Case Details
- Citation: [2006] SGCA 2
- Case Number: CA 45/2005
- Decision Date: 16 January 2006
- Court: Court of Appeal of the Republic of Singapore
- Coram: Chao Hick Tin JA; Andrew Phang Boon Leong J; Yong Pung How CJ
- Plaintiff/Applicant: Nike International Ltd
- Defendant/Respondent: Campomar SL
- Parties: Nike International Ltd — Campomar SL
- Legal Area(s): Trade Marks and Trade Names – Revocation – Non-use
- Statutes Referenced: Trade Marks Act (Cap 332, 1999 Rev Ed) (“TMA”), in particular s 22(1)(a) and s 105
- Key Issue (as framed): Whether the proprietor adduced “overwhelmingly convincing” evidence of a single transaction amounting to genuine use of the mark within the five-year period immediately preceding the application for revocation
- Procedural History: High Court reversed the Principal Assistant Registrar’s decision; Court of Appeal restored revocation
- High Court Reported Decision: [2005] 4 SLR 76
- Judgment Length: 5 pages, 2,969 words (as provided)
- Counsel for Appellant: Harry Elias SC and Zee Yeng Yun (Harry Elias Partnership)
- Counsel for Respondent: Patrick Yap and Prithipal Singh (K L Tan and Associates)
- Cases Cited (as provided): [2006] SGCA 2 (metadata); Swanfu Trading Pte Ltd v Beyer Electrical Enterprises Pte Ltd [1994] 1 SLR 625; “NODOZ” Trade Mark [1962] RPC 1
Summary
Nike International Ltd v Campomar SL concerned an application to revoke the Singapore registration of the trade mark “NIKE” held by Campomar SL in class 3 for “perfumery with essential oils”. The revocation was brought on the ground of non-use: Nike International alleged that Campomar had not put the mark to “genuine use in the course of trade in Singapore” during the five-year period immediately preceding the application to revoke. The Principal Assistant Registrar (“PAR”) accepted Nike’s case and revoked the registration. The High Court reversed that decision, but the Court of Appeal restored the PAR’s order and upheld revocation.
The Court of Appeal’s reasoning focused on the evidential threshold where the proprietor relies on a single transaction to establish use. While the law does not require substantial use, the court emphasised that where only one act of use is relied upon, the proprietor must adduce “overwhelmingly convincing proof” of the act. On the facts, the evidence adduced by Campomar—principally invoices, shipping documents, and explanations for why a distributor did not provide direct evidence—did not meet that standard. The Court of Appeal therefore held that Campomar failed to discharge the burden under s 22(1)(a) of the Trade Marks Act.
What Were the Facts of This Case?
Nike International Ltd (“Nike International”) is a US company and a wholly-owned subsidiary of Nike Inc. Since 1972, Nike Inc and its subsidiaries have marketed and sold shoes and apparel worldwide under the “NIKE” trade mark and brand name. The case, however, was not about Nike’s global brand use; it was about whether Campomar, a Spanish company, had used the “NIKE” mark in Singapore in relation to class 3 goods (perfumery with essential oils) during the relevant statutory period.
Campomar applied to register the mark “NIKE” in class 3 for “perfumery with essential oils”. The mark was registered on 30 December 1989, with effect from 2 April 1986. On 21 January 2002, Nike International filed an application to revoke the registration under s 22(1) of the Trade Marks Act. In its grounds, Nike International stated that it wanted the registration revoked so that it could register its own Singapore trade mark (Singapore Trade Mark No T01/17954H NIKE) covering a broader range of goods, including perfumery, essential oils, cosmetics, toiletries, and related items.
Campomar disputed Nike International’s allegation of non-use. To substantiate use, Campomar’s principal manager, Mr Antonio Ruiz Corrales (“Corrales”), filed three statutory declarations. First, Corrales exhibited sales invoices issued between 1996 and 2001, intended to show use of the mark. Second, he explained that abbreviations appearing in an invoice (notably “NM”, “NW” and “NC”) stood for “NIKE MAN”, “NIKE WOMAN” and “NIKE” respectively. Third, Corrales exhibited a bill of lading showing that products bearing the NIKE mark had been shipped by De Ruy Perfumes SA to a Singapore company, Bhojwani’s Pte Ltd (“Bhojwani’s”), and he also exhibited a letter dated 11 December 2003 from a freight forwarder, Geodis Teisa, relating to the shipment.
In response, Nike International filed four statutory declarations to support its claim of non-use. A private investigator, Mr Wilfred Anthony (“Anthony”), reported that in November 2001 he visited ten major shopping centres in Singapore and found no NIKE perfumes for sale. He also made discreet inquiries at Bhojwani’s and was told by a female employee (named “Kalai”) that Bhojwani’s did not sell NIKE perfumes in Singapore but only in Indonesia, and that it did not deal in NIKE perfumes. Nike International also filed a declaration from the finance director of Nike Singapore, Mr Hughes, referring to brand reputation and an AC Nielsen survey (August 2001) showing that at least 55% of those polled associated NIKE perfume with Nike International. Additionally, Nike International adduced evidence that the last known distributor, Galaxy Enterprises Pte Ltd, had ceased selling NIKE perfumery products by 5 November 1996. Finally, Nike International addressed the shipping term “EXW” in relation to an invoice dated 27 July 2001, explaining its commercial meaning.
What Were the Key Legal Issues?
The central legal issue was whether Campomar had put the “NIKE” mark to “genuine use in the course of trade in Singapore” during the five-year period immediately preceding the application to revoke. Under s 22(1)(a) of the Trade Marks Act, revocation could be granted if, within five years following completion of registration, the mark had not been put to genuine use in Singapore by the proprietor (or with its consent) in relation to the relevant goods, and there were no proper reasons for non-use. The relevant five-year period in this case was 21 January 1997 to 21 January 2002.
A second issue concerned the evidential standard required when the proprietor relies on a single transaction or limited acts to prove use. The Court of Appeal had to determine whether the evidence adduced by Campomar—particularly shipping and invoice documents, together with explanations for gaps in direct evidence from the Singapore distributor—was sufficient to show genuine use. This required the court to apply prior authority on the meaning of “genuine use” and the level of proof needed to establish an isolated act of use.
How Did the Court Analyse the Issues?
The Court of Appeal began by clarifying the statutory framework. Section 22(1)(a) requires proof that the mark has not been put to genuine use in Singapore during the relevant five-year period, and that there are no proper reasons for non-use. The court also referred to the earlier version of the provision, which used the expression “bona fide use”. In Swanfu Trading Pte Ltd v Beyer Electrical Enterprises Pte Ltd, the court had interpreted “bona fide use” as genuine use as contrasted with fictitious, pretended, or colourable use. The Court of Appeal in Nike International treated “bona fide” and “genuine” as effectively interchangeable for construction purposes, meaning the same substantive standard applied.
Importantly, the court reiterated that use need not be substantial. The law is satisfied if the mark is used in a commercial way, and the more substantially a registered mark is used commercially, the easier it is to infer bona fide/genuine use. However, the court then addressed the converse situation: where the proprietor relies on only one act of use. In such cases, the court held that the proprietor must adduce “overwhelmingly convincing proof” of the act. The court relied on the reasoning of Wilberforce J in “NODOZ” Trade Mark [1962] RPC 1, where the court had indicated that an isolated act must be established by conclusive or overwhelmingly convincing evidence, particularly where the evidence is largely internal records and there are many possibilities of non-delivery.
Applying these principles, the Court of Appeal assessed the evidence Campomar relied upon. The High Court had accepted that the invoice evidence related to perfume products and that the mark “NIKE” was used on the products, even if sometimes accompanied by additional descriptions to identify gender categories. The High Court also accepted that use by De Ruy Perfumes SA could be treated as use by Campomar because the companies were associated. Further, the High Court accepted Campomar’s explanation that Bhojwani’s, as a former distributor, did not wish to be involved in the litigation and therefore did not provide affidavit evidence.
However, the Court of Appeal was not persuaded. The Court of Appeal emphasised that the question was not merely whether documents showed that goods were shipped or that the mark appeared on product labels, but whether there was genuine use in Singapore during the relevant period. The court scrutinised the evidential chain connecting shipping to actual use in Singapore. In particular, the Court of Appeal noted the High Court’s reasoning that Bhojwani’s must have sold and exported the NIKE products to Indonesia or exported them for sale, and that the investigator’s conversation with Kalai in April 2002 could be consistent with a later cessation of dealing. Yet the Court of Appeal found that this reasoning did not resolve the evidential uncertainty: it remained unclear what Kalai’s status was, how long she had been employed, and whether her statements accurately reflected the relevant period.
In addition, the Court of Appeal considered the nature and quality of the proof. Campomar’s case depended heavily on invoices and shipping documents, coupled with explanations for why direct evidence from the Singapore distributor was not forthcoming. The court treated this as insufficient to meet the “overwhelmingly convincing proof” standard required for a single or isolated transaction. The court’s approach reflects a practical evidential concern: documents may show that steps were taken, but without stronger proof of receipt, delivery, or actual commercial dealing in Singapore, the evidence risks being characterised as colourable rather than genuine use.
While the judgment extract provided is truncated after the discussion of “NODOZ”, the Court of Appeal’s stated legal principles and its application to the evidential gaps were clear. The court concluded that Campomar failed to discharge the burden of proving genuine use within the statutory period. As a result, the revocation should stand.
What Was the Outcome?
The Court of Appeal allowed Nike International’s appeal and restored the PAR’s decision to revoke Campomar’s trade mark registration. The practical effect was that Campomar lost the Singapore registration of “NIKE” in class 3 for perfumery with essential oils, removing the legal barrier to Nike International’s intended registration strategy.
More broadly, the decision confirmed that where a proprietor’s evidence of use is limited and relies on a single transaction, the evidential threshold is high. The court’s restoration of revocation signals that trade mark proprietors must be prepared to adduce robust, Singapore-focused evidence of genuine commercial use during the relevant period.
Why Does This Case Matter?
Nike International Ltd v Campomar SL is significant for practitioners because it clarifies the evidential standard in non-use revocation proceedings. Although the statutory test does not require substantial use, the Court of Appeal made clear that isolated use must be proven with “overwhelmingly convincing” evidence. This is particularly important in cases where the proprietor’s proof consists primarily of invoices, shipping documents, and internal explanations, without direct evidence from Singapore distributors, retailers, or other commercial actors who can confirm actual dealing in Singapore.
The case also matters for how courts evaluate gaps in evidence. The Court of Appeal did not accept that the absence of affidavit evidence from Bhojwani’s could be neutralised simply by conjecture about what must have happened. Instead, the court treated the uncertainty as fatal to the proprietor’s burden. For trade mark owners, this underscores the need for litigation-ready documentation and, where possible, witness evidence that can establish the actual commercial use of the mark in Singapore during the statutory period.
Finally, the decision is useful for law students and lawyers studying the relationship between “bona fide” and “genuine” use. By treating the terms as having no real practical difference, the Court of Appeal ensured continuity in the jurisprudence interpreting earlier and current versions of the Trade Marks Act. The case therefore serves as a key authority on both the substantive meaning of genuine use and the procedural/evidential demands of proving it.
Legislation Referenced
- Trade Marks Act (Cap 332, 1999 Rev Ed), s 22(1)(a) [CDN] [SSO]
- Trade Marks Act (Cap 332, 1999 Rev Ed), s 105 (burden of proof in revocation proceedings) [CDN] [SSO]
- Trade Marks Act (Cap 332, 1992 Rev Ed), s 40(1)(b) (earlier wording: “bona fide use”) [CDN] [SSO]
Cases Cited
- Swanfu Trading Pte Ltd v Beyer Electrical Enterprises Pte Ltd [1994] 1 SLR 625
- “NODOZ” Trade Mark [1962] RPC 1
Source Documents
This article analyses [2006] SGCA 2 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.