Richemont International SA v Da Vinci Collections Pte Ltd [2006] SGHC 150

Case Details

• Citation: [2006] SGHC 150
• Court: High Court of the Republic of Singapore
• Decision Date: 22 August 2006
• Coram: Andrew Ang J
• Case Number: Suit No 800 of 2005; SUM 374/2006
• Claimant / Plaintiff: Richemont International SA
• Respondent / Defendant: Da Vinci Collections Pte Ltd
• Counsel for Plaintiff: Dedar Singh Gill, Penny Leng Li Yuen and Paul Teo (Drew & Napier LLC)
• Counsel for Respondent: Tan Tee Jim SC and Lam Chung Nian (Lee & Lee)
• Practice Areas: Trade Marks and Trade Names; Infringement; Revocation for Non-Use

Summary

In Richemont International SA v Da Vinci Collections Pte Ltd, the High Court of Singapore addressed critical questions regarding the scope of protection afforded to word marks registered in block capitals and the doctrinal requirements for "genuine use" under the Trade Marks Act. The dispute arose when the plaintiff, a member of the luxury Richemont Group, sought summary judgment to restrain the defendant from using the sign "Da Vinci" in relation to watches and watch straps. The plaintiff asserted that such use infringed its registered mark "DA VINCI," which had been part of the International Watch Company (IWC) portfolio since 1989. The defendant resisted the application by challenging the validity of the registration, primarily arguing that the plaintiff had failed to put the mark to genuine use within the statutory five-year period following registration.

The core of the defendant's contention was that the plaintiff’s use of "DA VINCI" was always subordinate to the house mark "IWC" and appeared on watch dials in a stylized font rather than the block capitals in which it was registered. Consequently, the defendant argued that the mark had not been used in the form in which it was registered, or that its distinctive character had been altered. Furthermore, the defendant counterclaimed for revocation on grounds of non-use, lack of distinctiveness, and bad faith. The High Court was thus required to determine whether the use of a model name alongside a house mark constitutes "genuine use" and whether a block capital registration provides a "monopoly" over the word in any legible font.

Andrew Ang J ruled in favor of the plaintiff, granting an injunction and dismissing the defendant's primary arguments. The court held that the registration of a word in block capitals covers the use of that word in any clearly legible form of lettering. Crucially, the court affirmed that a product may carry more than one trade mark; the fact that "DA VINCI" appeared alongside "IWC" did not strip the former of its status as a trade mark, provided it served as an indicator of origin. The judgment clarifies that secondary marks, such as model names, can satisfy the "genuine use" requirement if they are perceived by the public as identifying the goods of a particular undertaking.

This decision is a significant precedent for the luxury goods industry, where "house marks" and "model marks" frequently co-exist on a single product. It reinforces the principle that trade mark proprietors do not lose protection simply because they employ a multi-layered branding strategy. By dismissing the defendant's narrow interpretation of "use in the form registered," the court provided a robust framework for protecting word marks against identical or near-identical signs, even when the proprietor's actual usage involves stylization or composite branding.

Timeline of Events

1. 1868: The International Watch Company (“IWC”) is established in Switzerland, beginning its history in the luxury watch industry.
2. 1 August 1989: The trade mark "DA VINCI" (the "Registered Mark") is registered in Singapore in the name of IWC.
3. 1 August 1994: Expiry of the initial five-year period following the completion of registration, during which the registered proprietor is required to put the mark to genuine use to avoid revocation under s 22(1) of the Trade Marks Act.
4. 2000: The Richemont Group acquires IWC. As part of the subsequent restructuring, all IWC trade marks and the associated business goodwill are transferred to the plaintiff, Richemont International SA.
5. 1 April 2002: The plaintiff is officially registered as the subsequent proprietor of the Registered Mark "DA VINCI" in Singapore.
6. 2005: The plaintiff commences Suit No 800 of 2005 against Da Vinci Collections Pte Ltd, alleging trade mark infringement.
7. 1 January 2006: Marc Frisanco files the first affidavit on behalf of the plaintiff, providing evidence of the history and use of the "DA VINCI" mark.
8. 2006: The plaintiff files SUM 374/2006, seeking summary judgment for the trade mark infringement claim.
9. 22 August 2006: Andrew Ang J delivers the judgment of the High Court, granting summary judgment and the sought injunction.

What Were the Facts of This Case?

The plaintiff, Richemont International SA, is a subsidiary of the Richemont Group, a global conglomerate renowned for its portfolio of luxury brands, including Cartier, Piaget, and Jaeger-LeCoultre. In 2000, the Richemont Group acquired the International Watch Company (“IWC”), a Swiss horological entity founded in 1868. Following this acquisition, a restructuring process resulted in the transfer of IWC’s intellectual property assets, including its trade marks and the goodwill of its business, to the plaintiff. Among these assets was the trade mark "DA VINCI," which had been registered in Singapore since 1 August 1989 (Registration No. T89/04382Z) in Class 14 for "watches and parts thereof." The plaintiff became the registered proprietor of this mark with effect from 1 April 2002.

The defendant, Da Vinci Collections Pte Ltd, was a Singapore-incorporated company involved in the trade of watches. The plaintiff alleged that the defendant had infringed the Registered Mark by using the sign "Da Vinci" in three distinct forms: a word mark "Da Vinci," a device mark, and a composite mark consisting of both words and a device. For the purposes of the summary judgment application (SUM 374/2006), the plaintiff limited its claim to the defendant's use of the word mark "Da Vinci" in relation to watches and watch straps. The plaintiff contended that this use constituted an infringement under s 27(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed), as the defendant was using an identical sign for identical goods without consent.

The defendant’s primary resistance to the summary judgment application rested on a challenge to the validity of the Registered Mark. The defendant argued that the mark should be revoked or declared invalid on several grounds. First, it alleged "non-use" under s 22(1) of the Act, asserting that within the five-year period following the completion of registration (1 August 1989 to 1 August 1994), the registered proprietor had not put the mark to genuine use in Singapore. The defendant’s argument was nuanced: it did not deny that watches bearing the words "DA VINCI" were sold, but it argued that the mark was always used in conjunction with the "IWC" house mark. According to the defendant, "DA VINCI" was used merely as a model name to describe a specific range of IWC watches, rather than as a trade mark indicating the origin of the goods. Furthermore, the defendant pointed out that the mark as used on the watches was in a stylized font, whereas the registration was in block capitals.

The defendant also raised a counterclaim for revocation and/or a declaration of invalidity based on lack of distinctiveness and bad faith. It argued that the term "Da Vinci" was a reference to the famous historical figure Leonardo da Vinci and was therefore devoid of distinctive character. Additionally, the defendant suggested that the registration was made in bad faith. However, as noted in the judgment, these latter contentions regarding distinctiveness and bad faith were not vigorously pursued in the defendant's written submissions, which focused heavily on the issue of genuine use and the form of the mark's representation.

The evidentiary record included the first affidavit of Marc Frisanco, filed on 1 January 2006, which deposed to the history of the Richemont Group’s acquisition of IWC and the subsequent transfer of marks. The plaintiff relied on this evidence to establish its chain of title and the continuous use of the "DA VINCI" mark in the luxury watch market. The defendant, in its written submissions at paragraph 18, attempted to distinguish the present case from established authorities by emphasizing the "subservient" nature of the "DA VINCI" mark relative to the "IWC" mark on the physical products.

What Were the Key Legal Issues?

The High Court identified several interlocking legal issues that were central to the determination of the summary judgment application:

• Infringement under s 27(1) of the Trade Marks Act: Whether the defendant’s use of the sign "Da Vinci" in relation to watches and watch straps constituted the use of an identical sign for identical goods, thereby infringing the plaintiff's Registered Mark.
• Genuine Use under s 22(1): Whether the plaintiff (or its predecessor IWC) had put the Registered Mark to "genuine use" in Singapore within the relevant five-year statutory periods. This involved determining whether the use of "DA VINCI" as a model name alongside the house mark "IWC" qualified as trade mark use.
• Form of Use and Distinctive Character: Whether the use of the mark in a stylized font on the actual products constituted use of the mark "in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered" pursuant to s 22(2) of the Act.
• Scope of Block Capital Registration: Whether a trade mark registered in block capitals provides protection against the use of the same word in any legible font, or whether the proprietor is restricted to the specific block capital format.
• Validity Challenges: Whether the Registered Mark was liable to be declared invalid under s 23 of the Act due to a lack of distinctive character at the time of registration or because the application was made in bad faith.

How Did the Court Analyse the Issues?

The court’s analysis began with the statutory framework for infringement. Under s 27(1) of the Trade Marks Act, infringement occurs if a person uses an identical sign for identical goods without the proprietor's consent. Andrew Ang J noted that the defendant did not dispute using the words "Da Vinci" for watches. The court found that the sign used by the defendant was identical to the Registered Mark. The defendant's attempt to argue that the plaintiff's own use was not "identical" to its registration was dismissed as irrelevant to the threshold question of whether the defendant's sign was identical to the registered mark.

The Doctrine of Genuine Use and Multi-Branding

The most substantial part of the judgment concerned the defendant's challenge under s 22(1) regarding "genuine use." The defendant argued that "DA VINCI" was not used as a trade mark because it always appeared with "IWC." The court rejected this, stating at [11]:

"it is well established in trade mark law that a product may carry more than one trade mark."

The court relied on In the Matter of Morny Ld’s Trade Marks (1951) 68 RPC 131 to support the principle that a secondary mark can still function as an indicator of origin. The court reasoned that in the luxury watch industry, consumers are accustomed to "house marks" (like IWC) being paired with "model marks" (like DA VINCI). The model mark serves to identify a specific range of goods from that specific manufacturer. The court held that such use is "genuine" because it fulfills the essential function of a trade mark: guaranteeing the identity of the origin of the marked product to the consumer.

The court distinguished the case of Nation Fittings (M) Sdn Bhd v Oystertec Plc [2006] 1 SLR 712. In Nation Fittings, the mark in question had been so thoroughly subsumed within other graphical elements that it lost its independent identity. In contrast, Andrew Ang J found that "DA VINCI" stood out clearly on the watch dials and was not "intertwined" with the IWC mark in a way that obscured its function. The court also referenced Safari Trade Mark [2002] RPC 23, noting that even if a word is used to describe a model, it can still be a trade mark if it originates from a particular undertaking.

Stylization and the "Block Capital" Rule

The defendant further argued that the plaintiff’s use of "DA VINCI" in a stylized font (with only the 'D' and 'V' capitalized) differed significantly from the block capital registration. The court addressed this by applying s 22(2) of the Act, which allows for use in a form that does not alter the distinctive character of the mark. The court held at [21]:

"the registration of a word in block capitals must cover use of that word in any clearly legible form of lettering and not be confined to its representation in block capitals."

The court found that the stylization used by the plaintiff was a common commercial practice and did not change the central identity of the mark, which was the word "DA VINCI" itself. The court distinguished Elle Trade Marks [1997] FSR 529, where the UK High Court had found that dropping a specific device and changing the case of the word "elle" altered the mark's character. Andrew Ang J preferred the reasoning that for a word mark, the "distinctive character" resides in the word itself, not the specific typeface, unless the typeface is the primary feature of the registration.

Distinctiveness and Bad Faith

Regarding the challenge to distinctiveness under s 7(1)(b) and (c), the court applied the test from British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281. The court asked whether the mark was "devoid of any distinctive character." It concluded that "DA VINCI," while a historical name, was not descriptive of watches. Unlike terms like "five door" or "V8" for cars (as discussed in Safari Trade Mark), "DA VINCI" did not describe a characteristic of the product. The court also noted that the defendant failed to provide any evidence of "bad faith" in the registration process, leading to the dismissal of that ground of the counterclaim.

Finally, the court addressed the defendant's argument that the plaintiff's use was "merely descriptive." Citing Bud and Budweiser Budbräu Trade Marks [2003] RPC 25, the court emphasized that the primary use of a trade mark is to act as a "link" between the goods and the manufacturer. The evidence showed that the "DA VINCI" line was a prestigious and well-recognized collection within the IWC brand, reinforcing its status as a source identifier rather than a mere description.

What Was the Outcome?

The High Court granted the plaintiff's application for summary judgment in Suit 800/2005. The court's primary order was an injunction to prevent further infringement by the defendant. The operative paragraph of the judgment states:

"I therefore granted an injunction in terms applied for but only with respect to the use by the defendant, its officers, servants, agents or howsoever of the word mark “DA VINCI” in relation to watches." (at [46])

The court's orders included the following specific reliefs:

• An injunction restraining the defendant from using the word mark "DA VINCI" in relation to watches.
• A dismissal of the defendant's counterclaim for revocation and/or declaration of invalidity of the Registered Mark.
• An order for an inquiry as to damages or, at the option of the plaintiff, an account of profits resulting from the infringement.
• The delivery up or destruction upon oath of all infringing articles, stationery, and advertising materials in the defendant's possession.
• Interest on any sums found due as damages or profits, with the specific rate and period left to the determination of the Registrar.
• Costs of the proceedings to be paid by the defendant to the plaintiff, to be taxed if not agreed.

The court noted that while the plaintiff had originally complained about three forms of the defendant's mark, the summary judgment was specifically targeted at the word mark "DA VINCI." The court found that the defendant had no triable defense regarding the infringement of the word mark, as the validity of the plaintiff's registration was upheld and the identity of the signs was established.

Why Does This Case Matter?

The Richemont decision is a cornerstone of Singapore trade mark law, particularly regarding the practicalities of brand management and enforcement. Its significance can be categorized into three main areas: the "Block Capital" doctrine, the "Multi-Mark" principle, and the threshold for "Genuine Use."

First, the case establishes a clear and practitioner-friendly rule regarding word marks registered in block capitals. By holding that such a registration covers the word in any clearly legible font, the court provided trade mark owners with broad protection without requiring them to register every possible stylistic variation. This reduces the administrative burden on businesses while ensuring that the "core" of the mark—the word itself—is protected against competitors who might seek to use the same word in a different typeface to avoid infringement. This aligns Singapore law with a commercial reality where brands frequently update their visual identity while retaining their name.

Second, the judgment provides essential clarity for industries that utilize complex branding hierarchies. In the luxury sector, it is standard practice to use a "house mark" (e.g., IWC, Rolex, Omega) alongside a "model mark" (e.g., Da Vinci, Submariner, Speedmaster). The defendant's argument, if successful, would have jeopardized the validity of thousands of model-specific marks by categorizing them as "mere model names" or "subservient" descriptors. Andrew Ang J’s affirmation that a product can carry multiple marks, each functioning as an indicator of origin, protects these branding structures. It recognizes that a consumer can look at a watch and see both "IWC" and "DA VINCI" as guarantees that the product comes from the plaintiff's undertaking.

Third, the case refines the "genuine use" test in the context of revocation proceedings. It distinguishes between a mark being "subsumed" (as in Nation Fittings) and a mark being "combined." This distinction is vital for practitioners advising on whether a client's actual use of a mark on packaging or products is sufficient to maintain a registration. The court's focus on whether the mark remains "separate and distinct" provides a practical touchstone for evaluating the risk of revocation for non-use.

Finally, the case demonstrates the High Court's willingness to grant summary judgment in IP matters where the defense is based on unsustainable legal interpretations rather than genuine disputes of fact. By resolving the "genuine use" and "block capital" issues at the summary stage, the court provided an efficient resolution to a dispute that might otherwise have required a lengthy trial. This serves as a reminder to defendants that technical challenges to a mark's validity must be grounded in substantial evidence and sound doctrinal footing to survive a summary application.

Practice Pointers

• Register in Block Capitals for Maximum Breadth: When protecting a word mark, practitioners should prioritize registration in block capitals. This judgment confirms that such a registration provides a "monopoly" over the word in any legible font, offering broader protection than a registration limited to a specific stylized logo.
• Maintain Independence of Secondary Marks: When using model names or sub-brands alongside a house mark, ensure the secondary mark is visually distinct and not "subsumed" or "intertwined" with other elements. To satisfy the "genuine use" requirement, the mark must be capable of being perceived as an independent indicator of origin.
• Document Use of Model Marks: Trade mark owners should keep meticulous records of how model-specific marks are used in marketing and on products. This evidence is crucial to rebutting "non-use" challenges by showing that the mark functions as a source identifier in the eyes of the consumer.
• Avoid Descriptive Model Names: While "DA VINCI" was found to be distinctive for watches, practitioners should caution clients against using model names that are purely descriptive of the product's features (e.g., "Waterproof" or "Gold Edition"), as these are more likely to be viewed as "mere descriptors" rather than trade marks.
• Summary Judgment is Viable for Identical Marks: In cases of "double identity" (identical sign and identical goods), summary judgment is a potent tool. If the defendant's only recourse is a technical challenge to validity (like non-use based on stylization), the Richemont precedent provides a strong basis for a swift injunction.
• Review Multi-Branding Strategies: Periodically review how various marks are displayed on a single product. If a mark is always used as part of a composite, consider whether it still "stands out" enough to maintain its own registration under the Nation Fittings vs. Richemont distinction.

Subsequent Treatment

The decision in Richemont International SA v Da Vinci Collections Pte Ltd has been consistently cited in Singapore for the proposition that a block capital registration covers all legible forms of the word. It remains a leading authority on the "multi-mark" principle, frequently referenced in disputes involving luxury goods and automotive branding where house marks and sub-brands co-exist. The distinction drawn between this case and Nation Fittings regarding "subsumed" marks continues to guide the High Court in revocation and infringement analyses. Later cases have followed Andrew Ang J's pragmatic approach to "genuine use," emphasizing the consumer's perspective in identifying the origin of goods.

Legislation Referenced

• Trade Marks Act (Cap 332, 2005 Rev Ed): Sections 7(1)(b), 7(1)(c), 22(1), 22(1)(a), 22(2), 23(1), 23(2), 27(1), 105
• UK Trade Marks Act 1994: Section 46 (Equivalent to s 22 of the Singapore Act), s 46(2)
• Rules of Court: Order 14 Rule 3 (Summary Judgment)

Cases Cited

• Applied / Followed:
  • In the Matter of Morny Ld’s Trade Marks (1951) 68 RPC 131
  • Safari Trade Mark [2002] RPC 23
  • Levi Strauss & Co v Shah [1985] RPC 371
  • George Weston Foods Ltd v Manildra Flour Mills Pty Ltd (1999) 47 IPR 145
  • Bud and Budweiser Budbräu Trade Marks [2003] RPC 25
  • British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281
• Distinguished:
  • Nation Fittings (M) Sdn Bhd v Oystertec Plc [2006] 1 SLR 712
  • Elle Trade Marks [1997] FSR 529
• Considered:
  • OHIM v Wm Wrigley Jr Company (Doublemint) [2004] RPC 18

Source Documents

• Original judgment PDF: Download (PDF, hosted on Legal Wires CDN)
• Official eLitigation record: View on elitigation.sg