Despite the recent popularity surge in old technological phenomena, with Nintendo’s Pokémon being ubiquitous on small hand-held screens again, and Nokia having relaunched – to widespread excitement – its iconic 3310 phone, it is not always easy for tech giants to hold on to past products and features in the hope of one day re-marketing them. Such was proven in the Singapore trademark revocation case of Bigfoot Internet Ventures Pte Ltd v Apple Inc.  SGIPOS 4.
In the case, heard before the Intellectual Property Office of Singapore (“IPOS”). Bigfoot (“the Applicants”) sought revocation of Apple’s (“the proprietors”) mark SHERLOCK, registered in Class 9 of the Nice Classification of Goods and Services, in respect of computer software. As long-standing Mac users will be aware, Sherlock was a search tool provided as part of Mac Operating Systems able to both search through the computer’s internal filing system and to be used as an internet search engine – the predecessor to the present Dashboard facility on Macs.
In Singapore, Section 22 (1) of the Trade Marks Act (“TMA”) states that a registration of a trade mark may be revoked if, for an uninterrupted period of five years following registration, there has been a lack of genuine use of the mark. Section 22 (3) further provides that use subsequent to the 5-year period of non-use shall preclude revocation so long as it occurs three months before any revocation action is brought, and that the proprietor was unaware that the application for revocation might be made.
Apple registered SHERLOCK in Class 9 for use in Singapore on 5th March 2001. Bigfoot’s application to IPOS for revocation of the mark was filed on 12 March 2015. The Registrar examined two continuous 5-year periods for non-use: the five years following the mark’s registration, as per Section 22 (1) (a) TMA, and the five years preceding the filing of the Applicants’ revocation, as would be sufficient grounds under Section 22 (1) (b).
As far as the first period was concerned, the Registrar found that the mark had been put to genuine use in this time. The proprietors were able to show that they had been selling Mac products in Singapore since 1998 – and that Sherlock had been a component part of the operating systems of these first Macs (Mac OS 8.5).
On the second issue of whether the mark, “Sherlock” was put to use in the second period of 5 years preceding the filing of the Applicant’s revocation, the Applicants asserted that the Sherlock software was removed from the Mac OS software in 2007, two years prior to the commencement of the second period of 5 years. Although the Proprietors argued that despite the introduction of the new system, the old software updates featuring Sherlock were not altogether scrapped and therefore there may be users downloading the same, the Registrar rejected the argument stating that with the passage of time and with the “Sherlock” feature becoming obsolete coupled with the absence of sufficient evidence to prove otherwise, the Proprietors had failed to discharge their burden of proof.
Following the above, the Registrar concluded that since the mark had not been put to genuine use during the second period of 5 years, the ground for revocation under Section 22(1)(b) was successful. Following the arguments set out in Ansul BV v Ajax Brandbeveiliging BV  IP & T 970, the Hearing Officer concluded that inclusion of a mark merely in technical updates after the sale of a product could amount to genuine use in Singapore, but that, in every instance, this would depend on the factual matrix of the case concerned.
By Gladys Mirandah and Divya Easwaran