This case concerns the revocation of Trade Mark No. T9812571E (the Sherlock mark) by Bigfoot Ventures Pte. Ltd. on the grounds of non-use. For easy reference, the salient details of the Sherlock mark are as follows: -
“Sherlock” was first used as a software application in connection with version 8.5 of the Macintosh computer operating system (launched in Singapore on 17 October 1998), Mac OS. “Sherlock” was an integrated search tool which served as an internet search engine as well as a finder of files within the Mac OS system. On 18 December 1998, Apple Inc. obtained registration of the Sherlock mark in Singapore. Subsequently, newer versions of Mac OS were released. The “Sherlock” search tool was also updated alongside these newer versions of Mac OS.
Finally, “Sherlock” was replaced by “Spotlight” and “Dashboard” in Mac OS X 10.4 Tiger (although it was still included in the default installation). The “Sherlock” search tool was then removed altogether from Mac OS with the release of Mac OS X 10.5 Leopard in 2007. “Sherlock” is now incompatible with versions after Mac OS X 10.5 Leopard.
Grounds for Revocation
Under Sections 22(1)(a) and 22(1)(b) of the Trade Marks Act, a trade mark may be revoked on any of the following grounds: -
- That within 5 years following the date of completion of the registration procedure, it has not been put to genuine use in the course of trade in Singapore; or
As the registration procedure had concluded on 5 March 2001, the period of use in issue is 6 March 2001 to 5 March 2006.
- That such use has been suspended for an uninterrupted period of 5 years and there are no proper reasons for non-use.
As the application for revocation was filed on 12 March 2015, the period of use in issue is 12 March 2010 – 11 March 2015.
The Registrar was of the view that “SHERLOCK” was used in Singapore prior to the first 5-year period commencing on 17 October 1998 and continued throughout the first 5-year period. In this regard, the Registrar found that Mac OS users who had purchased Mac OS 8.5 in 1998 would over the years have purchased or upgraded to later versions of Mac OS. Therefore, Apple would also have provided post-sale product support for Sherlock vis a vis upgrades to Mac OS users. This points towards the conclusion that the “SHERLOCK” mark was used in Singapore within the first 5-year period.
On the other hand, the Registrar found that the situation was different after 2007. “Sherlock” was incompatible with Max OS X 10.6 Snow Leopard and later versions of Mac OS. Apple was then required to submit evidence to satisfy the Registrar that the “SHERLOCK” trade mark was substantially used during this time period.
Prior to the second 5-year period, Apple had also posted another Update Combo which contained a reference to “Sherlock”: Mac OS X Update Combo 10.4.11 on 14 November 2007. Based on this, Apple tried to argue that there were downloads of the online updates by Singapore users in the second 5-year period. However, the Registrar found that although there may have been some users from Singapore who had downloaded it in or around that time (when it was posted on 14 November 2007), that was some time back and usually a user would only download a software update once. With the effluxion of time and obsolescence of “SHERLOCK”, the Registrar found that there was no genuine use in Singapore within the second 5-year period.
The registration for “SHERLOCK” was therefore revoked as of 12 March 2015.
An interested takeaway from this case would be that post-sale support in the form of updates of software could in theory act as evidence of genuine use in Singapore. However, the essence of each case is different and this would ultimately be dependent on the unique facts of each case.