No love lost over Valentino: Court of Appeal rules on battle of fashion trademarks
Contributed by Samuel Seow Law Corporation
In Valentino Globe BV v Pacific Rim Industries Inc(1) the luxury fashion brand Valentino Globe BV failed in its bid to establish that its marks were well known in Singapore and also failed to prevent the registration of the mark EMILIO VALENTINO plus device by Pacific Rim Industries Inc.
In 2003 Application T03/20621F in Class 18 was filed on behalf of Pacific Rim. The mark was referred to as the 'EMILIO VALENTINO and "V" device mark'. Valentino Globe opposed the registration of the application.
Valentino Globe owns an array of Valentino trademarks of various designs, which were referred to in this case as the 'Valentino marks'.
Valentino Globe's opposition was dismissed on all grounds. The registrar of trademarks found the application mark to be inherently distinctive and capable of distinguishing Pacific Rim's goods from those of Valentino Globe. The registrar ruled in favour of Pacific Rim, and Valentino Globe appealed the decision to the High Court, where its case was dismissed in its entirety. The High Court judge upheld the registrar's ruling and accepted Pacific Rim's arguments.
Appeal to Court of Appeal
Valentino Globe pursued its objection to the application mark, filing Civil Appeal 46/2009 against the High Court ruling. In doing so, it relied on various provisions, including Sections 7(6) and 8(2) of the Trademarks Act 1999.
Pursuant to Section 8(2), Valentino Globe argued that the registration of the application mark should be disallowed because there was a likelihood of confusion on the part of the public, as the application mark was similar to the Valentino marks and was to be registered for similar or identical goods.
Pursuant to Section 7(6), Valentino Globe argued that the registration of the application mark should be disallowed on the grounds of Pacific Rim's bad faith.
Section 8(2) of the act provides that a trademark may not be registered if: (i) it is identical to an earlier trademark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or (ii) it is similar to an earlier trademark and is to be registered for goods or services identical or similar to those for which the earlier mark is protected. In either case there must be a likelihood of confusion on the part of the public.
In respect of the issue of confusingly similar marks, although only two of the Valentino marks could be said to be similar to the application mark, Section 8(2)(b) was deemed to apply.
The application mark was to be registered for Class 18 of the Nice Classification in respect of:
"leather and imitation leather, and goods made of these materials and not included in other classes; animal skins; hides; trunks and travelling bags; umbrellas; parasols and walking sticks; whips, harnesses and saddles."
Court of Appeal decision
The court examined the three marks. It found that each mark consisted of a combination of text and design. The only element that was identical in all three marks was the word 'Valentino', but the font of the text was different in each case. The court held that the most that could be said of all three designs was that they were all based on the letter 'V'. To this extremely limited extent, there was a similarity between the application mark and the two appeal marks. The court considered that it could not reasonably hold that the application mark was similar to the two appeal marks.
The court noted that the appeal marks were registered in respect of Class 25 of the Nice Classification. It therefore found that the application mark was not registered in respect of identical or similar goods.
The court considered that the registration of the application mark would be unlikely to cause confusion on the part of the public. It noted that goods sold under Valentino Globe's brand were upmarket goods. The prospective purchasers of Valentino Globe's goods would be likely to come from a reasonably discerning section of the public and would not make foolish or hasty purchasing decisions. Valentino Globe's objection to the registration of the application mark on the basis of Section 8(2) therefore failed.
Section 7(6) of the act states: "A trademark shall not be registered if or to the extent that the application is made in bad faith".
The court referred to the leading case of Gromax Plasticulture Ltd v Do & Low Nonwovens Ltd,(2) in which it was held that:
"Plainly, [bad faith] includes dishonesty and… also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area [of trade] being examined."
The court also considered local case law. It had previously been held that once bad faith is established, the application for registration of a mark must be refused even if the mark would not cause confusion.(3) The court considered that although Valentino Globe was opposing the registration of the application mark, there was no difference in the burden of proving bad faith in the two scenarios. Therefore, the onus was on Valentino Globe to substantiate its grounds for opposing registration.
Valentino Globe strenuously argued that the High Court judge had failed to apply the proper test to determine the question of bad faith. Consequently, he had failed to take into account or failed to give proper weight to three main issues, of which two were addressed by the Court of Appeal. The court considered the third contention - that Pacific Rim had hijacked the Valentino marks because the application mark contained the word 'valentino' - to be without merit.
Valentino Globe contended that (i) Pacific Rim had copied the application mark from the trademark of Mr Emilio Valentino, and (ii) the proprietorship of the application mark in Singapore did not reside with Pacific Rim.
The court considered that Valentino Globe had to show not only that Pacific Rim's conduct in applying for the said registration fell short of normally accepted standards of commercial behaviour, but also that Pacific Rim knew of facts which would have been sufficient to make an ordinary person realize that such actions would be regarded as a breach of those standards.
Significantly, no evidence was adduced that, in deriving the application mark, Pacific Rim had copied the Valentino marks. It was also common ground that there was no connection between Emilio Valentino and Pacific Rim.
The EV mark incorporated the name 'Emilio Valentino', but this did not in itself suggest that Pacific Rim had copied the application mark from the EV mark. Pacific Rim had claimed that its president had created the application mark independently. However, the High Court judge had noted that counsel for Valentino Globe had not called on Pacific Rim's president to testify to the originality of her design.
The court stated that Valentino Globe had failed to make even a prima facie case of bad faith and had failed to discharge this burden of proof. For Pacific Rim, the burden of disproving an element of bad faith did not arise. There was nothing for it to rebut and no adverse inference was to be drawn against it.
The court found that Valentino Globe had no valid reason to object to the registration of the application mark. It considered that Valentino Globe had sought to acquire a monopoly on the use of the common name 'Valentino' to which it was not entitled. The appeal was dismissed with costs and the usual consequential orders.
For further information on this topic please contact Samuel Seow at Samuel Seow Law Corporation by telephone (+32 2 426 1414), fax (+32 2 426 2030) or email (email@example.com).
(1)  SGCA 14.
(2)  RPC 367.
(3) Rothmans of Pall Mall Ltd v Maycolson International Ltd  2 SLR(R) 551.