In a bid to bolster its intellectual property portfolio in Singapore, German car manufacturer Audi (‘the applicant’) recently succeeded partially in the revocation of a device mark in Audi AG v Lim Ching Kwang.
At the hearing before the Intellectual Property Office of Singapore (IPOS), the applicant had applied for both revocation of Mr Lim Ching Kwang’s (‘the proprietor’) mark ‘AOne’ under Section 22 (1) (a) and (b) of the Singapore Trade Marks Act (‘TMA’) and invalidation of the mark under Section 23 (1) read with Section 7 (6) TMA.
Dealing first with the latter ground, the applicant’s invalidation claim based on ‘bad faith’, under Sections 23 (1) and 7 (6) TMA, failed due to lack of distinct proof. The proprietor’s mark had been registered under Class 12 of the Nice Classification System in respect of all goods within that class, and the applicant based their claim of bad faith upon this. However, the Registrar disagreed, citing Kenzo v Tsujimoto Kenzo, where it was stated that a broad specification does not necessarily mean that an application is made in bad faith; there also had to exist some further unconscionable business conduct.
However, in relation to the Applicant’s grounds for revocation due to lack of genuine use, the fact that the mark had been registered to cover all goods in Class 12 did guide the Registrar’s decision. The proprietor did not contest that he had used the mark over the specified 5-year period set out by Section 22 (1) (a) and (b) TMA for any category of goods in Class 12 aside from ‘suspension shock absorbers for vehicles’.
He presented evidence of his use of the mark during the 5-year period in respect of this category – including quotations, invoices and purchase orders. In finding that this evidence constituted ‘genuine use’ as per Section 22 TMA, the Registrar cited Wing Joo Loong Ginseng (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd , in that the documents presented were ‘solid and objective evidence’ pertaining to the use of the mark in this aspect. Yet, these documents were ruled to only cover goods within the sub-category of ‘torque rod bushes’ – an even smaller classification than that which the proprietor had claimed his supporting evidence to cover.
Accordingly, in reaching his decision, the Registrar moved to revoke the mark in respect of all categories of goods within Class 12 aside from ‘torque rod bushes’, for which it had been used genuinely over the 5-year period in question, from January 2010 to January 2015. Protection for all other Class 12 goods was deemed to be revoked from January 2015 onwards.