Case Details
- Citation: [2020] SGIPOS 2
- Court: Intellectual Property Office of Singapore
- Date: 2020-02-04
- Judges: N/A
- Plaintiff/Applicant: Seek Limited
- Defendant/Respondent: Seek Asia Pte Ltd
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act
- Cases Cited: [2020] SGIPOS 2
- Judgment Length: 6 pages, 2,198 words
Summary
This case involves a trademark opposition filed by Seek Limited, an Australian company, against the registration of the trademark "Seek Asia Composite Mark" by Seek Asia Pte Ltd, a Singaporean company. Seek Limited opposed the registration on the grounds of bad faith and copyright infringement. The Intellectual Property Office of Singapore (IPOS) ultimately decided in favor of Seek Limited, finding that Seek Asia Pte Ltd had acted in bad faith and infringed Seek Limited's copyright in the "Seek Asia" mark.
What Were the Facts of This Case?
Seek Asia Pte Ltd, the applicant, applied to register the trademark "Seek Asia Composite Mark" in Singapore on March 3, 2017. The trademark was filed in Class 35 for various services related to job recruitment and advertising. Seek Limited, the opponent, is an Australian company that provides job recruitment services and is listed on the Australian Securities Exchange.
The key facts are that Seek Limited's subsidiaries, jobsDB SG and JobStreet SG, had employed Lakshmanan Meenakshi Sundaram ("Meenak") between 2014 and 2018. Meenak is also the Chief Executive Officer of Seek Asia Pte Ltd, which was incorporated in 2014, 11 months after Meenak began his employment with Seek Limited's subsidiaries. During his employment, Meenak was exposed to Seek Limited's various "Seek Asia" marks, including the "Seek Asia Composite Mark".
Additionally, the Applicant's original business profile listed its principal activities as "Accounting and auditing services (including taxation advisory services)" from December 2015 to at least May 2017. This profile was only amended in October 2017, after the opposition proceedings commenced, to "Executive Search Services Online Job Portal for Employers and Employees", which is more consistent with the services claimed in the trademark application. The Opponent also alleges that the job listings on the Applicant's portal were either gibberish or copied from elsewhere, suggesting the Applicant had no bona fide intention to use the trademark.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Applicant had acted in bad faith in applying to register the "Seek Asia Composite Mark" trademark, under Section 7(6) of the Trade Marks Act.
2. Whether the Applicant's use of the "Seek Asia Composite Mark" would infringe the Opponent's copyright in the mark, under Section 8(7)(b) of the Trade Marks Act.
How Did the Court Analyse the Issues?
On the issue of bad faith, the Registrar examined the Applicant's conduct, including the fact that Meenak, the Applicant's CEO, was previously employed by the Opponent's subsidiaries and exposed to the "Seek Asia" marks. The Registrar also considered the Applicant's initial business profile, which was unrelated to the services claimed in the trademark application, and the Applicant's alleged attempts to extort money from the Opponent by threatening to report it to regulatory authorities.
The Registrar found that the Applicant's conduct, including the timing of its incorporation and trademark application, as well as its attempts to extort money from the Opponent, demonstrated that the Applicant had applied to register the trademark in bad faith, with the intention of either harming the Opponent's business or extracting a financial settlement.
On the issue of copyright infringement, the Registrar noted that the High Court had already granted a permanent injunction against the Applicant, finding that its use of the "Seek Asia Composite Mark" infringed the Opponent's copyright in the mark. The Registrar considered this prior court decision and found that the Applicant's use of the mark would also be prevented by the Opponent's earlier copyright, under Section 8(7)(b) of the Trade Marks Act.
What Was the Outcome?
Based on the findings of bad faith and copyright infringement, the Registrar decided to refuse the registration of the "Seek Asia Composite Mark" trademark. The Registrar exercised his power under Rule 37(4) of the Trade Marks Rules to give this decision without proceeding with a hearing, as the Applicant had failed to participate in the later stages of the opposition proceedings despite multiple opportunities.
Why Does This Case Matter?
This case is significant for several reasons:
1. It demonstrates the importance of acting in good faith when applying for trademark registrations. The Registrar's finding of bad faith on the part of the Applicant, based on the timing of its incorporation, its CEO's prior employment, and its attempts to extort money, serves as a warning to other parties that such conduct will not be tolerated.
2. The case reinforces the principle that trademark rights can be limited by earlier intellectual property rights, such as copyright. The Registrar's reliance on the prior court decision finding copyright infringement highlights the need for trademark applicants to carefully consider any potential conflicts with existing rights.
3. The Registrar's decision to proceed with the opposition without a hearing, due to the Applicant's lack of participation, demonstrates the Registrar's willingness to take a pragmatic approach to resolving cases efficiently, especially where the opposing party has clearly acted in bad faith.
Overall, this case provides valuable guidance on the application of the bad faith and copyright infringement grounds for opposing trademark registrations in Singapore, and the consequences for parties that engage in unethical or dilatory conduct during opposition proceedings.
Legislation Referenced
Cases Cited
- [2020] SGIPOS 2
- HC/JUD 452/2019
- HC/ORC 6230/2019
Source Documents
This article analyses [2020] SGIPOS 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.