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Singapore – Substantiation of Allegation of Bad Faith May Entitle Tribunal to Declare A Trademark Invalid

Swiss Company Vetements Group AG (the “Applicant”) sought to invalidate the following mark which had been registered in Singapore by a Chinese Company, Xiamen Vetements Brand Management Co., Ltd (the “Registered Proprietor”) for clothing in Class 25.

While the Registered Proprietor filed its response to the invalidation application, it did not file its supporting evidence in time. Its representatives did not receive any instructions and did not take any further action. The Principal Assistant Registrar (“PAR”) exercised her discretion to determine the matter without a hearing, and the matter proceeded on the basis that the Registered Proprietor had conceded to the Applicant’s claims.

The Applicant relied on various grounds of invalidation, including deception, bad faith and similarity.  At the outset, the PAR noted that once the Applicant fully and properly pled bad faith, the Registered Proprietor bore the onus of disproving it.  Should the Applicant succeed on this ground, the registration of the mark must be refused, notwithstanding that no confusion was caused.

The PAR also noted that the test for bad faith included both subjective and objective components. The subjective component consisted of several claims from the Applicant’s submissions, including that: (i) the Registered Proprietor knew that the Applicant owned the “VETEMENTS” mark; and (ii) the Proprietor nevertheless proceeded to file its application to register an identical mark in Singapore in relation to clothing. On the objective front, the PAR found that the Registered Proprietor’s “outright copying” fell short of acceptable commercial behavior, misappropriating the Applicant’s VETEMENTS mark and seeking to maintain the false front that it was or was related to the Applicant. The Proprietor’s acts betrayed its deceptive practice of misappropriating the Applicant’s mark.  She went on to state that it was unnecessary for her to consider the other grounds and declared the registration of the mark invalid.

It bears noting that where an allegation of bad faith is successfully substantiated in an invalidation proceeding, an adverse presumption may be raised against the proprietor of a registered trademark, entitling the tribunal to declare the trademark invalid, without necessarily considering other potential grounds of invalidation.

This article was first published in the IP Analysts column of Asia IP.