A recent decision by the Intellectual Property Office of Singapore issued on September 22, 2021, shed light on the use of a registered trademark, as well as the ways in which a trademark owner can depend on its consent to a separate third party’s use of its trademark to prove genuine use.
Unilever PLC (the proprietor) opposed Technopharma Limited’s (the applicant’s) trademark application NEW YORK FAIR & LOVELY (trademark application no. 4020151808X, dated December 30, 2014) in Classes 3 and 5, based on its FAIR & LOVELY registered marks, as follows:
In response, the applicant started revocation proceedings against the proprietor’s registered marks on grounds of non-use. The proprietor’s registered marks, as used, are depicted as follows:
The adjudicator found no evidence of use of the word mark on any of the registered goods and no evidence of use of the logo and series marks in the exact forms as registered. He compared the registered and used forms of the logo and series marks and found that the deviation in the product packaging had altered the distinctive character of the registered marks and as such, could not qualify as “use” of the registered marks.
Since some of the product packaging images appeared on websites operated by third parties independently of the proprietor, the adjudicator also considered the issue of consent and set out two classifications in which the acts of a third party could be considered as examples of genuine use of the registered trademark that took place with the consent of the proprietor: (1) “express consent,” that is, whether the proprietor has expressly consented to the third party’s use of its registered mark; and (2) indirect consent, namely, the trademark owner’s awareness of the third party’s use of its mark, coupled with its endorsement of such conduct.
As the forms of the marks actually used by the proprietor did not cross the threshold for genuine use, nor did the use thereof come about from consent to third-party use, the proprietor was unable to show use for a consecutive five-year period. Accordingly, the logo mark was retroactively revoked from July 21, 1995, the series mark retroactively revoked from October 17, 2013, and the word mark retroactively revoked from September 25, 2017, which was the first day immediately following the end of the respective five-year period from completion of respective registrations in each instance.
This article was first published by the International Trademark Association on inta.org.