A previously unreported decision of the Principal Assistant Registrar (PAR) from October 2015 has provided guidance to brand owners on two points. First, it assists in providing the threshold of what amounts to “honest concurrent use” in Singapore. Secondly, it establishes that once the applicant manages to prove honest concurrent use, the Registrar shall not refuse the application because of the earlier trademark.
Sunrider Corporation dba Sunrider International applied to register the mark LIFESTREAM, (subject mark), in Class 5. The examiner at the Intellectual Property Office of Singapore objected to the application on the basis of Section 8(2)(b) of the Trade Marks Act on the grounds that the subject mark was confusingly similar to an earlier trademark also registered in Class 5, Lifestream Group & Device (cited mark).
The marks are reproduced here:
Sunrider requested a hearing and relied upon Section 9(1) of the Act which provides, inter alia, that a Section 8(2) objection may be overcome by proving “honest concurrent use” of the applicant’s mark. Case Ref: C0101T1004768C.
The Principal Assistant Registrar (PAR) accepted Sunrider’s arguments and held that once Sunrider has demonstrated honest concurrent use, the application should be accepted. A policy balance has to be struck between protecting the public from deception on the origin of the goods or services at issue and the rights of honest traders. The owners of the cited mark can always raise their objections at the opposition stage.
On the issue of honest use, the PAR stated that in determining this, knowledge of the existence of the earlier mark was useful. In this regard, the evidence showed that Sunrider had used its mark even before the proprietors of the cited mark had been incorporated. Therefore, the usage was clearly honest and in good faith.
On the duration of concurrent usage, the PAR observed that while Section 9(1) did not stipulate any minimum length of concurrent usage, she agreed with Professor Susanna Leong (author of Intellectual Property Law of Singapore, Academy Publishing, 2013) that a period of five years was reasonable. In this case, the subject mark had been used for five years prior to the application date of the cited mark and nine years prior to the application date of the subject mark.
The PAR found that the sales revenue derived from the use of the subject mark (which amounted to USD492,900 for the years 2001 to 2006) was sufficient and that there was no higher threshold required under the law.
This article was first published in INTA Bulletin on August 15, 2016. For further information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx.