29 April, 2012
Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property
In P.T. Swakarya Indah Busana v Haniffa Pte Ltd and another [2012] SGHC 69 the Plaintiff sought to invalidate the Defendants’ 15 “Martin” formative trade marks (“the Challenged marks”) on grounds that the marks were registered in bad faith (section 7(6) read with section 23(1) of the Trade Marks Act (the “Act”), and that there was fraud in the registrations or the registrations were obtained by misrepresentation (section 23(4) of the Act).
The Plaintiff succeeded in its claim under section 7(6) read with section 23(1) but failed in its claim under section 23(4) of the Act.
The Plaintiff, PT Swakarya Indah Busana, is an Indonesian company which manufactures shirts bearingthe marks (“the Martin mark"), (“the Martin Pacemaker mark”) and “Martin Gold” (“the Martin Gold mark”). The Plaintiff registered these marks in Singapore in respect of “ready made clothing: men, women and kids’ underwear” in June 2006. It owns several other registrations for other “Martin” formative marks.
The first and second Defendants are related companies. The first Defendant, Haniffa Pte Ltd, is a multinational business which retails a variety of products including readymade garments. The Challenged Marks, including the “St Martin”, “Martin Classic”, “Martin Original”, “Martin Executive” and “Martin Gold” were registered in Singapore between August 2002 and January 2010.
The Plaintiff gave evidence of extensive sales of its shirts bearing the Martin Pacemaker mark and the Martin mark. It also adduced evidence showing that the shirts had been sold in Singapore since 1982 and 2004 respectively. The Plaintiff was also able to produce invoices dating as far back as 1982 as evidence of its use of the Martin Pacemaker mark on its shirts, and gave evidence that these shirts were well-known to its target customers as “Martin” shirts.
The Defendants contended that they had undertaken market research and discovered that a variety of shirts bearing marks with the word “Martin” was sold by different traders along Serangoon Road. They later conducted a search of the Registry of Trade Marks across all classes for the word “Martin” to ensure that it could use it on its goods. Whilst the search revealed that at least 5 different traders had registered composite “Martin” marks in Classes 9, 25 and 37, it did not reveal any registration or application for the word mark “Martin” alone. Based on the results of the search, the Defendants concluded that the word “Martin” was a nonexclusive word which was available for use and registration. The Defendants also claimed that the mark “ST MARTIN” was chosen because it was inspired by the neighbouring regions of St Germain and St Martin in Paris. The Defendants also asserted that the mark “Martin Classic” was chosen because of the type of fabric used in manufacturing that line of shirts had been around for more than 20 years.
However, the High Court rejected the Defendants’ arguments.
First, the Court found that the first Defendant had bought shirts bearing the Martin Pacemaker mark, Martin mark and Martin Gold mark from the Plaintiff between 1995 and 2009 for the purchase of 95 000 of these shirts for a sum of $623 000. The Plaintiff was able to adduce invoices for these purchases.
Secondly, the High Court found that the striking feature of the Martin Pacemaker mark was the word “Martin”. This supported the Plaintiff’s evidence that its Martin Pacemaker shirts were well-known as “Martin” shirts.
The High Court went on to hold that the first Defendant would have been aware of the fact that the Plaintiff’s Martin Pacemaker shirts were wellknown in the market as “Martin” shirts since it was in the same line of business and was itself selling the
Martin Pacemaker shirts.
It was also held that since the Defendants had discovered that at least 5 different “Martin” formative marks had been registered in Singapore, it would not make sense for the Defendants to invest in developing a brand that would be confused with or diluted by other existing brands, especially since this was the Defendants’ first attempt at developing a brand.
In assessing the Defendants’ intentions in registering the Challenged Marks, the High Court took into account the fact that after the Defendants had bought shirts from the Plaintiff bearing the Plaintiff’s Martin Gold mark between 2001 and 2004, the Defendants sought registration of a mark consisting of the same words in 2009.
It also took into account the fact that the Defendants’ shirt bearing the “Martin Classic” mark emphasised the word “Martin” while hiding the word “Classic”. Based on this, the Court found that the Defendants were relying on the word “Martin” alone rather than on the mark “Martin Classic” as a whole.
Accordingly, the Court held that the Defendants had registered the Challenged Marks in order to take advantage of the fame of the Plaintiff’s “Martin” name, and in so doing, the Defendants had fallen short of the normally accepted standards of commercial behaviour. The invalidation on the ground of bad faith was granted.
For further information, please contact:
Adele Lim, ATMD Bird & Bird
