Case Details
- Citation: [2006] SGCA 2
- Case Number: CA 45/2005
- Decision Date: 16 January 2006
- Court: Court of Appeal of the Republic of Singapore
- Judges: Chao Hick Tin JA; Andrew Phang Boon Leong J; Yong Pung How CJ
- Plaintiff/Applicant: Nike International Ltd
- Defendant/Respondent: Campomar SL
- Legal Area: Trade Marks and Trade Names — Revocation
- Issue Type: Appeal against High Court decision not to revoke registration for non-use under s 22(1)(a) of the Trade Marks Act
- Statutes Referenced: Trade Marks Act (Cap 332, 1999 Rev Ed)
- Key Provision: Section 22(1)(a) (non-use for five years immediately preceding application)
- Earlier Provision Considered: Section 40(1)(b) of Trade Marks Act (Cap 332, 1992 Rev Ed) (“bona fide use”)
- High Court Reference: [2005] 4 SLR 76
- Parties’ Position: Nike sought revocation for non-use; Campomar resisted by claiming genuine use within the relevant five-year period
- Core Evidential Question: Whether “overwhelmingly convincing” evidence established a single transaction use of the mark within the five-year period
- Counsel (Appellant): Harry Elias SC and Zee Yeng Yun (Harry Elias Partnership)
- Counsel (Respondent): Patrick Yap and Prithipal Singh (K L Tan and Associates)
- Judgment Length: 5 pages, 2,929 words
Summary
This Court of Appeal decision concerns the revocation of a registered trade mark on the ground of non-use. Nike International Ltd (“Nike International”), the proprietor of the NIKE brand in Singapore through its licensing arrangements, applied to revoke Campomar SL’s (“Campomar”) registration of the mark “NIKE” in class 3 for “perfumery with essential oils”. The application was brought under s 22(1)(a) of the Trade Marks Act (Cap 332, 1999 Rev Ed) on the basis that, within the five-year period immediately preceding the application, Campomar had not put the mark to “genuine use” in the course of trade in Singapore and had no proper reasons for non-use.
The procedural history is important. The Principal Assistant Registrar of Trade Marks (“PAR”) revoked the registration. The High Court reversed the PAR’s decision, effectively accepting that Campomar had shown use of the mark. On appeal, the Court of Appeal restored the PAR’s revocation order. The Court held that, where the proprietor relies on a single act or transaction of use, the evidence must be established by “overwhelmingly convincing proof”. On the facts, the Court was not satisfied that Campomar had proved genuine use in Singapore during the relevant period.
What Were the Facts of This Case?
Campomar, a Spanish company, applied to register the mark “NIKE” in class 3 in respect of “perfumery with essential oils”. The registration was granted on 30 December 1989, with effect from 2 April 1986. Nike International, a US company and wholly owned subsidiary of Nike Inc, had since 1972 marketed and retailled shoes and apparel worldwide under the “NIKE” trade mark and brand name. Nike International later sought to expand its trade mark position in Singapore for a broader range of goods, including perfumery and essential oils, by applying for its own Singapore trade mark registration.
On 21 January 2002, Nike International filed an application to revoke Campomar’s “NIKE” mark under s 22(1) of the Trade Marks Act. In its statement of grounds, Nike International asserted that Campomar had not made genuine use of the mark in Singapore for the five-year period immediately preceding the application. Nike International’s commercial objective was to clear the way to register Singapore Trade Mark No T01/17954H NIKE in class 3 for a wide list of goods, including perfumery, essential oils, cosmetics, toiletries, and related personal care products.
Campomar disputed Nike International’s non-use allegation. To substantiate its claim, Campomar’s principal manager, Mr Antonio Ruiz Corrales (“Corrales”), filed three statutory declarations. First, Corrales exhibited sales invoices issued during 1996 to 2001 to show use of the mark. Second, Corrales explained that abbreviations in an invoice dated 12 July 2001 (later clarified as 27 July 2001) corresponded to “NIKE MAN”, “NIKE WOMAN”, and “NIKE”. Third, Corrales exhibited a bill of lading showing that products bearing the NIKE mark were shipped by De Ruy Perfumes SA to a Singapore company, Bhojwani’s Pte Ltd (“Bhojwani’s”), and supported this with a letter from a freight forwarder dated 11 December 2003.
In response, Nike International filed four statutory declarations to support its non-use case. A private investigator, Mr Wilfred Anthony (“Anthony”), conducted enquiries in November 2001 at ten major shopping centres in Singapore and found no NIKE perfumes sold there. Anthony also made discreet inquiries at Bhojwani’s and was told by an employee, “Kalai”, that the company sold perfumes only in Indonesia and did not deal in NIKE perfumes. Nike International also relied on a declaration by its finance director, Mr Hughes, referencing the NIKE brand’s reputation and a market survey by AC Nielsen in August 2001 indicating that at least 55% of persons polled associated NIKE perfumes with Nike International. Further, Nike International adduced evidence that the last known distributor, Galaxy Enterprises Pte Ltd, had ceased selling NIKE perfumery products by 5 November 1996. Finally, Nike International addressed the meaning of the shipping term “EXW” in relation to the invoice of 27 July 2001, explaining that it indicated the buyer would collect the goods at the seller’s premises.
What Were the Key Legal Issues?
The central legal issue was whether Campomar had put its registered trade mark to “genuine use” in the course of trade in Singapore during the five-year period immediately preceding the revocation application. Under s 22(1)(a) of the Trade Marks Act, revocation is available if the mark has not been put to genuine use in Singapore by the proprietor (or with its consent) in relation to the goods for which it is registered, and there are no proper reasons for non-use.
A second, closely related issue concerned the standard of proof where the proprietor’s evidence of use is limited. The Court of Appeal had to decide whether the evidence adduced by Campomar—particularly evidence suggesting a shipment and possible sale connected to a single transaction—was sufficient to meet the evidential threshold. The Court emphasised that one single act of use may, in principle, satisfy the statutory test, but only if it is established by “overwhelmingly convincing proof”.
How Did the Court Analyse the Issues?
The Court began by setting out the statutory framework. Section 22(1)(a) requires proof of non-use within the relevant five-year period following completion of registration, unless the proprietor can show genuine use in Singapore in the course of trade and proper reasons for any non-use. The Court also addressed the interpretive continuity between the earlier “bona fide use” language and the current “genuine use” language. It held that there is no real or practical difference between “bona fide” and “genuine”, and therefore earlier authorities on “bona fide use” remain germane.
In doing so, the Court relied on its earlier decision in Swanfu Trading Pte Ltd v Beyer Electrical Enterprises Pte Ltd [1994] 1 SLR 625, which explained that “bona fide use” is genuine use as contrasted with fictitious, pretended, or colourable use. The Court reiterated that the more substantially a mark is used commercially, the easier it is to infer bona fide/genuine use. However, the Court also recognised that substantial use is not required; even limited use may suffice if it is genuine.
Crucially, the Court then addressed the evidential standard for single-transaction reliance. It adopted the reasoning from Wilberforce J in “NODOZ” Trade Mark [1962] RPC 1 at 7, which concerned an isolated importation and the question whether goods dispatched abroad were received in England. Wilberforce J indicated that while a single act of user can be sufficient in a suitable case, the fewer the acts relied on, the more solidly they must be established. In such circumstances, the evidence must be “overwhelmingly convincing”. The Court of Appeal treated this as a guiding principle for revocation cases where the proprietor’s proof is sparse and hinges on a single transaction.
Applying these principles, the Court examined the evidence Campomar relied upon. The High Court had accepted that the invoice evidence related to perfume products and that the NIKE mark was used on the products, even if sometimes accompanied by additional descriptions identifying gender groups. The High Court also accepted Campomar’s explanation that De Ruy Perfumes SA and Campomar were associated companies, and that use by one entity could be treated as use by the other. Further, the High Court accepted that Bhojwani’s, as a former distributor, did not wish to be involved in litigation and therefore did not provide affidavit evidence.
However, the Court of Appeal was not persuaded that the evidence met the required standard. The Court focused on the gap between shipment documentation and proof of genuine use in Singapore. The Court noted that the private investigator’s evidence suggested that NIKE perfumes were not sold at major shopping centres in Singapore in November 2001, and that inquiries at Bhojwani’s indicated no dealing in NIKE perfumes. While the Court did not treat this evidence as determinative by itself, it formed part of the overall assessment of whether Campomar had shown genuine use.
More importantly, the Court scrutinised the reliability and completeness of Campomar’s proof. Campomar’s evidence largely depended on invoices and a bill of lading showing shipment to Singapore. Yet the Court considered that the evidence did not establish, with the required certainty, that the mark was actually put to genuine use in Singapore during the relevant five-year period. The Court highlighted the absence of corroborative evidence from the Singapore distributor, Bhojwani’s, and the uncertainty surrounding the employee “Kalai” who made statements to the private investigator. The Court also considered the timing and context: the shipment was said to have taken place around August 2001, while the investigator’s conversation occurred in April 2002. The Court observed that it was possible the employee’s statements reflected a later period rather than the earlier shipment period, but it also found the overall evidential picture insufficient to satisfy the “overwhelmingly convincing proof” threshold.
In short, the Court of Appeal treated the case as one where the proprietor’s evidence of use was essentially confined to a single transaction or isolated set of documents. In such a scenario, the law required more than internal records and shipping-related documents; it required robust proof that the mark was genuinely used in Singapore in the course of trade. The Court concluded that Campomar had not discharged that burden.
What Was the Outcome?
The Court of Appeal allowed Nike International’s appeal and upheld the PAR’s decision to revoke Campomar’s registration of the “NIKE” mark. Practically, this meant that Campomar lost its registered rights in Singapore for the relevant class 3 goods, clearing the way for Nike International’s intended trade mark strategy.
The Court’s decision also restored the revocation as the operative legal position, reversing the High Court’s approach that had accepted the evidence as sufficient. The Court’s reasoning emphasised the strict evidential standard applicable when a proprietor relies on limited, single-transaction proof to defeat a non-use revocation application.
Why Does This Case Matter?
Nike International Ltd v Campomar SL [2006] SGCA 2 is significant for trade mark practitioners because it clarifies the evidential threshold for proving “genuine use” under s 22(1)(a) of the Trade Marks Act, especially where the proprietor’s evidence is limited to one transaction. The Court’s adoption of the “overwhelmingly convincing proof” standard underscores that revocation proceedings are not merely documentary exercises; they require credible, sufficiently certain evidence that the mark was actually used in Singapore in the course of trade during the relevant period.
For brand owners and trade mark registrants, the case highlights the importance of maintaining and producing comprehensive evidence of use. Shipping documents, invoices, and internal explanations may be insufficient if they do not convincingly demonstrate the commercial use of the mark in Singapore. Where the evidence depends on a distributor or intermediary, the proprietor should consider obtaining direct statements or affidavits from those parties, or otherwise producing corroborative evidence such as sales records, marketing materials, or proof of retail availability during the relevant period.
For applicants seeking revocation, the case provides a framework for challenging the adequacy of a proprietor’s proof. Evidence of absence from retail outlets, combined with the proprietor’s failure to produce corroboration from Singapore channels, can support an inference that the mark was not genuinely used. The decision therefore informs both litigation strategy and settlement considerations in trade mark disputes involving non-use.
Legislation Referenced
- Trade Marks Act (Cap 332, 1999 Rev Ed), s 22(1)(a)
- Trade Marks Act (Cap 332, 1992 Rev Ed), s 40(1)(b) (historical reference: “bona fide use”)
Cases Cited
- Swanfu Trading Pte Ltd v Beyer Electrical Enterprises Pte Ltd [1994] 1 SLR 625
- “NODOZ” Trade Mark [1962] RPC 1
- Nike International Ltd v Campomar SL [2005] 4 SLR 76 (High Court decision referred to in the appeal background)
Source Documents
This article analyses [2006] SGCA 2 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.