Case Details
- Citation: [2018] SGIPOS 3
- Court: Intellectual Property Office of Singapore
- Date: 2018-02-12
- Judges: Ms Sandy Widjaja
- Plaintiff/Applicant: USA Pro IP Limited
- Defendant/Respondent: Montfort Services Sdn Bhd
- Legal Areas: Trade marks and trade names – Declaration of Invalidity and Revocation
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2014] SGIPOS 13, [2015] SGIPOS 11, [2016] SGIPOS 1, [2016] SGIPOS 9, [2017] SGCA 39
- Judgment Length: 40 pages, 16,340 words
Summary
This case involves a series of three concurrent actions between USA Pro IP Limited ("the Applicants") and Montfort Services Sdn Bhd ("the Proprietors") regarding the trade mark "USAPRO". The Applicants filed an application for invalidation of the Proprietors' registered trade mark, as well as a separate application for revocation of the same mark. The Intellectual Property Office of Singapore ("IPOS") consolidated the two post-registration actions and addressed them in a single set of grounds of decision.
The key issues before the Hearing Officer were whether the Proprietors' registration of the "USAPRO" trade mark should be invalidated on the ground of bad faith under Section 7(6) of the Trade Marks Act, and whether the registration should be revoked on the ground of non-use under Section 22 of the Act. The Hearing Officer ultimately found in favor of the Applicants on the issue of bad faith, invalidating the Proprietors' trade mark registration.
What Were the Facts of This Case?
The Applicants, USA Pro IP Limited, are in the business of manufacturing, distributing, and promoting sporting wear and equipment under the "USA PRO" brand. They deposed that through the years, the Applicants have become recognized as a high-quality brand providing an innovative range of fitness wear, with their products sold across many countries worldwide.
The Proprietors, Montfort Services Sdn Bhd, did not provide any information about their background in the pleadings, evidence, or written submissions. However, it is apparent from the evidence and submissions that the parties were entangled in worldwide disputes pertaining to variants of the "USA PRO" mark.
The subject matter of the post-registration actions was Trade Mark No. T0805183J for "USAPRO", registered by the Proprietors in Classes 18, 25, and 28 for various goods including leather goods, clothing, and sporting equipment.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Proprietors' registration of the "USAPRO" trade mark should be invalidated on the ground of bad faith under Section 7(6) of the Trade Marks Act.
2. Whether the Proprietors' registration of the "USAPRO" trade mark should be revoked on the ground of non-use under Section 22 of the Trade Marks Act.
How Did the Court Analyse the Issues?
On the issue of invalidation under Section 7(6), the Hearing Officer first addressed a preliminary issue raised by the Proprietors. The Proprietors submitted that the Hearing Officer should be slow in making adverse findings against them, as the Applicants' deponents had not been cross-examined.
The Hearing Officer referred to the decision in Fox Racing, Inc. v Fox Street Wear Pte Ltd [2014] SGIPOS 13, where the Tribunal held that cross-examination is not always necessary when evidence is to be challenged in trade mark registry proceedings. The Hearing Officer agreed that fairness requires that adverse findings should not ordinarily be made against a witness without the witness having the opportunity to answer the charge. However, the Hearing Officer also noted that if the opportunity for cross-examination is passed up, the consequence is that the Tribunal must assess the evidence on that basis rather than refraining from considering the evidence.
Turning to the substantive issue of bad faith under Section 7(6), the Hearing Officer examined the Applicants' evidence, which included statutory declarations from the Applicants' director and company secretary. The Hearing Officer found that the evidence showed a long history of the Applicants using the "USA PRO" mark worldwide, and that the Proprietors were aware of the Applicants' rights in the mark when they applied to register the "USAPRO" mark.
The Hearing Officer also noted that the Proprietors had not provided any evidence to explain their adoption and registration of the "USAPRO" mark. The Hearing Officer concluded that the Proprietors' conduct in registering the mark amounted to bad faith, and therefore the registration should be invalidated under Section 7(6).
What Was the Outcome?
The Hearing Officer invalidated the Proprietors' registration of the "USAPRO" trade mark under Section 7(6) of the Trade Marks Act, on the ground of bad faith. Given this finding, the Hearing Officer did not need to address the issue of revocation under Section 22.
Why Does This Case Matter?
This case provides useful guidance on the application of the bad faith ground for invalidation under Section 7(6) of the Singapore Trade Marks Act. The Hearing Officer's analysis demonstrates that a finding of bad faith can be made even in the absence of cross-examination of the parties' witnesses, as long as the evidence adduced is sufficient to establish the necessary facts.
The case also highlights the importance of a trade mark owner being able to demonstrate a genuine and longstanding use of their mark, in order to defend against claims of bad faith by a later applicant. The Hearing Officer's finding that the Proprietors failed to provide any evidence to explain their adoption and registration of the "USAPRO" mark was a key factor in the decision.
Overall, this case serves as a reminder to trade mark owners of the need to vigilantly protect their rights, and to trade mark applicants of the risks of attempting to register marks that are confusingly similar to established brands. The decision underscores the Singapore Intellectual Property Office's willingness to invalidate registrations obtained in bad faith, in order to maintain the integrity of the trade mark registration system.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed)
Cases Cited
- [2014] SGIPOS 13 - Fox Racing, Inc. v Fox Street Wear Pte Ltd
- [2015] SGIPOS 11
- [2016] SGIPOS 1
- [2016] SGIPOS 9
- [2017] SGCA 39
Source Documents
This article analyses [2018] SGIPOS 3 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.