. The court found that the combination of the 2001 invoice, the 1996 invoice (showing a pattern of trade), and the promotional evidence was sufficient to discharge the burden of proof under s 105 of the Act.

What Was the Outcome?

The High Court reached the following conclusions:

In OM 25/2004: The appeal by Nike International and Nike Singapore was dismissed. The court affirmed that the Second Opposition was barred by the doctrine of res judicata. The decision of AR Chua in the First Opposition was final and binding on the parties regarding the grounds of opposition for the goods remaining in the specification.

In OM 26/2004: The appeal by Campomar was allowed. The court set aside the Registrar’s order revoking Campomar’s trademark registration No. T86/01874G. The court found that Campomar had successfully demonstrated genuine use of the mark "NIKE" in relation to "perfumery with essential oils" during the relevant five-year period.

Costs: The court ordered that the costs of the appeals be paid by Nike International to Campomar, to be taxed if not agreed. The operative conclusion of the judgment was stated at [60]:

"Appeal in OM 25 dismissed; appeal in OM 26 allowed. I further ordered that the costs of the appeal before me be taxed or agreed and be paid by Nike International to Campomar."

Why Does This Case Matter?

This case is a landmark in Singapore trademark law for two primary reasons: its clarification of procedural finality and its pragmatic definition of "genuine use."

First, the application of res judicata to trademark opposition proceedings provides much-needed certainty for applicants. Without this ruling, an opponent could theoretically keep an application in "opposition limbo" by repeatedly filing new oppositions every time a specification is slightly amended or a mark is re-advertised. The court’s robust application of the Reebok test ensures that once the Registrar has ruled on the merits of an opposition, those issues are settled. This prevents the "fragmentation" of litigation and protects the integrity of the IPOS registration process. Practitioners must now ensure that all possible grounds and evidence are presented in the first instance, as there will be no "second bite at the cherry."

Second, the judgment is a significant victory for the "entrepôt trade" model. By confirming that importing goods for re-export constitutes "genuine use," the court aligned trademark law with Singapore’s economic reality as a global transshipment hub. If the court had required evidence of retail sales to the Singapore public, many international companies using Singapore as a regional distribution base would have found their marks vulnerable to revocation. The court’s reliance on Laboratoire De La Mer and NODOZ also confirms a relatively low threshold for the volume of use, provided the use is bona fide and commercial in nature. This provides a shield for trademark owners who may have sporadic but genuine commercial activity in the jurisdiction.

Furthermore, the case highlights the dangers of procedural misunderstandings during hearings. The Appellants’ reliance on a perceived "concession" by opposing counsel serves as a cautionary tale. It underscores that procedural rights (like the right to file an opposition) do not override substantive legal bars (like res judicata) unless there is an explicit and binding waiver. For practitioners, this emphasizes the need for precision in settlement negotiations and procedural agreements.

Finally, the case clarifies the "identity of parties" requirement in the context of intellectual property. By holding that an exclusive licensee is a privy of the trademark owner for res judicata purposes, the court prevented parties from circumventing the doctrine by simply switching the named applicant between a parent company and its local subsidiary. This realistic approach to corporate and licensing structures ensures that the doctrine of res judicata remains effective in a modern commercial context.

Practice Pointers

• Exhaust All Grounds Early: In opposition proceedings, ensure that every viable ground (e.g., s 7, s 8 of the TMA) is fully argued in the first instance. Do not rely on the possibility of a second opposition if the mark is amended and re-advertised.
• Be Wary of Procedural "Assurances": If an opposing counsel suggests that a certain procedural path remains open (such as the right to oppose a re-advertised mark), do not assume this includes a waiver of substantive defenses like res judicata. Any such waiver should be recorded in writing and made explicit.
• Document Entrepôt Trade: To defend against non-use revocation, maintain detailed records of all import and export activities. Invoices, bills of lading, and transshipment documents are critical evidence of "genuine use" even if the goods never enter the local retail market.
• Licensee Involvement: Be aware that an exclusive licensee will likely be considered a "privy" of the trademark owner. Decisions made against the owner will bind the licensee, and vice versa, for the purposes of res judicata.
• Quantum of Use: While the threshold for "genuine use" is not high, the use must be "bona fide." Ensure that even small-scale transactions are documented as part of a legitimate commercial strategy rather than a mere "token" effort to save a registration.
• Promotional Evidence: Keep copies of all promotional materials, catalogs, and advertisements used in Singapore. While secondary to sales invoices, they support the argument that the mark is being used to "create or maintain a market."

Subsequent Treatment

The decision in [2005] SGHC 139 has become a standard reference point in Singapore for the application of res judicata in administrative and quasi-judicial settings. It is frequently cited in IPOS proceedings to prevent the re-litigation of opposition grounds. The court's analysis of "genuine use" in the context of entrepôt trade remains the leading authority for companies using Singapore as a distribution hub, ensuring that their marks are protected despite a lack of local retail presence. The case is also a key authority on the "identity of parties" test, specifically regarding the relationship between trademark owners and their licensees.

Legislation Referenced

• Trade Marks Act (Cap 332, 1992 Rev Ed), s 18, s 19(5), s 21
• Trade Marks Act (Cap 332, 1999 Rev Ed), s 22(1), s 22(1)(a), s 22(1)(b), s 22(1)(d), s 22(2), s 22(3), s 22(8)(a), s 100, s 105
• Supreme Court of Judicature Act (Cap 322, 1999 Rev Ed), s 34(1)(c)

Cases Cited

• Applied: Reebok International Ltd v Royal Corp [1988] SLR 921
• Referred to: Tiffany & Co v Fabriques de Tabac Reunies SA [1999] 3 SLR 147
• Referred to: Swanfu Trading Pte Ltd v Beyer Electrical Enterprises Pte Ltd [1994] 1 SLR 625
• Referred to: REVUE Trade Mark [1979] RPC 27
• Referred to: Laboratoire De La Mer Trade Marks [2002] FSR 51
• Referred to: NODOZ Trade Mark [1962] RPC 1

Source Documents

• Original Judgment (PDF)
• eLitigation Case Summary