As a result of inaction by the applicant, the Principal Assistant Registrar (PAR) exercised his power under Section 37(4) of the Trade Marks Rules to decide on a case on February 4, 2020, without any hearing.

Seek Asia Pte Ltd (the applicant) applied to register a composite trademark “SEEK ASIA” consisting of the words “Seek Asia” and a circular blue device with spheres of differing sizes forming an arrow within it (the composite mark) in Singapore on March 3, 2017 under Trade Mark No. 40201700430V in Class 35.

Seek Limited (the opponent), an Australian incorporated company listed on the Australian Securities Exchange, opposed the registration of the application mark on grounds of bad faith and copyright infringement under Sections 7(6) and 8(7)(b) of the Trade Marks Act (TMA), respectively.

Opponent’s Arguments

The opponent argued that the applicant had no bona fide intention to use the application mark, except as a means to extort money from the opponent. They argued this was evident from the applicant’s business activities as filed with the regulatory body and its correspondence and conduct with the opponent’s lawyers.

The opponent further commenced parallel proceedings in the Singapore High Court and obtained summary and default judgments against the applicant for copyright infringement and a permanent injunction against the use of the composite mark.

Applicant’s Conduct

The applicant did not accede to the opponent’s demands following the judgment, including the withdrawal of the composite mark. Neither did it respond to the Registrar’s and opponent’s communication, including the Registrar’s direction to withdraw the same. The applicant also failed to file written submissions and the requisite form confirming its intention to attend, and to show up at the opposition hearing.

PAR’s Decision

Having considered the findings by the High Court and the opponent’s pleadings and submissions, the PAR found that there was 100 percent copying, as the device was wholly subsumed in the composite mark and was therefore liable to be prevented from registration under Section 8(7)(b) of the TMA. Registration of the composite mark was refused.

By: Gladys Mirandah

A version of this article first appeared in the INTA Bulletin Vol. 75, No. 7. For more information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx