mardi, novembre 23, 2010

Singapore: Trademarks: no bona fide intention and bad faith

Trademarks: no bona fide intention and bad faith

Contributed by Samuel Seow Law Corporation

 

Facts
Decision
Comment


Facts

In PT Swakarya Indah Busana v Dhan International Exim Pte Ltd ([2010] 2 SLR 109), the plaintiff sought to invalidate trademarks registered by the defendant comprised of the words 'Emperor Martin' (in equal size fonts) and a star device. The plaintiff sought to invalidate the defendant's mark on the grounds that it was registered in bad faith and/or tainted with fraud, arguing that the defendant never intended to use the mark in its registered form when it was filed under the Trademark Act.

PT Swakarya Indah Busana is a manufacturer of garments which carry the marks 'Martin' and 'Martin Pacemaker', with the stylised letters 'MR' enclosed in a device topped with a crown.

To suggest that a trademark had been applied for in bad faith is a serious allegation, and one that should not be made lightly. A high standard of proof is required, and as a general rule bad faith must be distinctively proved and not be inferred based on the facts which the plaintiff has successfully proved.

Decision

However, there are always exceptions to every general rule and this was such a case. The High Court held that there was a strong inference of bad faith on the defendant's part that could be made out based on the facts. In this regard, the defendant's mark was found by the High Court to be registered in bad faith and in breach of Section 7(6) and/or Section 23(4) of the Trademarks Act.

On the facts of this case, there was clear evidence that the defendant copied the plaintiff's mark and had every intention to do so. The registered mark was not used at all times by the defendant for its garments (for which the defendant claimed). In fact, the court discovered that the defendant's tailored mark had the word 'emperor' conspicuously smaller than the word 'Martin' (the font size being less than half). Furthermore, it was also obvious that the word 'emperor' appeared above the word 'Martin' so that there was no question of pronouncing the brand as 'Emperor Martin'. The defendant's action was seen as a deliberate act to copy the plaintiff's marks by placing the emphasis on the word 'Martin' rather than the word 'emperor'.

The High Court held that there was bad-faith intention on the defendant's part. The defendant had deliberately made false representation and had not used the registered mark in its registered form, and this connoted dishonesty and dealings which fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced business people. The facts of the case also revealed that there was an obvious and conscious effort on the part of the defendant to copy the plaintiff's mark and a deliberate preference not to use the registered mark.

Comment

The High Court concluded that similarity of marks is irrelevant when a mark is registered in bad faith. The relevant consideration is that, at the time of the trademark application, the applicant made a false representation under Section 5(2)(e)(ii), with no good-faith intention to use the mark in the form that was applied to be registered; in such instances, the court is ready to infer bad faith on the part of the applicant.

For further information on this topic please contact Trina Ha or Francois Vieillescazes at Samuel Seow Law Corporation by telephone (+65 6887 3393), fax (+65 6887 3303) or email (trinaha@sslawcorp.com or francois@sslawcorp.com).