case summary<\/a> focuses on the fact that FMTM failed to show that the mark MYSTERY SET is descriptive of a method to set precious stones in jewellery, an important part of the decision for trademark owners relates to the question of what is the quality and quantity of evidence that a proprietor of a trademark has to bring forth to show genuine use of the trademark in the course of trade, in Singapore.<\/p>\nThe evidence that was relied upon by the trademark proprietor consisted only of invoices. VCA filed nine invoices in total. No photographs of the goods bearing the mark, no brochures or catalogues, were tendered by VCA. Of the first five invoices tendered, four indicated \u201cboutique accounts\u201d and reflected sales to persons outside Singapore. The additional four invoices indicated the words \u201cmysterious setting\u201d (on two of them) and three were sold to persons outside Singapore. From my reading of the decision, aside from Statutory Declarations, nothing else was filed by VCA and the invoices included a description of the jewellery sold. These descriptions included the words \u201cMystery Set\u201d or \u201cmysterious setting\u201d. The decision is not sufficiently clear as to which invoices the Tribunal actually relied on, but assuming the Tribunal relied on them all, the question for me was are invoices alone sufficient, even when there is no evidence showing the goods to which the mark is applied onto? It seems that the answer is yes where luxury goods are concerned.<\/p>\n
The qualitative measure of what evidence is required to show genuine use was examined in the decision. While the Singapore Trademarks Act does not provide what type of \u201cuse\u201d constitutes \u201cgenuine use\u201d, the Tribunal relied on the definition of \u201cuse\u201d found in the trademark infringement provisions of the Singapore Trademark Act , which it considered to be applicable to revocation actions. The Applicant argued that showing an infringing use requires a lower threshold because in infringement proceedings often the proprietor of the mark does not have access to the evidence, which is exclusively in the hands of the infringer, and that in non-use revocation proceedings, the trademark proprietor who is in command of the evidence to prove use, should show use of the mark being applied onto the goods themselves, at a minimum. The Tribunal disagreed, stating that \u201duse\u201d for the purpose of infringement proceedings \u201conly provides illustrations of the types of evidence which can be considered, and that one can take into account other types of evidence.\u201d But the Tribunal did not stop there.<\/p>\n
Applying Capitol Records LLC v Steven Corporation Pte Ltd<\/u> [2010] SGIPOS 14 (\u201cCapitol Records\u201d), the Mystery Set Tribunal stated that there is no need to show the mark being applied onto<\/em> the goods to show genuine use<\/strong>. The Tribunal cited Capitol Records as authority to \u201cthe fact that there is no strict requirement that the mark is to be applied onto the goods.\u201d \u00a0In Capitol Records, the Tribunal relied on three tax invoices to determine that there was sufficient evidence to show genuine use in trade in Singapore. But, in Capitol Records the proprietor provided copies of photographs of goods bearing the mark. In the instant case, none were provided. The Applicant made this point but the Mystery Set Tribunal stated that since the Capitol Records Tribunal did not rely on these photographs, they were immaterial to the decision. It is a somewhat difficult to agree with such a statement because the Capitol Records decision notes that \u201cthe Proprietor has shown that there was use within the relevant period, especially<\/em> through the evidence [relied on] and through Chow\u2019s SD.\u201d [Emphasis added.] This means that the Tribunal also took into consideration other<\/em> evidence, which was not tendered in the Mystery Set Case. The Tribunal in Capitol Records also stated that \u201cI am therefore satisfied that there was sufficient evidence of \u201cgenuine use\u201d by the Proprietor of the mark\u2026 on clothing<\/em>, in particular, boy\u2019s shorts \u2026\u201d [emphasis add]. Even if the Tribunal in Capitol Records did not rely on the photographs of goods bearing the mark submitted into evidence (and shown during the hearing) it is rather evident that the Hearing Officer was convinced that the mark was applied onto<\/em> goods.<\/p>\nThe Mystery Set decision went further and clearly indicate that there is no requirement under Singapore law to show that the mark was applied on\/onto the goods. The Tribunal stated that the evidence (which we understand comprised of four or nine invoices (depending how you read the decision)) is sufficient to show \u201csale and offering for sale of \u201cMYSTERY SET\u201d goods; Importation and exportation of \u201cMYSTERY SET\u201d goods in and out of Singapore; and Use of the \u201cMYSTERY SET\u201d mark on invoices.\u201d While invoices, in the eyes of the Tribunal, were sufficient to show genuine use in the course of trade in Singapore, it seems to represents a \u201cleap of faith\u201d by the Tribunal since no Mystery Set goods were ever presented to the Tribunal. The Tribunal simply took the Proprietor\u2019s word for it despite the Applicant\u2019s insistence that the evidence was lacking.<\/p>\n
This same evidentiary \u201cleap of faith\u201d was rejected in another very recent decision by an IPOS Tribunal, which was cited in the Mystery Set decision for other propositions. In Bentley Motors Limited v Aucera S.A.<\/u> [2016] SGIPOS 11 (\u201cBentley\u201d), the luxury brand owner tried to revoke the mark BENTLEY owned by a local company for eyewear. The evidence tendered by the BENTLEY mark proprietor was of a single transaction involving a number of transactions. The goods were imported into Singapore, sold to a wholesaler who, in turn, made two sales to local stores of some 30 spectacles bearing the mark. It is noted that photographs showing the goods bearing the mark were tendered in evidence, though undated.\u00a0 Thus, the Tribunal noted that the \u201cProprietor\u2019s own evidence itself fails short of saying that the Goods bear the Subject mark\u201d. \u00a0The Bentley Tribunal, having considered two tax invoices of 30 \u201dcheap\u201d spectacles, found that these were insufficient to show genuine use in trade in Singapore. The Bentley Tribunal went on to state that \u201cthe fact that goods are referred to by a particular invoice does not always mean that the goods will bear that name\u2026\u201d And that \u201cI am not saying for a moment that use of a mark on an invoice can never amount to evidence showing use of the mark in the goods, only that in this case, I do not have evidence that such goods even exist.\u201d This is where things become fuzzy because the Mystery Set Tribunal didn\u2019t have such evidence either but went on to find \u201csale of \u201cMYSTERY SET\u201d goods\u201d.<\/p>\n
For some reason, the Bentley Tribunal found it necessary to see evidence of actual use of the mark on the goods, while the Mystery Set Tribunal decided that none was required. The Mystery Set Tribunal found use of the mark on goods on the basis of a number of invoices, stating that the case is \u201cclearly different\u201d to Bentley since there were several transactions over a period of time.<\/p>\n
Clearly, the fact that a few invoices were tendered over a period of time, each specifying an item sold worth hundreds of thousands of Singapore dollars played a significant part in the Tribunal\u2019s departure from Bentley. While 30 cheap spectacles sold to two local shops over a period of 15 days was insufficient to show genuine use, a single jewellery item sold in Singapore for over SGD250,000 and several others transferred between two VCA boutiques was sufficient, even if the Tribunal didn\u2019t see a single item bearing the mark. The Tribunal does refer to a page on VCA\u2019s Internet web site but this page does not show the mark applied to jewellery or watches.<\/p>\n
Perhaps, the Mystery Set Tribunal summary is more than telling\u00a0 – \u201c[t]aking the relevant characteristics of the products or services on the relevant market into account, I am of the view that quantity as well as turnover<\/em> of the relevant products constitute genuine use of the Subject Mark. In this regard, I agree with the Proprietors that the relevant goods are luxury items and as such have a smaller consumer base which justifies the low volume, high value transactions on an annual basis<\/em>.\u201d [Emphasis added.]<\/p>\nTrue, there is merit in the Tribunal\u2019s determination that when it comes to luxury brands, there are fewer sale transactions and that those could count as more significant. And it is also evident from the decision that since Singapore case law, directs the Tribunal to look for real or genuine trade, the Tribunal took VCA\u2019s claim of bona fides<\/em> use to heart. But, the evidentiary \u201cleap of faith\u201d in this case remains unclear since it should be very easy for a luxury brand owner such as VCA to tender evidence of actual use of their marks on the goods than for the Tribunal to have to leap to an evidentiary conclusion. If VCA\u2019s use of the Mystery Set trademark is on paper only, there is some concern that such \u201cleaps of faith\u201d will provide extended protection, where none is due.<\/p>\nThe full grounds of decision can be found at http:\/\/www.ipos.gov.sg\/Services\/HearingsandMediation\/LegalDecisions\/2017.aspx<\/a>.<\/p>\nThe writer\u2019s firm has represented the Applicant in other proceedings before IPOS.<\/p>\n","protected":false},"excerpt":{"rendered":"
A recent decision issued by the Singapore Intellectual Property Office (IPOS) in a trademark revocation proceeding has set a low bar for showing genuine use of a luxury goods trademark in the course of trade in Singapore and thus avoiding full revocation of the challenged mark. According to the decision, luxury goods trademark owners are […]<\/p>\n","protected":false},"author":1,"featured_media":1481,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"_monsterinsights_skip_tracking":false,"_monsterinsights_sitenote_active":false,"_monsterinsights_sitenote_note":"","_monsterinsights_sitenote_category":0,"footnotes":""},"categories":[1],"tags":[],"class_list":["post-1477","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-uncategorized"],"acf":[],"aioseo_notices":[],"_links":{"self":[{"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/posts\/1477","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/comments?post=1477"}],"version-history":[{"count":3,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/posts\/1477\/revisions"}],"predecessor-version":[{"id":1483,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/posts\/1477\/revisions\/1483"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/media\/1481"}],"wp:attachment":[{"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/media?parent=1477"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/categories?post=1477"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/sanlaw.legal\/he\/wp-json\/wp\/v2\/tags?post=1477"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}
![\"\"](\"http:\/\/ip-law.legal\/wp-content\/uploads\/2017\/06\/Singapore-IPOS-2.jpg\")
<\/p>\n