Document Number: 1241739Document Number: 1241739
In This Issue:
Autozone Automotive Enterprise
v. AutoZone Parts, Inc - American
retail giant loses IP battle as
Singaporean company succeeds
in its application for revocation of
the former's trade marks
Kenzo v Tsujimoto Kenzo -
Assistant Registrar strikes out the
LVMH-owned luxury brand's
opposition to the "KENZO
ESTATE" trade mark
Distileerderij en Likburstokerij
Herman Jansen BV v Tilaknagar
Industries Ltd - Application to
restore trade mark applications
and request for extension to file
Autozone Automotive Enterprise v. AutoZone
Parts, Inc - American retail giant loses IP battle as
Singaporean company succeeds in its application
for revocation of the former's trade marks
The Registrar recently revoked registered trade marks of AutoZone Parts Inc,
USA's largest aftermarket automotive parts retailer, at the application filed by
Autozone Automotive Enterprise under section 22(1)(a) and (b) of the Trade
AutoZone Parts Inc (the "Registered Proprietor") is an established Fortune 500
company with around 5000 stores in the USA. They own trade mark
registrations for AUTOZONE and AutoZone (stylised) for 'retail services,
including retail of automotive parts' in Singapore since February 1999. While the
Registered Proprietor does not have any retail stores in Singapore, they claimed
to have offered goods for sale under their trade marks for several years through
their website www.autozone.com, which is accessible by Singapore consumers.
In addition, they also claimed to have supplied retail services through two actual
sale transactions with a buyer in Singapore.
Autozone Automotive Enterprise, (the ''Applicant'') is a Singaporean company
and involved in the business of importing, exporting and wholesaling automotive
spare parts for most Japanese vehicles. It sought to revoke the Registered
Proprietor's trade marks on the basis on non-use in Singapore.
In considering the sale transactions leading to delivery of goods in Singapore,
the Registrar held that while a case for use in Singapore by sale may be made
out where the trade marks are registered for goods, to show that retail services
have been provided in Singapore, the 'retail services' themselves must have
been provided in Singapore. In the instant matter, the Registered Proprietor's
website and related advertising on the website are targeted at the US market
and not the public in Singapore. It is not possible for a consumer based in
Singapore to order products off the Registered Proprietor’s website. The
website states that it ships to the United States, US Territories and overseas US
military addresses only. It is necessary to insert a ZIP code and select one of
the US states before a product can be ordered. While the Registered Proprietor
adduced evidence to show that 282 unique users in Singapore have clicked on
their website over a period of about 23 months, there was no evidence of any
active steps 'which led consumers to the website featuring the trade marks in
The only two sale transactions with a Singaporean buyer occurred after the
buyer contacted the Registered Proprietor by email to indicate his interest to
purchase the goods displayed on the website. Thereafter, the Registered
Proprietor confirmed that they can ship goods to Singapore and provided steps
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on how he may purchase the goods. The Registrar stated that the email enquiry received by the Registered Proprietor from the Singaporean consumer pursuant to information on the Registered Proprietor's website should be assessed in the light of the requirement for an 'active step' in Singapore.
The Registrar noted that evidence showing that the goods available on the Registered Proprietor's website bearing the trade mark are different from evidence of use of the trade mark for retail services. Further, the existence of domain names and websites featuring the name in which goodwill is said to exist will ordinarily be insufficient as proof of exposure of that name in Singapore. The Registered Proprietor would need to go beyond simply placing the offer for sale or advertising retail services on the internet and waiting in the hope that someone from Singapore will enquire about their services.
The Registrar also commented that to show "use" in respect of the services, it need not be limited to retail services provided online over the internet. For example, retail services can be supplied through a combination of the use of a merchandise website in the global communications network and email communications. The more important consideration is that the services, even if available to anyone in the world with internet access through a combination of an online website and email communications, are directed at the consuming public in Singapore through any active step.
Accordingly, the Registrar allowed the revocation of the trade marks for their lack of use in Singapore during the preceding 5 years.
This case illustrates that evidence to prove actual use of the registered mark must be directed to show such use in relation to the goods or services which the mark is registered for in Singapore. The mere fact that the proprietor features its mark on a website that is accessible from Singapore is generally not sufficient to constitute use within Singapore. There must be evidence to show some "active step" has been taken by the proprietor to offer or advertise the goods and services using the trade mark. Where services are offered or advertised through the internet, they can be supplied through a combination of the use of a merchandise website in the global communications network and email communications, but the proprietor must show how the services are directed at the consumers in Singapore through some active step.
Kenzo v Tsujimoto Kenzo - Assistant Registrar strikes out the LVMH-owned luxury brand's opposition to the "KENZO ESTATE" trade mark
In a recent opposition proceeding, Tsujimoto Kenzo, the billionaire CEO of Japanese video game company CAPCOM, succeeded in registering his "KENZO ESTATE" trade mark against staunch opposition from the Japanese luxury brand "Kenzo".
An application by Mr. Tsujimoto to the Intellectual Property Office of Singapore ("IPOS") to register the "KENZO ESTATE" trade mark for the products of his recently established winery in Napa Valley, California was opposed by French luxury conglomerate LVMH as the owner of the word mark "KENZO" and a highly stylised version of the word mark. LVMH based its opposition on the grounds that KENZO is a well-known mark. Use of the "KENZO ESTATE" mark constitutes passing off that the application for the "KENZO ESTATE" mark was made in bad faith. LVMH submitted three Statutory Declarations as evidence in support of the opposition.
The Registrar found that overall, the Applicant's mark is not visually or conceptually similar to the Opponent's stylised KENZO marks, but there are some aural similarities. The Applicant's mark is visually and aurally similar to a small extent but conceptually not similar to the Opponent's KENZO word mark. Moreover, evidence that there are currently a number of businesses in Singapore using variations of "Kenzo" in their titles confirmed its indistinctive nature as a common Japanese name.
The Registrar accepted that the "KENZO" mark is well-known in Singapore but not well-known to the public at large. Both the Opponent's and the Applicant's goods appear targeted at the same relevant public, but given the high prices of both the Opponent's and Applicant's goods, the relevant consumer is likely to attach importance to what is purchased and exercise a higher degree of circumspection. On a balance of probability, the Registrar found that the Opponent has not established that the Applicant's mark would indicate a confusing connection with the Opponent.
The Registrar also found that despite having goodwill in the KENZO trade mark, the Opponent failed to prove that there is any misrepresentation by the Applicant and consequently failed on the ground of passing-off. As to the Opponent's submission that the Applicant filed the "KENZO ESTATE" mark in bad faith as it used a wide specification of goods for its application and wanted to misappropriate the name of "KENZO", the Registrar found that the Opponent failed to discharge the burden of proof. As a result, the Opponent's opposition failed on all three grounds.
This case reiterates the more stringent attitude generally applicable in assessing the likelihood of confusion for expensive products which target specific consumer groups. Large corporations and conglomerates which have established brands need to present strong evidence to convince the court that the use of the applicant's trade mark will cause confusion to consumers to indicate a connection to the opponent in order to succeed in trade mark opposition proceedings.
Distileerderij en Likburstokerij Herman Jansen BV v Tilaknagar Industries Ltd - Application to restore trade mark applications and request for extension to file evidence refused
Tilaknagar Industries Ltd, an alcoholic beverage manufacturer, was refused in their request for an extension of time to file evidence in response to a Notice of Opposition filed by Distileerderij against the contested 'SAVOY CLUB' mark.
Tilaknagar filed an application for its "SAVOY CLUB" mark and the application was published on 11 March 2011. Distileerderiji filed an 'intervening application' for the same word mark on 7 July 2011, followed by a Notice of Opposition on 11 July 2011. A case management meeting was held before the Registrar on 2 April 2012 during which the Registrar directed that the maximum timeline for Distileerderiji to file evidence or to request for extension of time would be 2 October 2012 and Tilaknagar will have up to a maximum of 6 months to file its evidence. Distileerderiji filed its evidence on 1 October 2012 and Tilaknagar's statutory deadline to file its evidence or request for extension falls on 3 December 2012. However, no evidence or request for extension was filed by Tilaknagar and the Registrar notified the parties on 28 January 2013 that
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Tilaknagar's application was deemed withdrawn pursuant to the Trade Marks
Rules. On 8 February 2013, Tilaknagar wrote to the Registrar to request for
extension of time and Distileerderiji refused to consent to the extension of time.
At the hearing before the Registrar, Tilaknagar submitted that the delay was
caused by its solicitor's confusion of the maximum timeline directed by the
Registrar at the case management meeting (which would give Tilaknagar up to
2 April 2013 to file evidence) with the statutory deadline of 2 months for
Tilaknagar to file evidence or request for extension of time after Distileerderiji
has filed its evidence. Tilaknagar's argument is that the Registrar has power to
grant an extension of time beyond the statutory deadline imposed under section
33(4) of the Trade Mark Rules, while Distileerderiji argued that the Registrar has
no power under section 33(5) of the Trade Mark Rules to grant extension of
time beyond 6 months from the date of receipt of the respondent's statutory
declaration. Distileerderiji also submitted that the delay by Tilaknagar was too
long and insufficient reasons were given for the delay.
The Registrar first clarified that the Registrar has broad discretion under Rule 83
of the Trade Mark Rules to correct any irregularity in procedure, which in the
opinion of the Registrar, is not detrimental to the interests of any person or
party. Thus, the Registrar has the power to hear the application for extension of
time notwithstanding that the request is made outside the 2-month deadline
under rule 33(4) and that it is no longer possible for the applicant to file its
statutory declaration within the deadline set out in rule 33(5).
The Registrar stated that a solicitor's bona fide mistake is but one factor in its
overall consideration in deciding whether to exercise discretion to allow
extension of time. A mere assertion that there has been an oversight is
insufficient. The Registrar disagreed that it can only consider prejudice done to
the innocent party; the Registrar can consider the consequence of the party's
default as a type of prejudice to the party in its consideration of whether to grant
In this case, Tilaknagar has not explained how the filing of its statutory
declaration would be vital to its case, neither has it presented or explained the
intended content of its statutory declaration. Thus, taking into account the
particular facts and circumstances of this case, the public interest in the
adherence to the rules of procedure and the sanctity of the Registrar's
notification outweighed Tilaknagar's interest in defending the application of the
trade mark. The long delay and the lack of good and sufficient reasons to justify
such delay weighted against Tilaknagar. Tilaknagar's application to restore the
trade mark application and request for extension of time to file its statutory
declaration were refused.
This case reiterates the importance of adhering to the prescribed procedural
timelines in trade mark opposition proceedings. In the event of a delay which
falls outside the statutory deadline, parties must present sufficient reasons for
the delay and mere assertion that the delay was caused by a bona fide mistake
of the solicitor is insufficient.