Registered Trade Mark - Use It Or Lose It!

Unlike jurisdictions like the United States, the Singapore trade marks regime does not require evidence of use to be filed before a trade mark registration is granted. However, owners of Singapore trade mark registrations must be conscious of the requirement that a registered trade mark must be put to genuine use within five years from the date that the registration procedure is completed. Failure to establish use within this period of time, or suspension of the use of the registered trade mark for an uninterrupted period of five years, would render the registered trade mark vulnerable to revocation proceedings based on nonuse.

Burden Of Proof

A revocation action based on non-use can be filed by any person and the burden would be on the trade mark proprietor to prove that he has in fact used the trade mark.

In the recent case of Nike International Ltd v Campomar SL [2006] 1 SLR 919, it was held that the essential standard of proof required to defeat a revocation action was to show genuine use of the trade mark during the relevant five year period. A single instance of use would satisfy the test, provided that overwhelmingly convincing proof of the act was adduced.

Genuine Use

Although substantial use of a trade mark is not required, it is established law that token use of a trade mark which is engineered merely to preserve the validity of the trade mark or use which is internal to the trade mark proprietor would not constitute "genuine use". A one-time advertisement by a trade mark proprietor which is done with the sole intention of trying to meet the use requirement would therefore not suffice. Where the use of a trade mark is limited, doubts may arise as to whether the use of the trade mark is genuine or whether it is merely token.

It is clear from the case of Weir Warman Ltd v Research & Development Pty Ltd [2007] SGHC 59 ("Weir Warman's case") that the Singapore courts are inclined to follow the English position that genuine use of a trade mark can be established even without evidence of actual sales of goods branded with the trade mark. The use of the trade mark also does not need to be directed at the ultimate consumers of the goods. If the trade mark is used to promote the goods to a wholesaler seeking to supply the goods in Singapore, such use would suffice.

The question whether use on the internet would be sufficient use for the purposes of showing genuine use in Singapore was also considered in Weir Warman's case. Again, it was opined that Singapore ought to follow the position of the English courts. This means that for use to be established in Singapore, for the purposes of defeating a revocation action, there must be some additional active step by the trade mark proprietor in Singapore that goes beyond simply placing the goods branded by the trade mark on its website and waiting in the hope that someone from Singapore will enquire about the goods.

Proper Reasons For Non-Use

Once non-use of a registered trade mark for the requisite period is established, the court would have to grant the application for the revocation of the trade mark. The only exception would be where the registered proprietor is able to prove that he has "proper reasons for non-use" of the trade mark. What would constitute a "proper reason"? The Singapore court, in the case of Nation Fittings (M) Sdn Bhd v Oystertec Plc & Another Suit [2006] 1 SLR 712, held that "obstacles to the use of the mark which had arisen independently" of the proprietor's will or from "abnormal situations in the market or industry" would be required.

Conclusion

While a trade mark registration could potentially afford a proprietor a monopoly of a trade mark for an unlimited period of time, such statutory protection is not intended to enable a proprietor to simply "squat" on the register or "hijack" the mark of a competitor. Along with such monopoly comes the obligation to put the trade mark to genuine use, failing which the owner of a registered trade mark would run the risk of losing the trade mark registration which he or she would have spent considerable time, cost and effort securing.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Ms Catherine Lee

Rodyk & Davidson

80 Raffles Place 

#33-00 UOB Plaza 1

Singapore

SINGAPORE

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