Case Details
- Citation: [2022] SGIPOS 16
- Court: Intellectual Property Office of Singapore
- Date: 2022-11-23
- Judges: IP Adjudicator Murgiana Haq
- Plaintiff/Applicant: Skins IP Limited
- Defendant/Respondent: Symphony Holdings Limited
- Legal Areas: Trade marks and trade names – Revocation
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2014] SGIPOS 13, [2019] SGIPOS 6, [2019] SGIPOS 18, [2021] SGIPOS 11, [2021] SGIPOS 8, [2022] SGIPOS 16
- Judgment Length: 32 pages, 7,917 words
Summary
This case involves an application by Skins IP Limited to revoke the trade mark registration for the "SKINS" mark held by Symphony Holdings Limited. Skins IP Limited sought revocation on the grounds of non-use under Sections 22(1)(a) and 22(1)(b) of the Singapore Trade Marks Act. The Intellectual Property Office of Singapore (IPOS) ultimately granted a partial revocation of the "SKINS" mark, finding that Symphony Holdings Limited had failed to demonstrate genuine use of the mark in relation to certain goods covered by the registration.
What Were the Facts of This Case?
Symphony Holdings Limited is the registered proprietor of the "SKINS" trade mark, which covers a wide range of goods in classes 10, 18, 25, and 28. In 2019, Skins IP Limited filed an application to revoke this trade mark registration on the grounds of non-use under Sections 22(1)(a) and 22(1)(b) of the Trade Marks Act.
The relevant time periods considered by the IPOS were: (a) the first 5-year period following completion of the registration procedure, from 21 May 2011 to 20 May 2016 (under Section 22(1)(a)); and (b) the 5-year period before the revocation application was filed, from 26 August 2014 to 25 May 2019 (under Section 22(1)(b)).
Symphony Holdings Limited, as the registered proprietor, bore the burden of demonstrating genuine use of the "SKINS" mark in Singapore during the relevant time periods. The company submitted evidence of sales to a distributor, Leonian Singapore Pte Ltd, as well as some e-commerce promotional activities.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether Symphony Holdings Limited had demonstrated genuine use of the "SKINS" mark in Singapore in relation to the specified goods during the relevant time periods under Sections 22(1)(a) and 22(1)(b) of the Trade Marks Act.
2. If there was a lack of genuine use, whether there were proper reasons for non-use that would prevent revocation of the trade mark registration.
3. If revocation was warranted, whether it should be a full revocation or a partial revocation limited to certain goods covered by the registration.
How Did the Court Analyse the Issues?
The IPOS first considered the legal principles applicable to assessing genuine use of a trade mark. It noted that there must be real and effective use of the mark in the course of trade, though the use does not have to be significant in a quantitative sense. The use must be in accordance with the essential function of a trade mark, which is to guarantee the origin of the goods to consumers.
Regarding the evidence submitted by Symphony Holdings Limited, the IPOS examined whether the use of the "SKINS" mark met the various requirements, including: (i) whether the mark was used in relation to the specified goods; (ii) whether the use was in Singapore; (iii) whether the use was during the relevant time periods; and (iv) whether the use was by the registered proprietor or with its consent.
The IPOS found that Symphony Holdings Limited was able to demonstrate some genuine use of the "SKINS" mark, such as through sales to the distributor Leonian Singapore. However, the IPOS determined that the evidence was insufficient to show genuine use in relation to all the goods covered by the registration, particularly in classes 10, 18, and 28.
What Was the Outcome?
The IPOS granted a partial revocation of the "SKINS" trade mark registration. Specifically:
- For goods in class 10 (surgical and medical garments, etc.), the registration was revoked in full.
- For goods in class 18 (bags, backpacks, etc.), the registration was partially revoked for certain specified items.
- For goods in class 25 (clothing, footwear, headgear), the registration was maintained.
- For goods in class 28 (sporting articles), the registration was partially revoked for certain specified items.
The effective date of the partial revocation was set as 26 August 2014, the date the revocation application was filed.
Why Does This Case Matter?
This case highlights the importance for trade mark owners to carefully document and maintain evidence of genuine use of their registered marks. The IPOS emphasized that a trade mark purchaser should secure evidence of prior use from the seller at the time of acquisition, in order to be better positioned to defend the registration against non-use revocation actions.
The partial revocation outcome also demonstrates the IPOS's willingness to take a nuanced approach, revoking the registration only for those goods where genuine use was not sufficiently proven, rather than a complete revocation. This provides guidance on the level of evidence required to maintain a trade mark registration, even if use is not shown for the full scope of the registration.
Overall, this case serves as a cautionary tale for trade mark owners, underscoring the importance of diligently documenting and preserving evidence of genuine use to protect the validity of their registrations.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2022] SGIPOS 16 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.