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Singapore – Revocation Of A Trade Mark On Grounds Of Non-Use.

31 August, 2012

 

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

 

In the Matter of a Trade Mark Registration by Power Root (M) Sdn. Bhd. and Application for Revocation thereof by The Sunrider Corporation dba Sunrider International [2012] SGIPOS 4  

 
Power Root (M) Sdn. Bhd. (the “Proprietors”) were the registered proprietors of the mark “Pearl Kacip Fatimah” (stylised) in Singapore (the “Trade Mark”). The Trade Mark was registered in Class 32 in relation to a variety of drink products including fruit, vegetable, and milk-based beverages. 
 
The Sunrider Corporation dba Sunrider International (the “Applicants”) applied for revocation of the Trade Mark under Section 22(1)(b) of the Singapore Trade Marks Act (Cap. 332) which provides that the registration of a trade mark may be revoked if genuine use of the mark in the course of trade in Singapore has been suspended for an uninterrupted period of five (5) years, unless there are “proper reasons for non-use”.
 
The Applicants submitted that there was no evidence of use of the Trade Mark on the Proprietors’ website. Further, the Applicants had commissioned a third party to conduct an investigation on the use or non-use of the Trade Mark, and the investigator had “arrived at a ‘true and fair’ conclusion that drink products bearing the said mark [were] not available in Singapore and it [was] not being used in Singapore for a period of five or more years as of April 2011.”
 
The Proprietors did not dispute the Applicant’s claim that there was nonuse of the Trade Mark in the course of trade in Singapore and they did not file any evidence to show any use which had been made of the Trade Mark during the relevant time period.Instead, the Proprietor’s asserted that there were proper reasons for non-use of the Trade Mark: There was an import ban which prevented goods bearing the Trade Mark from being imported into Singapore.
 
The Proprietors explained that the Agri-Food and Veterinary Authority of Singapore (“AVA”) had imposed an import ban on grounds that the drink products sold under the Trade Mark contained non-permitted substances and that as at the date of the hearing — about eight years since the ban was imposed — the Proprietors were still in the process of appealing against the ban.
 
Noting that the Trade Mark was registered in respect of a wide specification of goods, the Principal Assistant Registrar (the “PAR”) was unable to conclude on a balance of probabilities that the import ban imposed by the AVA covered all the goods in the specification, especially given the lack of evidence on the contents of the import ban. Further, as the Proprietors had failed to provide evidence in respect of the import ban and of their efforts to appeal against the ban, the PAR found that the Proprietors had failed to discharge their evidential burden to establish proper reasons for non-use.
 
Accordingly, the Applicants succeeded under Section 22(1)((b) and the Trade Mark was revoked.

 

 
For further information, please contact:
 
Angelique Chan, ATMD Bird & Bird
angelique.chan@twobirds.com

 

 

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