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Singapore – Has Bad Faith Been Established?

31 May, 2012

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

 

In the Matter of a Trade Mark Application by Matsuda & Co. and Opposition thereto by Valentino SPA [2012] SGIPOS 2

 

Matsuda & Co. (the “Applicant”) applied for the registration of the mark “Valentino Rudy” and Device (the “Application Mark”) for “cosmetics” in Class 3. The application was opposed by Valentino SPA (the “Opponent’), on the basis that Application Mark was applied for in bad faith contrary to Section 8(2)(b) of the Trade Marks Act, among other grounds.

 

To demonstrate thata prima facie case of bad faith had been made out against the Applicant, the Opponent submitted that:

 

  • a. there was no bona fide intention to use the Application Mark in Singapore;
  • b. there was no credible explanation as to the derivation of the Application Mark, and that in all likelihood the Application Mark was copied from the Opponent’s Valentino Marks; and
  • c. there is no credible evidence submitted that the consent of the person whose name the Applicant was purportedly using had consented to the registration and use of the Application Mark

 

The Principal Assistant Registrar of Trade Marks (the “PAR”), Ms Sandy Widjaja, was however not persuaded. In coming to her decision, the PAR provided some practical guidance in determining whether a case for bad faith has been made out:

1) Absence of evidence of use per se cannot be regarded as an indication that there was no bona fide intention to use the Application Mark

The Applicant affirmed in its Statutory Declaration that the Application Mark had been used in Singapore in respect of the goods applied for, but that the use of the same was for a short while before sales was suspended. No corroborative evidence was tendered by the Applicant to support its statement that the Application

 

2) Absence of explanation for derivation of mark does not automatically mean copying has been made out

 

The Opponent further argued that the Application Mark and the Opponent’s Valentino Marks were strikingly similar and could have only arose because of the Applicant’s copying of the essential elements of the Opponent’s Valentino Marks. The PAR held that, unlike a situation where the mark in question was an invented word and the failure to furnish the court with a credible explanation of its derivation could lead to the conclusion that it was copied, the current case involved a mark comprising of name/surname and not an invented word. Further, given that the name/surname was not an unusual one, the PAR took the view that the lack of absence of an explanation for its derivation did not, by itself, mean that a case of copying had been made out for the purposes of establishing bad faith.

 

In her concluding comments, the PAR stressed that an allegation of bad faith was “a serious one and should not be upheld unless it is distinctly proved and this was rarely be possible by a process of inference”. As such, the question which should be answered must always be whether the Applicant, in applying for the registration of the Application Mark “acted dishonestly and in a manner that falls short of the acceptable commercial behaviour as judged by reasonable and experienced persons adopting proper standards”. In the PAR’s view, the Applicant did not fall short of these standards.

 

 

For further information, please contact:

 

Terri Koh, ATMD Bird & Bird

terri.Koh@twobirds.com

 

 

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