In a decision dated April 10, 2019 (CTBAT International Co. Ltd v. N.V. Sumatra Tobacco Trading Company, [2019] SGIPOS 8), CTBAT International Co. Ltd (opponent) failed in its opposition against the registration of trademark application no. 4020151934T (see image below) by N.V. Sumatra Tobacco Trading Company (applicant).

                                                                  

Background

The opponent filed an application on October 23, 2015, to revoke , trademark no. T0721237G,  on the grounds of non-use. The applicant did not contest the application. Nine days after the revocation application, the applicant filed for the registration of the application mark (as a series of two marks), forming the basis of the present decision.

 

Legal Arguments

The opponent’s sole ground of opposition was bad faith under Trade Marks Act Section 7(6). Cap 332, 2005 Rev. Ed. (TMA). The test for establishing the presence of bad faith was propounded by the Court of Appeal in Valentino Globe BV v. Pacific Rim Industries Inc., [2010] 2 SLR 1203, as one that has both subjective and objective elements, and is context dependent.

The opponent pleaded that the applicant had no bona fide intention to actually use the application mark, having no business activities in Singapore. Even though the earlier TRI-HAPPINESS mark had been registered since 2007, it was not used. Furthermore, the closeness between the dates of the revocation action and the filing of the application mark suggested that it was filed as a counter action.

Principal Assistant Registrar Tan Mei Lin (hearing officer) was not convinced that a revocation based on non-use was sufficient to deem a subsequent application as being made in bad faith. Evidence provided by the applicant showed it had been planning to begin operations in Singapore as early as 2012. However, the applicant was undecided whether launching its products in Singapore would make good business sense.

The opponent also claimed that the applicant had a track record of applying to register the trademarks of other tobacco proprietors, and provided a list of such applications. The hearing officer could not accept this argument because there was no actual evidence showing that the “real owners” of said marks objected to the applications. Furthermore, even if evidence was adduced, it does not automatically deem the present application was also made in bad faith.

The opponent also contended that the applicant had a “duty to investigate into the bona fides of a mark before seeking registration.” The hearing officer disagreed, stating that the application should not be deemed to be made in bad faith just because there was a failure to conduct such searches, as no duty is imposed. Furthermore, the application mark was TRI HAPPINESS, while the opponent’s marks were SHUANGXI and DOUBLE HAPPINESS.

The allegation that the applicant had knowledge of similar marks belonging to a third party was also rejected, as such knowledge on its own is insufficient to constitute bad faith.

In conclusion, the opposition failed, and the applicant’s mark proceeded to registration.

This article first appeared in the INTA Bulletin Vol 74, No. 11. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx