Case Details
- Citation: [2023] SGIPOS 6
- Court: Intellectual Property Office of Singapore
- Date: 2023-02-28
- Judges: Principal Assistant Registrar See Tho Sok Yee
- Plaintiff/Applicant: Vetements Group AG
- Defendant/Respondent: Xiamen VETEMENTS Brand Management co,LTD.
- Legal Areas: Trade marks and trade names – Invalidation
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2023] SGIPOS 6, Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203
- Judgment Length: 12 pages, 2,681 words
Summary
This case involves an application by Vetements Group AG, a Swiss luxury fashion brand, to invalidate the trade mark registration of "VETEMENTS" held by Xiamen VETEMENTS Brand Management co,LTD., a Chinese company. Vetements Group AG alleged that the Chinese company's registration and use of the "VETEMENTS" mark was made in bad faith, as part of a scheme to deceive the industry and public into believing the Chinese company's goods were associated with the Vetements brand. The Intellectual Property Office of Singapore (IPOS) considered the evidence and legal principles on bad faith, and ultimately ruled in favor of Vetements Group AG, declaring the Chinese company's trade mark registration invalid.
What Were the Facts of This Case?
Vetements Group AG is a European luxury fashion brand founded in 2013 by famous designer Demna Gvasalia. By 2016, the Vetements brand had gained significant recognition and success in the fashion industry, being shortlisted for and winning various accolades. According to industry reports, Vetements was the third hottest brand of 2017, behind only Gucci and Balenciaga.
Xiamen VETEMENTS Brand Management co,LTD., the registered proprietor of the "VETEMENTS" trade mark in Singapore, is a Chinese company. The Applicant, Vetements Group AG, alleged that the Chinese company had initially operated in China, producing and selling counterfeit or similar goods under the "VETEMENTS" mark, falsely claiming they were part of the Applicant's collection for the Asian market.
When buyers questioned why a Chinese company was selling the Applicant's supposed collections, the Proprietor then set up another company in the UK, called Vetements Group Limited, which is the English equivalent of the Applicant's name. The Applicant alleged this was done to further deceive buyers into thinking Vetements Group Limited was the Applicant.
What Were the Key Legal Issues?
The key legal issue in this case was whether the registration of the "VETEMENTS" trade mark by the Chinese company, Xiamen VETEMENTS Brand Management co,LTD., was made in bad faith under Section 7(6) of the Singapore Trade Marks Act. Section 7(6) states that a trade mark must not be registered if the application is made in bad faith.
The Applicant, Vetements Group AG, argued that the Chinese company's use and registration of the "VETEMENTS" mark was part of a deliberate and nefarious scheme to deceive the industry and public that the Chinese company was related to or associated with the Applicant's Vetements brand. This, the Applicant claimed, amounted to bad faith under the law.
How Did the Court Analyse the Issues?
The Registrar examined the legal principles on bad faith, as set out by the Singapore Court of Appeal in the Valentino case. The key principles are:
1. Bad faith encompasses not only actual dishonesty, but also dealings that would be considered commercially unacceptable by reasonable and experienced persons in the trade.
2. The test for bad faith has both a subjective element (the applicant's knowledge) and an objective element (what ordinary persons would think).
3. Once a prima facie case of bad faith is made out by the opponent, the burden shifts to the applicant to disprove any element of bad faith.
4. An allegation of bad faith must be sufficiently supported by evidence and should not be upheld unless it is distinctly proved.
Applying these principles, the Registrar found that the Applicant had established a prima facie case of bad faith based on the evidence provided. This included the Applicant's evidence of its brand's significant recognition and success, as well as the Applicant's allegations about the Proprietor's conduct in China and the UK.
The Registrar noted that the Proprietor, by failing to file any evidence, was deemed to have admitted the facts alleged by the Applicant. The Registrar concluded that the Proprietor's actions, as described by the Applicant, would be considered commercially unacceptable by reasonable and experienced persons in the trade.
What Was the Outcome?
Based on the Applicant's evidence and the Proprietor's deemed admission of the facts, the Registrar declared the Proprietor's trade mark registration for "VETEMENTS" to be invalid under Section 7(6) of the Trade Marks Act, read with Section 23(1).
The practical effect of this decision is that the Proprietor's trade mark registration for "VETEMENTS" is no longer valid or enforceable in Singapore. This allows the Applicant, Vetements Group AG, to continue using its own "VETEMENTS" brand without interference from the Proprietor's registration.
Why Does This Case Matter?
This case is significant for several reasons:
1. It provides a clear application of the legal principles on bad faith in trade mark registrations, as established by the Singapore Court of Appeal in the Valentino case. The Registrar's decision demonstrates how these principles can be applied to invalidate a trade mark registration obtained through deceptive or commercially unacceptable conduct.
2. The case highlights the importance of brand reputation and recognition in establishing a prima facie case of bad faith. The Applicant's evidence of its Vetements brand's significant success and industry acclaim was a key factor in the Registrar's decision.
3. The case serves as a warning to potential trade mark applicants that attempting to register a mark in bad faith, such as by deceiving the public about the mark's origin or association, can lead to the invalidation of the registration. This reinforces the need for trade mark applicants to act in good faith and with commercial integrity.
4. The decision provides guidance to trade mark owners on the types of evidence and arguments that can be effective in invalidating a trade mark registration obtained through bad faith. This can be valuable for brand owners seeking to protect their intellectual property rights.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2023] SGIPOS 6 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.