Facts

The present case concerns an appeal by Courts (Singapore) Pte Ltd (the "Applicant") against the decision of IP Adjudicator David Llewelyn in Courts (Singapore) Pte Ltd v Big Box Corporation Pte Ltd [2017] SGIPOS 5 (the "Decision Below"), refusing to invalidate the "BIG BOX" word mark in Class 35 (the "Subject Mark") owned by Big Box Corporation Pte Ltd (the "Proprietor"). The Applicant's appeal under section 23 of the TMA was based on the same grounds as the Decision Below: subsections 7(1)(b) (devoid of distinctiveness); 7(1)(c) (descriptive sign/indication); and (7(1)(d) (customary or generic sign/indication) of the TMA.

Decision

The appeal was dismissed on all three grounds. Justice George Wei (the "Judge") agreed with the reasoning of the IP Adjudicator in the Decision Below, and found that the Subject Mark was inherently distinctive and capable of performing its function as an indication of origin at the application date. Notably, the Judge also observed that unlike revocation of a registered trade mark for non-use, a declaration of invalidity would render the registration void from the application date for the Subject Mark (the "Application Date"). In assessing the distinctiveness, the Court must assess "the evidence with the judicial eye sharply focused on the state of affairs at that date". Therefore, publications, press releases, survey reports and other materials post-dating the Application Date must be considered with caution, particularly if they do not draw any inference on the Singapore public's perception at the Application Date.

Comments

The decision highlights the practical difficulties in bringing invalidity proceedings a significant time after the Application Date of a registered trade mark (in this case the Application Date was in 2005). Registered trade mark owners should place watch notices to identify similar third party applications proceeding to publication and consider acting expeditiously if an opposition action is appropriate. For any invalidity actions, proprietors should also act swiftly following becoming aware of the other party's registration in order to increase prospects of overcoming the evidentiary threshold in such actions.