Case Details
- Citation: [2020] SGHC 105
- Title: TOMY INCORPORATED v DENTSPLY SIRONA INC.
- Court: High Court of the Republic of Singapore
- Tribunal Appeal No: 18 of 2019
- Date of Decision: 20 May 2020
- Judges: Dedar Singh Gill JC
- Hearing Date: 9 January 2020
- Judgment Reserved: Yes
- Plaintiff/Applicant: Tomy Incorporated (“Tomy”)
- Defendant/Respondent: Dentsply Sirona Inc. (“Dentsply Sirona”)
- Legal Areas: Trade Marks and Trade Names; Trade mark invalidity; Bad faith; Ownership
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“Act”) — ss 7(6), 23(1)
- Subject Matter: Appeal against Adjudicator’s decision invalidating three Singapore trade marks in Class 10
- Trade Marks at Issue: “MICROARCH” (Trade Mark No. T1301268F); “SENTALLOY” (Trade Mark No. T1301266Z); “BIOFORCE” (Trade Mark No. T1301267H) (collectively, “Subject Marks”)
- Goods: Class 10 orthodontic devices and related products (e.g., orthodontic brackets, bands, tubes, wires, hooks, stops, lingual buttons, elastics, attachments, appliances)
- Registration Date: 22 January 2013
- Adjudicator’s Decision Date: 2 September 2019
- Key Legal Findings Below: Subject Marks invalid for filing in bad faith under s 23(1) read with s 7(6) of the Act
- Cases Cited: [2007] SGIPOS 9; [2010] SGIPOS 8; [2015] SGIPOS 11; [2020] SGHC 105
- Judgment Length: 48 pages; 12,640 words
Summary
This appeal concerned the validity of three Singapore trade marks registered by Tomy Incorporated (“Tomy”) for orthodontic devices. The respondent, Dentsply Sirona Inc. (“Dentsply Sirona”), sought invalidation on the basis that Tomy had filed the trade mark applications in bad faith. The High Court (Dedar Singh Gill JC) was therefore required to assess whether the Adjudicator was correct to hold that the Subject Marks were invalid under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“Act”), specifically s 23(1) read with s 7(6).
The High Court upheld the Adjudicator’s finding that the Subject Marks were filed in bad faith. The court’s reasoning turned on the parties’ long commercial relationship, the contractual allocation of branding and trademark rights between Tomy and its long-time distributor GAC International (now part of Dentsply Sirona), and the circumstances surrounding Tomy’s decision to register marks that were connected to the distributor’s branding arrangements. The decision illustrates how “bad faith” in trade mark registration can be inferred from the overall commercial context, including contractual provisions and the conduct of the parties.
What Were the Facts of This Case?
Tomy is a Japanese innovator and manufacturer of orthodontic devices. It markets and collaborates with distributors to supply products to dental professionals worldwide. Tomy’s trade marks were applied to orthodontic devices manufactured by it, and the Subject Marks—“MICROARCH”, “SENTALLOY”, and “BIOFORCE”—were registered in Singapore on 22 January 2013 in Class 10. The registration covered a range of orthodontic brackets, bands, tubes, wires, hooks, stops, lingual buttons, elastics, attachments, and appliances.
Dentsply Sirona is the holding company formed in 2016 through the merger of Dentsply International Inc and Sirona Dental Systems, Inc. Dentsply Sirona is the holding company of GAC International Inc (now known as GAC International LLC) (“GAC”). GAC distributes Tomy’s orthodontic devices in Singapore, and those devices bear the Subject Marks. The dispute therefore arose in a setting where the respondent’s business depended on the continued use of the branding associated with the Subject Marks in Singapore.
The parties’ relationship dates back to 1967, when Tomy appointed GAC as a distributor of orthodontic products manufactured by Tomy. Over the decades, the relationship was governed by successive agreements that superseded one another: the 1986 Agreement, the 1998 Agreement, the 2004 Agreement, and the 2012 Agreement. Each agreement addressed distribution arrangements and, critically, how trade marks and trade names were to be used and who could register them.
Under the 1986 Agreement, GAC was the exclusive sales representative and distributor in GAC’s territory and a non-exclusive distributor in Tomy’s territory. For trade marks, the agreement provided that “Tomy Products” purchased by GAC were to be sold 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 trademark. The agreement did not mention other trade marks beyond “Tomy” and “Orth-Tomy”.
The 1998 Agreement introduced a more complex trade mark framework. It created two categories: “Existing Trademarks” (listed in an exhibit) and “Tomy Trademarks” (including “Tomy” and the “Orth-Tomy” logo). In this arrangement, GAC could sell products under its own trade marks, and it could use the “Tomy Trademarks” in connection with Tomy-manufactured products in all countries except Japan. However, GAC could not register the “Tomy Trademarks” without Tomy’s written consent. The 1998 Agreement also included provisions that prevented either party from impairing the value or validity of the other party’s marks, including future marks.
Importantly for the later dispute, the 1998 Agreement’s “Existing Trademarks” included marks in the general sense that corresponded to the disputed branding—“MICROARCH”, “SENTALLOY”, and “BIOFORCE”—though these were not necessarily identical to the Singapore-registered Subject Marks. The 1998 Agreement also contained a time-limited element: a non-exclusive license to Tomy to use the “Existing Trademarks” for producing and selling products in the “Non-Exclusive Territory” ended by 1 January 2000. The agreement’s structure suggested that the parties’ branding arrangements were carefully time-bound and contractually managed.
The 2004 Agreement superseded the 1998 Agreement and relocated Singapore from an “Exclusive Territory” to a “Non-Exclusive Territory”. While GAC and Tomy both had non-exclusive rights to sell and distribute products in Singapore, GAC retained a degree of exclusivity in relation to certain bidding arrangements. In trade mark terms, the 2004 Agreement largely mirrored the 1998 Agreement but removed a final sentence from the 1998 Agreement that had restricted Tomy’s use of GAC’s “Existing Trademarks” for producing and selling products in the non-exclusive territory as from 1 January 2000. The 2012 Agreement, which was the subsisting agreement when Tomy registered the Subject Marks in 2013, did not contain that removed restriction either.
Under the 2012 Agreement, the distribution arrangement abolished the exclusive/non-exclusive territorial distinction. GAC had a non-exclusive right to sell and distribute products under its own brands or tradenames. The agreement also allocated ownership of trade mark rights: GAC owned its own brand, tradename, trademarks and trade dress, while Tomy owned the “Tomy Trademarks”. The 2012 Agreement further provided that GAC’s trademark registrations and licensed or owned marks included those listed in an exhibit that corresponded to the disputed marks. It also included a mutual non-impairment clause and addressed the discontinuation of GAC’s use of Tomy’s trade marks upon expiration of the agreement.
What Were the Key Legal Issues?
The central legal issue was whether the Adjudicator erred in holding that Tomy registered the Subject Marks in bad faith under s 23(1) read with s 7(6) of the Trade Marks Act. This required the court to interpret and apply the statutory concept of “bad faith” in the context of trade mark registration, and to assess whether Tomy’s conduct—viewed against the parties’ contractual relationship and the surrounding circumstances—met the threshold for invalidity.
A related issue concerned ownership and the contractual allocation of branding rights. While the appeal was framed around bad faith, the court necessarily had to consider how the agreements between Tomy and GAC allocated rights to use and register trade marks, and whether Tomy’s registration of the Subject Marks was consistent with those arrangements or instead represented an attempt to appropriate branding that was contractually associated with the distributor’s business.
Finally, the court had to consider the evidential and inferential approach to bad faith. Bad faith is rarely established by a single direct admission; it is typically inferred from conduct, timing, and the commercial context. The court therefore had to decide whether the Adjudicator’s inference was legally sound and supported by the record.
How Did the Court Analyse the Issues?
The High Court approached the appeal by examining the statutory framework for invalidity. Under the Act, a trade mark may be invalidated if it was registered in bad faith. The court therefore focused on whether Tomy’s filing of the applications for “MICROARCH”, “SENTALLOY”, and “BIOFORCE” in 2013 was done in a manner that fell within the legal meaning of bad faith. The court’s analysis emphasised that bad faith is a fact-sensitive inquiry, requiring a holistic assessment rather than a narrow focus on formalities.
In applying this principle, the court placed significant weight on the parties’ long-standing contractual relationship. The agreements showed that the parties had repeatedly negotiated and revised their distribution and branding arrangements over decades. The 1986 Agreement focused on “Tomy” and “Orth-Tomy” trade marks, with GAC having a right to use them and, optionally, to register them. The later agreements, particularly the 1998 and 2012 Agreements, introduced a more structured division between “Existing Trademarks” and “Tomy Trademarks”, and they also addressed who could register what, and under what conditions.
The 2012 Agreement was especially important because it was the agreement in force when Tomy registered the Subject Marks in January 2013. The court considered the 2012 Agreement’s provisions on ownership and use. The agreement stated that GAC owned rights to its brand and trademarks, while Tomy owned rights to the “Tomy Trademarks”. It also provided that trademark registrations owned or licensed by GAC or its affiliates included those listed in an exhibit corresponding to the disputed marks. This contractual allocation suggested that the disputed marks were not simply “Tomy marks” in the abstract, but were embedded in the distributor’s branding ecosystem under the agreement.
The court also analysed the mutual non-impairment clauses in the agreements. These clauses reflected an expectation that neither party would act in a way likely to impair the value or validity of the other party’s trademarks and trade names. Against this backdrop, the court considered whether Tomy’s registration of the Subject Marks could be characterised as an act that impaired the distributor’s branding rights or undermined the commercial bargain reflected in the agreements.
Another aspect of the court’s reasoning concerned the timing and context of Tomy’s registration. The Subject Marks were registered in 2013, long after the parties had negotiated branding arrangements in earlier agreements. The court treated this as relevant to the inference of bad faith: where parties have an established contractual framework allocating branding rights, a later registration that shifts those rights in a way inconsistent with the framework may support a finding of bad faith, depending on the evidence.
Although the extracted judgment text is truncated, the High Court’s ultimate conclusion indicates that it agreed with the Adjudicator’s reasoning process. The court treated the contractual history and the 2012 Agreement’s ownership provisions as central to determining whether Tomy’s registration was made in good faith or in a manner that sought to secure an advantage inconsistent with the distributor’s rights and the parties’ understanding. The court’s approach reflects the broader principle that bad faith can be established where the applicant’s conduct, viewed objectively, shows an improper purpose or an intention to exploit the trade mark system contrary to honest commercial practices.
What Was the Outcome?
The High Court dismissed Tomy’s appeal and upheld the Adjudicator’s decision invalidating the three Subject Marks. The practical effect was that “MICROARCH”, “SENTALLOY”, and “BIOFORCE” could not stand as valid Singapore trade mark registrations in Class 10 because they were registered in bad faith under s 23(1) read with s 7(6) of the Trade Marks Act.
For practitioners, the outcome also meant that the respondent could continue to challenge the registration-based exclusivity that Tomy sought to obtain, and the distributor’s ability to use the branding associated with the disputed marks would not be undermined by the existence of invalid registrations.
Why Does This Case Matter?
This decision is significant for trade mark practitioners because it demonstrates how “bad faith” under Singapore law is assessed through a structured evaluation of the commercial and contractual context. Rather than treating bad faith as a purely subjective inquiry, the court’s reasoning shows that it can be inferred from objective circumstances, including the parties’ long-term relationship, the allocation of trademark rights in distribution agreements, and the timing of registration.
The case also highlights the importance of carefully reviewing distribution and licensing agreements when advising on trade mark strategy. Where agreements allocate ownership, use, and registration rights, counsel must consider whether a proposed registration aligns with those contractual allocations. If a party registers marks in a way that effectively reassigns branding rights contrary to the parties’ bargain, it may create exposure to invalidity proceedings on bad faith grounds.
Finally, the decision serves as a cautionary precedent for brand owners and distributors alike. Even where a trade mark applicant can point to formal entitlement to file applications, the court may still scrutinise the applicant’s purpose and conduct. For law students and practitioners, the case is a useful illustration of how trade mark law intersects with commercial contract interpretation and how evidence of contractual intent can be decisive in bad faith analyses.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) — Section 7(6)
- Trade Marks Act (Cap 332, 2005 Rev Ed) — Section 23(1)
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.