Though often pleaded, there are not many examples of oppositions succeeding on grounds of bad faith in Singapore. To succeed, the opponent will usually need to show that the applicant’s conduct fell below the acceptable standards of commercial behaviour. Aside from the evidential hurdles, these standards can be tricky to define in the context of a trade mark application.

One recent example of a successful invalidation on grounds of bad faith is USA Pro IP Limited v Montfort Services Sdn Bhd [2018] SGIPOS 3.

In this case, USA Pro IP Limited (“USA Pro”) argued that Montfort Services Sdn Bhd (“Montfort”) had registered the mark in the knowledge that USA Pro was the true proprietor, and moreover that Montfort had no real intention to use the mark “USAPRO” in Singapore for the goods claimed. USA Pro claimed that these facts when combined amounted to bad faith.

The true proprietor of a mark

USA Pro claimed that the true proprietor of a mark is its first user. USA Pro therefore sought to demonstrate that Montfort was not the first user of the mark in Singapore. Instead, USA Pro claimed that the first user of the mark was its predecessor in title, USA PRO Limited (“PRO”).

In response, Montfort argued amongst other things that:

• USA Pro’s evidence did not disclose earlier use of the mark in Singapore;
• Even if it did, USA Pro was not the proprietor of the mark. The assignment document that USA Pro sough to rely on did not include a reference to the mark in Singapore. Accordingly USA Pro could not rely on PRO’s earlier use; and
• In any event, that the first user is only the true owner of the mark insofar as unregistered rights are concerned. What was at issue in this case was the registration of a mark under the Trade Marks Act, which created a first-to-file system.

The Principal Assistant Registrar (“PAR”) found on the facts that USA Pro’s evidence did in fact disclose earlier use of the mark in Singapore.

On the law, the PAR observed that:

• The marks relied on in an application for invalidation under the Trade Marks Act (the “Act”) did not necessarily need to belong to the applicant; and
• While the Act created a first-to-file system, the Act runs concurrently with the common law.

Accordingly, USA Pro was entitled to rely on PRO’s earlier use of the mark in Singapore to show that Montefort was not the first user of the mark.

Actual knowledge of another party’s mark

The PAR went on to find that Montfort had actual knowledge of USA Pro’s mark. In particular, there were previous negotiations between the parties in which USA Pro sought to have Montfort produce garments bearing the marks. Knowledge of these negotiations, even if conducted by only a few individuals from Montfort’s upper management, could be attributed to Montfort generally.

No intention to use the mark

The PAR also found that Montfort had no real interest in the mark and did not intend to put it to use. This finding was in part based on Montfort’s conduct in other jurisdictions, and was in any event supported by Montfort’s admission that it did not use the mark.

The above circumstances were sufficient for the PAR to conclude that USA Pro’s invalidation succeeded on the ground of bad faith.

This case illustrates just a few of the legal and evidential hurdles that have to be cleared in order for an invalidation or opposition to succeed on grounds of bad faith.