Aussino (USA) Inc. (proprietor) owned the AUSSINO trademark registered under No. T9910601C in Class 24 in Singapore since 1999 (trademark). On July 24, 2018, Aussino International Pte Ltd (applicant) applied to revoke the trademark under Section 22(1)(b) of the Trade Marks Act, alleging that it had not been used from July 2013 to July 2018. The revocation action was dismissed by the Principal Assistant Registrar (PAR) on December 11, 2019.
The trademark was first used in 1995 by Aussino Home Fashions Pte Ltd (AHF), which was liquidated in 2015. As a consequence, use of the mark was temporarily suspended.
The applicant was incorporated in 2014 by a director of the proprietor. Said director represented the proprietor in negotiating with a co-owner of the applicant on reviving “Aussino” and granting consent to use the trademark.
The proprietor subsequently acquired the trademark in 2016.
The proprietor explained that the trademark was used with its consent during two distinct periods: between July 2013 and March 2014 by AHF, and between October 2017 and May 2018 by the applicant. The proprietor provided supporting evidence from Facebook pages of both AHF and the applicant, as well as promotional materials, photographs of retail outlets, and an article from a third-party website.
The applicant did not dispute the evidence or reliance on its use. Instead, it argued that: (1) evidence originated from social media and lacked accountability and veracity; (2) advertisements did not show use of the trademark on the relevant goods; and (3) the trademark was not used in its registered form.
On point (1), the PAR opined that the Facebook pages served as means of business communication with customers and were likely to be accurate and accountable, especially insofar as the goods, location, and promotions were concerned.
On point (2), the applicant claimed that the name appearing on the advertisement and signage outside the various outlets was used as a business name and not on the goods sold. After examining the evidence, the PAR found that a link was established between the trademark and the goods, and concluded that it was used as both a business name and a trademark.
Finally, the PAR compared the trademark against the other versions used. It found that “Aussino” was the distinctive element of the trademark and the different variations were acceptable and constituted use of the mark.
In summary, the PAR was satisfied that the trademark was put to genuine use with respect to the relevant goods and dismissed the revocation action.
By: Gladys Mirandah
A version of this article first appeared in the INTA Bulletin Vol. 75, No. 3. For more information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx