Case Details
- Citation: [2021] SGIPOS 11
- Court: Intellectual Property Office of Singapore
- Date: 2021-09-22
- Judges: Burton Ong
- Plaintiff/Applicant: Technopharma Limited
- Defendant/Respondent: Unilever PLC
- Legal Areas: Trade marks and trade names – Revocation
- Statutes Referenced: Singapore Trade Marks Act
- Cases Cited: [2003] SGHC 205, [2007] SGHC 59, [2013] SGCA 65, [2015] SGIPOS 6, [2019] SGIPOS 6, [2021] SGIPOS 11
Summary
This case involves an application by Technopharma Limited to revoke three trade mark registrations owned by Unilever PLC on the grounds of non-use. The trade marks in question are associated with Unilever's "Fair & Lovely" brand of skincare products. The Intellectual Property Office of Singapore had to determine whether Unilever had made "genuine use" of the trade marks in Singapore, as required under the Singapore Trade Marks Act to resist a revocation application. The decision addresses complex issues around the evidence required to establish genuine use, particularly in the context of parallel imports and the prevalence of third-party sales channels.
What Were the Facts of This Case?
Unilever PLC is a global consumer goods company incorporated in the United Kingdom. It owns three trade mark registrations in Singapore associated with its "Fair & Lovely" brand of skincare products: the Logo Mark (T8802249B), the Series Mark (T0808259J), and the Word Mark (T0404547Z). Technopharma Limited, a UK company specializing in skin whitening products, filed applications to revoke these three trade mark registrations on the grounds of non-use under Sections 22(1)(a) and 22(1)(b) of the Singapore Trade Marks Act.
Unilever submitted evidence in the form of a statutory declaration by its Senior IP Counsel, Adam Wilder, detailing the various physical and online sales channels through which its "Fair & Lovely" branded products have been distributed and sold in Singapore. This included sales to and through third-party distributors and retailers with physical stores in Singapore, as well as online sales through various e-commerce platforms and websites.
The evidence provided by Unilever included sales volumes, delivery orders, invoices, and images of the product packaging bearing the registered trade marks. However, the low resolution of many of the photographic images and the lack of written details made it difficult to definitively identify each product depicted.
What Were the Key Legal Issues?
The key legal issue in this case was whether Unilever had established that it had made "genuine use" of the three registered trade marks in Singapore, as required under Sections 22(1)(a) and 22(1)(b) of the Singapore Trade Marks Act to resist Technopharma's revocation applications.
Specifically, the Hearing Officer had to consider the extent to which Unilever could rely on the use of its trade marks by third-party distributors, retailers, and online platforms to demonstrate genuine use. The prevalence of parallel imports and the complexities of modern cross-border trade also raised questions about the legal significance of such third-party usage and whether it could be deemed to have occurred with Unilever's consent.
How Did the Court Analyse the Issues?
The Hearing Officer acknowledged the practical difficulties faced by a registered proprietor in proving actual use of a trade mark, particularly when the mark was registered decades ago and the proprietor is a multinational company managing a global trade mark portfolio.
The Hearing Officer noted that the trade mark usage by third-party distributors, retailers, and online platforms raised complex legal questions. On the one hand, Singapore's trade mark law framework favors the principle of international trade mark exhaustion, which allows for the unrestricted movement of genuine trade mark-bearing goods into Singapore. This suggests that such third-party usage could be relied upon by Unilever to demonstrate genuine use.
However, the Hearing Officer also recognized that there are limits to the extent to which a registered proprietor can rely on the use of its mark by unrelated third parties. The Hearing Officer indicated that for such third-party usage to be considered as having occurred with the proprietor's consent, there would need to be evidence of a close commercial relationship or some form of authorization or control by the proprietor over the third party's activities.
In analyzing the evidence provided by Unilever, the Hearing Officer found that while the sales volumes, delivery orders, and invoices demonstrated a significant level of trade in the "Fair & Lovely" branded products, the low-quality images and lack of written details made it difficult to definitively link these products to the specific registered trade marks. The Hearing Officer also noted that the evidence of online sales through third-party platforms was limited and lacked details on the scale and nature of such sales.
What Was the Outcome?
The Hearing Officer ultimately concluded that Unilever had not provided sufficient evidence to establish genuine use of the three registered trade marks in Singapore. While the evidence showed substantial trade in "Fair & Lovely" branded products, the Hearing Officer was not satisfied that this usage could be directly attributed to the specific registered trade marks.
As a result, the Hearing Officer ordered the revocation of all three of Unilever's trade mark registrations (the Logo Mark, the Series Mark, and the Word Mark) on the grounds of non-use under Sections 22(1)(a) and 22(1)(b) of the Singapore Trade Marks Act.
Why Does This Case Matter?
This case highlights the challenges faced by registered trade mark proprietors in demonstrating genuine use of their marks, particularly in the context of modern, globalized trade and the prevalence of parallel imports and third-party sales channels.
The decision provides valuable guidance on the legal principles and evidentiary requirements for establishing genuine use under the Singapore Trade Marks Act. It underscores the importance for registered proprietors to maintain detailed records of their trade mark usage, including the specific forms in which the marks are applied to goods, the sales volumes, and the nature of their commercial relationships with third-party distributors and retailers.
The case also raises interesting questions about the interplay between the principle of international trade mark exhaustion and the requirements for demonstrating genuine use. It suggests that while third-party usage can be relevant, there must be a close nexus between the proprietor and the third party's activities for such usage to be considered as having occurred with the proprietor's consent.
Overall, this decision serves as a valuable precedent for trade mark practitioners in Singapore, highlighting the need for diligent trade mark management and the careful consideration of complex legal issues surrounding trade mark use and revocation proceedings.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2021] SGIPOS 11 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.