Case Details
- Citation: [2009] SGHC 150
- Case Title: Valentino Globe BV v Pacific Rim Industries Inc
- Case Number: OS 844/2008
- Court: High Court of the Republic of Singapore
- Date of Decision: 29 June 2009
- Judge: Chan Seng Onn J
- Coram: Chan Seng Onn J
- Procedural Posture: Appeal from the decision of the Principal Assistant Registrar of Trade Marks (PAR) dismissing an opposition to registration
- Applicant/Appellant: Valentino Globe BV
- Respondent: Pacific Rim Industries Inc
- Counsel for Appellant: Ponnampalam Sivakumar (Joseph Lopez & Co)
- Counsel for Respondent: Samuel Seow and Jonathan Yuen (Samuel Seow Law Corporation)
- Legal Areas: Trade Marks and Trade Names — Registration
- Key Statutory Provisions: Trade Marks Act (Cap 332, 2005 Rev Ed) ss 7(6), 8(2)
- Other References: Criminal Procedure Code; Evidence Act; UK (as referenced in the judgment)
- Length of Judgment: 16 pages, 8,547 words
- Decision Summary: Appeal dismissed; opposition failed on both likelihood of confusion (s 8(2)) and bad faith (s 7(6)
Summary
Valentino Globe BV v Pacific Rim Industries Inc concerned an opposition to the registration of a trade mark for leather goods. The applicant, Valentino Globe BV, owned multiple Singapore registrations for “Valentino” marks, including marks registered in Class 18 (and some in other classes). The respondent, Pacific Rim Industries Inc, sought registration of an “Emilio Valentino & V Device” mark for “Leather goods; all included in Class 18”. The Principal Assistant Registrar of Trade Marks (PAR) dismissed the opposition, finding that the opposition failed on all pleaded grounds. Valentino Globe BV appealed to the High Court.
Chan Seng Onn J dismissed the appeal. On the likelihood of confusion ground under s 8(2) of the Trade Marks Act, the court accepted the PAR’s approach of focusing on the earlier marks that were relevant to the goods covered in Class 18. The court agreed that the most comparable “Valentino” marks were visually, aurally and conceptually dissimilar from the “Emilio Valentino & V Device” mark, and therefore there was no likelihood of confusion. On the bad faith ground under s 7(6), the court held that the burden lay on the opponent and that the evidence did not support an inference of bad faith merely because the respondent used the word “Valentino” or because of the respondent’s manufacturing and marketing arrangements.
What Were the Facts of This Case?
Valentino Globe BV (the appellant) owned a portfolio of trade mark registrations in Singapore for “Valentino” marks. At the time the notice of opposition was filed (25 June 2004), the appellant had registration rights in Singapore for various “Valentino” trade marks bearing different designs. For ease of reference, the High Court treated these as the “Valentino Marks”. Importantly, not all of the appellant’s registrations covered the same goods; some were confined to particular products within Class 18, while others extended to clothing and footwear in Class 25 and beyond.
The respondent, Pacific Rim Industries Inc, filed an application on 18 December 2003 to register the “Emilio Valentino & V Device” mark. The application was for “Leather goods; all included in Class 18”. The application was accepted and advertised in the Trade Marks Journal on 25 June 2004. After advertisement, the appellant filed a notice of opposition on 25 August 2004, relying on multiple grounds. Two grounds became central on appeal: first, that registration would be contrary to s 8(2) because of a likelihood of confusion arising from similarity between the application mark and earlier “Valentino” marks; and second, that registration was precluded by s 7(6) because the respondent had acted in bad faith.
In assessing the s 8(2) ground, the PAR and the High Court treated the class of goods as a key starting point. The respondent’s application was in Class 18 for leather goods. The appellant’s “Valentino” portfolio included several Class 18 registrations, but some were limited to narrower items and did not cover “leather goods” generally. For example, one appellant mark (T00/21726H) was registered in Class 18 but specified for “umbrellas” only. Another (T99/04403D) was registered in Class 18 but specified for “Umbrellas, parasols and walking sticks”. These limitations mattered because s 8(2) requires comparison between the application mark and earlier marks “for goods or services similar to those for which the earlier trade mark is protected” (or identical/similar, depending on the limb).
The High Court also noted that the application mark itself combined the phrase “Emilio Valentino” with a “V Device”. The appellant argued that the respondent’s mark was essentially a misappropriation or “hijacking” of the appellant’s Valentino brand. The respondent, by contrast, maintained that the use of “Valentino” was not enough to establish bad faith and that the appellant had not discharged the evidential burden required under s 7(6).
What Were the Key Legal Issues?
The appeal raised two principal legal issues. The first was whether the PAR erred in finding that the respondent had not acted in bad faith under s 7(6) of the Trade Marks Act. The second was whether the PAR erred in fact and in law in dismissing the appellant’s opposition under s 8(2), which turns on whether there exists a likelihood of confusion between the application mark and earlier trade marks.
In addition, the High Court addressed the procedural nature of the appeal. Under the Rules of Court, an appeal from the Registrar of Trade Marks is by way of “rehearing”. The court therefore considered the scope of its powers and whether it was constrained to reviewing only manifest errors or whether it could consider the whole evidence and reach its own conclusion. This mattered because the court ultimately agreed with the PAR’s reasoning but also independently assessed the evidence.
How Did the Court Analyse the Issues?
On the procedural point, Chan Seng Onn J explained that “by way of rehearing” does not necessarily mean that the court must conduct a full re-trial or hear witnesses afresh. Rather, it indicates that the appellate court considers the whole of the evidence before the tribunal and the whole course of the proceedings, while retaining discretion in how it approaches the matter. The court also referenced the broader appellate powers associated with O 55 of the Rules of Court, contrasting it with the narrower focus of judicial review-type approaches. The court therefore treated itself as empowered to reach an independent conclusion on the merits, even though it would not automatically disregard the tribunal’s findings.
Turning to the s 8(2) issue, the court accepted the PAR’s method of narrowing the comparison to the earlier marks that were relevant to the goods covered by the application. Because the application was for “Leather goods; all included in Class 18”, the earlier marks in Class 18 were not all equally relevant. Some were confined to specific items (such as umbrellas) and did not cover “leather goods”. The PAR therefore identified which of the appellant’s Class 18 registrations were prima facie most similar to the application mark for the purposes of s 8(2). The PAR concluded that only two marks—T99/04403D and T00/21726H—were most similar enough to warrant direct comparison. If those were not similar to the application mark, there would be no need to compare the remaining marks.
The High Court agreed with this approach and with the PAR’s conclusion on similarity. The PAR found that the “Relevant Marks” were visually, aurally and conceptually dissimilar from the “Emilio Valentino & V Device” mark. The High Court endorsed that reasoning. Although the appellant had a broader portfolio of “Valentino” registrations, the court’s analysis under s 8(2) was not a mere “word-only” comparison. It required an assessment of the overall impression created by the marks, including their devices and the manner in which the marks would be perceived by the relevant public. The court’s acceptance of dissimilarity meant that the likelihood of confusion element could not be satisfied.
On the s 7(6) bad faith issue, the court began with the statutory burden. Since the appellant alleged bad faith, it bore the burden of proving it. The appellant’s pleaded instances of bad faith included: (i) alleged hijacking of the appellant’s Valentino marks; (ii) alleged lack of proprietorship by the respondent; and (iii) alleged copying from a gentleman in Italy who shared an identical mark with the respondent. The PAR had dealt extensively with these allegations, and the High Court reviewed that reasoning.
The High Court agreed with the PAR that bad faith could not be inferred automatically from the mere incorporation of the word “Valentino”. The PAR had observed that “Valentino” was a common element in the fashion and trade mark landscape, with multiple traders using it in their marks. The PAR also noted that “Valentino” itself had been registered by other entities in Class 18. Given the “plethora” of marks containing “Valentino”, the court held that the appellant’s argument that the respondent’s use of “Valentino” necessarily implied misappropriation was insufficient. In other words, the court required more than coincidence of a shared word; it required evidence supporting an inference of dishonest intent or improper conduct at the time of filing.
The court also addressed the appellant’s attempt to draw an inference of bad faith from the respondent’s corporate and commercial arrangements. The PAR had found that the respondent being a Californian company and allowing another company to manufacture goods in China and market them with “Italy” under a mark sounding Italian (such as “Emilio Valentino”) did not, by itself, establish bad faith. The High Court did not disturb that conclusion. The reasoning reflects a cautious approach: trade mark bad faith is not established merely by the existence of international supply chains or marketing descriptors; it requires evidence that the application was made in bad faith as contemplated by s 7(6).
Although the judgment extract provided is truncated after the appellant’s argument about proprietorship, the High Court’s overall approach is clear from the sections reproduced: it treated bad faith as a serious allegation requiring proof, rejected unsupported inferences, and accepted the PAR’s findings where the appellant’s evidence did not rise above speculation. The court therefore found that the PAR had not erred in concluding that the appellant failed to prove bad faith.
What Was the Outcome?
Chan Seng Onn J dismissed the appeal. The court held that the PAR had not erred in finding that the opposition failed on the s 8(2) likelihood of confusion ground and that the appellant had not proven bad faith under s 7(6). The High Court’s conclusion “did not depart from the PAR’s” and the court independently reached the same result on the evidence before it.
Practically, the dismissal meant that the respondent’s “Emilio Valentino & V Device” trade mark remained eligible for registration (subject to the procedural status at the time of the appeal). The appellant’s opposition was unsuccessful, and the High Court’s decision reinforced that both similarity analysis and bad faith allegations must be supported by evidence and must be anchored to the statutory tests.
Why Does This Case Matter?
This decision is useful for practitioners because it illustrates two recurring themes in Singapore trade mark opposition litigation: first, the importance of correctly identifying the earlier marks that are actually relevant to the goods/services covered by the application; and second, the evidential burden for proving bad faith under s 7(6). The court’s endorsement of the PAR’s “selected marks” approach demonstrates that an opponent cannot rely on a broad portfolio of registrations in the abstract. Instead, the opponent must focus on the earlier marks that are protected for goods or services that are similar (or identical, depending on the limb) to those for which the application is sought.
On bad faith, the case is a reminder that the mere presence of a shared word or a superficial resemblance is not enough. Where a term is widely used in the market, an opponent must provide concrete evidence of improper conduct or dishonest intent at the time of filing. The court’s reasoning also indicates that commercial realities—such as manufacturing locations and marketing descriptors—will not automatically translate into trade mark bad faith. This is particularly relevant for fashion and consumer goods sectors where branding often involves international supply chains.
Finally, the procedural discussion on “rehearing” provides guidance on how High Court appeals from the Registrar of Trade Marks may be approached. While the court is not limited to checking natural justice or manifest errors, it retains discretion in how it evaluates the evidence. For litigators, this means that appeals should be prepared as substantive re-evaluations of the statutory tests, not merely as challenges to procedural fairness.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 7(6) [CDN] [SSO]
- Trade Marks Act (Cap 332, 2005 Rev Ed), s 8(2) [CDN] [SSO]
- Criminal Procedure Code (as referenced)
- Evidence Act (as referenced)
- UK (as referenced)
Cases Cited
- Ling Uk Choon & anor v Public Accountants Board [2004] 3 SLR 517
- [2009] SGHC 150 (the present case)
Source Documents
This article analyses [2009] SGHC 150 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.