Case Details
- Citation: [2018] SGIPOS 4
- 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 – Opposition to registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2016] SGIPOS 9
- Judgment Length: 10 pages, 3,519 words
Summary
This case involves a trade mark opposition filed by USA Pro IP Limited ("the Opponents") against the registration of the trade mark "USAPRO" by Montfort Services Sdn Bhd ("the Applicants"). The Opponents argued that the Applicants had applied for the mark in bad faith, as they were aware that the Opponents were the true proprietor of the mark. The Opponents also claimed that the Applicants had no bona fide intention to use the mark in Singapore.
The Hearing Officer, Ms Sandy Widjaja, found that the Applicants were not the first user of the mark, and that the Opponents' predecessor, USA PRO Limited, was the true first user. The Hearing Officer also found that the Applicants were aware of the Opponents' prior rights in the mark, based on the evidence of prior negotiations between the parties and the Opponents' reputation in the UK and other countries. Accordingly, the Hearing Officer concluded that the Applicants had filed the application in bad faith and upheld the opposition.
What Were the Facts of This Case?
The subject of the opposition proceedings was Trade Mark No. T1318929B for "USAPRO" ("the Application Mark"), which the Applicants had applied to register in Classes 18, 25, and 28 for various sports-related goods.
The Opponents filed a notice of opposition against the Application Mark on 22 May 2014. The Applicants filed a counter-statement on 18 July 2014. The Opponents then filed evidence in support of the opposition on 27 February 2015, and the Applicants filed evidence in support of the application on 27 August 2015. The Opponents filed their evidence in reply on 26 April 2016, and the matter was eventually heard together with related invalidation and revocation proceedings on 16 November 2017.
The Opponents' evidence included statutory declarations from their director, Mr. David Michael Forsey, and their company secretary, Mr. Cameron Olsen. The Applicants' evidence consisted of a statutory declaration from their legal director, Mr. Christopher McQuoid.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Applicants had filed the application for the Application Mark in bad faith under Section 7(6) of the Trade Marks Act.
2. Whether the Applicants were the first user of the "USAPRO" mark in Singapore, or whether the Opponents' predecessor, USA PRO Limited, was the first user.
3. Whether the Applicants had knowledge of the Opponents' prior rights in the "USAPRO" mark, based on the evidence of prior negotiations between the parties and the Opponents' reputation in the UK and other countries.
How Did the Court Analyse the Issues?
The Hearing Officer, Ms. Sandy Widjaja, first addressed the preliminary issue raised by the Applicants regarding the lack of cross-examination of the Opponents' witnesses. The Hearing Officer agreed with the Opponents that there was no necessity for cross-examination, and that the lack of cross-examination did not result in an adverse inference being drawn.
Regarding the test for bad faith under Section 7(6) of the Trade Marks Act, the Hearing Officer referred to the legal principles set out in the earlier case of Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203. The relevant date for assessing bad faith was the date of application of the Application Mark, which was 21 November 2013.
The Hearing Officer then examined the Opponents' two main arguments for bad faith: (i) that the Applicants did not own the Application Mark but had applied for it despite knowing that the Opponents were the true proprietor; and (ii) that the Applicants had no bona fide intention to use the Application Mark in Singapore.
On the issue of first user of the mark, the Hearing Officer found that the Applicants were not the first user of the "USAPRO" mark in Singapore. Rather, the Opponents' predecessor, USA PRO Limited, was the first user. The Hearing Officer noted that the Applicants had referred to an assignment of a US trade mark registration for "USA PRO" in 2010, but found that this did not assist the Applicants' claim to proprietorship, as the US registration had subsequently been cancelled due to non-use.
Regarding the Applicants' conceptualization of the Application Mark, the Hearing Officer agreed with the Opponents that the Applicants' evidence appeared to relate to their plans to exploit the US registration, rather than their intentions for the Application Mark in Singapore.
The Hearing Officer then considered the Opponents' argument that the Applicants were aware of the Opponents' prior rights in the "USAPRO" mark, based on the evidence of prior negotiations between the parties and the Opponents' reputation in the UK and other countries. The Hearing Officer found that the Opponents' evidence supported their contention that the negotiations with the Applicants had fallen through in 2008, and that the Applicants had subsequently begun applying to register the mark worldwide, including the Application Mark in Singapore.
What Was the Outcome?
Based on the above analysis, the Hearing Officer concluded that the Applicants had filed the application for the Application Mark in bad faith under Section 7(6) of the Trade Marks Act. The Hearing Officer found that the Applicants were aware that the Opponents were the true proprietor of the "USAPRO" mark, but had nonetheless applied to register the mark in Singapore. The Hearing Officer also found that the Applicants had no bona fide intention to use the mark in Singapore.
Accordingly, the Hearing Officer upheld the Opponents' opposition and refused the registration of the Application Mark.
Why Does This Case Matter?
This case is significant for several reasons:
1. It provides guidance on the legal test for determining bad faith under Section 7(6) of the Trade Marks Act, reaffirming the principles set out in the Valentino Globe case.
2. It demonstrates the importance of evidence regarding the first use of a mark and the parties' knowledge of prior rights, in assessing claims of bad faith.
3. The case highlights the need for applicants to have a genuine, bona fide intention to use a trade mark in Singapore, rather than simply filing an application in bad faith.
4. The case is also relevant to the broader issue of trade mark oppositions and the need for parties to carefully consider their rights and intentions when applying for trade mark registrations.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed)
Cases Cited
- [2016] SGIPOS 9
- Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203
Source Documents
This article analyses [2018] SGIPOS 4 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.