Case Details
- Citation: [2020] SGHC 105
- Title: Tomy Inc v Dentsply Sirona Inc
- Court: High Court of the Republic of Singapore
- Date of Decision: 20 May 2020
- Judge: Dedar Singh Gill JC
- Case Number: Tribunal Appeal No 18 of 2019
- Tribunal/Court Below: Adjudicator (decision dated 2 September 2019)
- Parties: Tomy Incorporated (appellant/applicant) v Dentsply Sirona Inc (respondent)
- Counsel for Appellant: Foo Maw Jiun, Desmond Chew and Lee Ai Ming (Dentons Rodyk & Davidson LLP)
- Counsel for Respondent: Suhaimi bin Lazim and Khoo Lih-Han (Mirandah Law LLP)
- Legal Areas: Trade Marks and Trade Names — Invalidity; Trade Marks and Trade Names — Ownership
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“Act”)
- Key Statutory Provisions: s 23(1) read with s 7(6) of the Trade Marks Act
- Trade Marks at Issue: “MICROARCH” (Trade Mark No. T1301268F), “SENTALLOY” (Trade Mark No. T1301266Z), “BIOFORCE” (Trade Mark No. T1301267H) (Class 10) (“Subject Marks”)
- Procedural Posture: Appeal against the Adjudicator’s decision invalidating the Subject Marks
- Judgment Length: 25 pages, 12,011 words
- Reported/Unreported Status: Reported as [2020] SGHC 105
Summary
Tomy Inc v Dentsply Sirona Inc concerned an appeal from an Adjudicator’s decision invalidating three Singapore trade marks registered by Tomy Incorporated (“Tomy”). The Adjudicator held that the registrations were invalid because Tomy had filed the applications in bad faith, applying s 23(1) read with s 7(6) of the Trade Marks Act. The High Court (Dedar Singh Gill JC) was therefore required to review whether the evidence supported a finding of bad faith at the time of filing, and whether the parties’ long commercial relationship affected the analysis of ownership and intent.
The dispute arose in the context of a decades-long distribution relationship between Tomy and GAC International LLC (formerly GAC International Inc), which is now part of Dentsply Sirona Inc (“Dentsply Sirona”). The marks in question—“MICROARCH”, “SENTALLOY”, and “BIOFORCE”—were used in the orthodontic sector and were listed in earlier agreements as “Existing Trademarks” associated with GAC. Tomy later registered the Subject Marks in Singapore in 2013. The central question was whether Tomy’s registration conduct amounted to bad faith, notwithstanding the parties’ contractual arrangements and the fact that Tomy manufactured the underlying orthodontic devices.
What Were the Facts of This Case?
Tomy is a Japanese innovator and manufacturer of orthodontic devices. It was founded in 1959 and incorporated in 1966. Tomy markets and collaborates with distributors to distribute products to dental professionals worldwide. In Singapore, Tomy’s orthodontic devices were distributed by GAC International LLC, which is the holding/distribution arm within the Dentsply Sirona group. The Subject Marks were registered in Tomy’s name on 22 January 2013 in Class 10 for orthodontic brackets, bands, tubes, wires, hooks, stops, lingual buttons, elastics, attachments, and appliances.
Dentsply Sirona is the result of a 2016 merger between Dentsply International Inc and Sirona Dental Systems, Inc. Dentsply Sirona is the holding company of GAC International LLC (“GAC”). GAC distributes Tomy’s orthodontic devices in Singapore, and those devices bear the Subject Marks. This factual setting is important because it ties the trade mark registrations to an ongoing commercial relationship and to the manner in which the marks were used in the market.
The relationship between Tomy and GAC dates back to 1967, when Tomy appointed GAC as distributor of orthodontic products manufactured by Tomy. Over time, the relationship was governed by successive written agreements, each superseding the previous one. Four agreements were particularly relevant: the 1986 Agreement, the 1998 Agreement, the 2004 Agreement, and the 2012 Agreement. These agreements show how the parties allocated rights to distribute products and how they dealt with trade marks and trade names.
Under the 1986 Agreement, GAC had exclusive sales and distribution rights in GAC’s territory and non-exclusive rights in Tomy’s territory. With respect to trade marks, GAC was required to sell “Tomy Products” under the “Tomy” and “Orth-Tomy” trade marks. GAC had the right to use those names and, at its option, could register them as a trade name or trade mark. The agreement did not mention other trade marks. The 1998 Agreement introduced a more complex framework by distinguishing between “Existing Trademarks” and “Tomy Trademarks”. Exhibit 4 to the 1998 Agreement listed “MICROARCH”, “SENTALLOY”, and “BIOFORCE” as “Existing Trademarks” (referred to in the judgment as the “Disputed Marks”, distinct from the Singapore-registered Subject Marks). The 1998 Agreement permitted GAC to maintain the “Existing Trademarks” at its expense and granted Tomy a non-exclusive, royalty-free licence to use the “Existing Trademarks” for producing and selling products, but with a termination feature for use in certain territories. The 2004 Agreement largely mirrored the 1998 trade mark provisions but removed a sentence that had restricted Tomy’s use of GAC’s “Existing Trademarks” after 1 January 2000. The 2012 Agreement, which governed at the time Tomy registered the Subject Marks in 2013, further restructured the arrangement by abolishing the exclusive/non-exclusive territory distinction and by expressly allocating ownership of brands and trade marks to each party, while also addressing the scope and continuity of rights to use the other party’s marks.
What Were the Key Legal Issues?
The appeal turned on the legal requirements for invalidating a trade mark registration on the ground of bad faith. Under s 23(1) read with s 7(6) of the Trade Marks Act, a trade mark may be declared invalid if the application was made in bad faith. The High Court therefore had to assess whether, on the evidence, Tomy’s filing of the applications for “MICROARCH”, “SENTALLOY”, and “BIOFORCE” in Singapore in 2013 was done in bad faith.
A second issue concerned ownership and the effect of contractual arrangements on the intent behind registration. The parties’ agreements allocated rights to use and, in some circumstances, to register certain marks. The court had to consider whether Tomy’s registration of the Subject Marks was consistent with the rights and expectations created by the agreements, and whether Tomy’s conduct could be characterised as an attempt to appropriate marks that were contractually treated as belonging to GAC (or at least as being maintained by GAC) rather than as marks Tomy was entitled to claim as its own.
Finally, the court had to decide the proper approach to reviewing the Adjudicator’s findings. Although the High Court is an appellate court, trade mark invalidity determinations often involve fact-sensitive assessments of intent. The legal issue was not merely whether the marks were used in commerce, but whether the registration process reflected improper motives at the time of filing.
How Did the Court Analyse the Issues?
The High Court’s analysis began with the statutory framework for bad faith. Bad faith is a concept that requires more than mere knowledge of another party’s use of a mark. It involves an inquiry into the applicant’s state of mind and the purpose of the application. The court therefore examined the evidence surrounding the parties’ relationship and the contractual allocation of trade mark rights, because those documents were the most direct indicators of what the parties understood about ownership, licensing, and registration.
In assessing bad faith, the court considered the long history of dealings between Tomy and GAC and the evolution of their agreements. The 1986 Agreement suggested that, at least at that time, the relevant trade marks for Tomy products were “Tomy” and “Orth-Tomy”, and that GAC’s role was to distribute under those marks. However, the 1998 Agreement introduced “Existing Trademarks” maintained by GAC, with “MICROARCH”, “SENTALLOY”, and “BIOFORCE” appearing in Exhibit 4. The court treated this as a significant shift: it indicated that these marks were not simply Tomy marks, but were treated contractually as marks associated with GAC’s branding or trade name portfolio.
The court then analysed how the 2004 and 2012 Agreements affected the position. The 2004 Agreement removed a restriction that had prevented Tomy from using GAC’s “Existing Trademarks” for producing and selling products in the non-exclusive territory as from 1 January 2000. The 2012 Agreement, however, contained a more explicit ownership regime. It provided that GAC would own all rights to its brand, tradename, trademarks and trade dress, while Tomy would own all rights to the “Tomy Trademarks”. It also addressed the inclusion of the Disputed Marks within the list of marks owned or licensed by GAC or its affiliates. Importantly, the 2012 Agreement also included a clause preventing either party from impairing the value or validity of the other party’s marks, and it addressed the discontinuation of GAC’s use of Tomy Trademarks upon expiry. These provisions were relevant to the court’s evaluation of whether Tomy’s later registration of the Disputed Marks in Singapore was aligned with the contractual understanding of ownership.
Against this contractual backdrop, the court evaluated whether Tomy’s 2013 registrations could be justified as a legitimate exercise of rights or whether they reflected an improper attempt to secure exclusivity over marks that were, under the agreements, treated as belonging to GAC (or at least as marks that GAC was entitled to maintain and control). The court’s reasoning emphasised that bad faith is assessed at the time of filing. Thus, the court focused on what Tomy knew and intended in 2013, including the fact that GAC was still the distributor at that time and that the 2012 Agreement was the operative agreement governing trade mark usage and ownership.
In reaching its conclusions, the court also relied on prior decisions addressing bad faith in trade mark applications. The judgment referenced earlier Singapore decisions from the Intellectual Property Office and the High Court, which had developed principles for determining bad faith. While those cases are not reproduced in the extract provided, the citation list indicates that the court considered a line of authority on how to infer intent from conduct, contractual terms, and the surrounding circumstances. The court’s approach reflected the principle that bad faith may be inferred from objective facts, particularly where the applicant’s conduct is inconsistent with the rights and expectations established by agreement.
What Was the Outcome?
The High Court dismissed the appeal and upheld the Adjudicator’s decision invalidating Tomy’s three Subject Marks. The practical effect was that Tomy’s registrations for “MICROARCH”, “SENTALLOY”, and “BIOFORCE” in Class 10 were removed from the register (or otherwise rendered invalid), meaning Tomy could not rely on those registrations to enforce trade mark rights in Singapore.
By affirming invalidity on the basis of bad faith, the court reinforced that trade mark applicants must ensure that their filing strategy is consistent with their contractual and commercial position, and that registration cannot be used to appropriate marks in a manner inconsistent with the parties’ agreed allocation of ownership and licensing rights.
Why Does This Case Matter?
Tomy Inc v Dentsply Sirona Inc is significant for practitioners because it demonstrates how Singapore courts approach bad faith under s 23(1) read with s 7(6) of the Trade Marks Act in a context where the parties have a long-standing commercial relationship and detailed contractual provisions. The case illustrates that bad faith analysis is highly fact-specific, but it is also grounded in objective evidence such as the structure of agreements, the allocation of ownership, and the scope of licences to use marks.
For trade mark owners and distributors, the case underscores the importance of aligning trade mark filing decisions with contractual rights. Where agreements treat certain marks as belonging to one party or as being maintained by one party, the other party’s later attempt to register those marks may be scrutinised as an attempt to secure exclusivity contrary to the parties’ understanding. This is particularly relevant in distribution arrangements, where the distributor may develop brand equity in marks used on products and marketing materials.
For law students and litigators, the decision is also useful as a study in evidential reasoning. The court’s focus on the operative agreement at the time of filing (the 2012 Agreement) shows that the “time of application” requirement for bad faith is not merely formal. It affects what evidence is most probative, including whether the applicant had notice of the other party’s rights and whether the applicant’s conduct was consistent with the contractual allocation of ownership and use.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 23(1) [CDN] [SSO]
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 7(6) [CDN] [SSO]
Cases Cited
- [2007] SGIPOS 9
- [2010] SGIPOS 8
- [2015] SGIPOS 11
- [2020] SGHC 105
Source Documents
This article analyses [2020] SGHC 105 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.