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Singapore Trademark Revocation: Athleta Cannot Escape on Foot

In Bigfoot Internet Ventures Pte. Ltd. v Athleta (ITM) Inc. [2018] SGIPOS 10 (decision issued 2nd July 2018), a Singapore-registered trade mark held by a large American clothing conglomerate was partially revoked on grounds of non-use.

The mark “ATHLETA” (the “Proprietors’ Mark”), owned by Athleta (ITM) Inc. (“the Proprietors”) – a wholly-owned subsidiary of US textiles giant Gap Inc. – was registered in Class 25 in respect of ‘clothing, footwear, headgear and clothing accessories’. Bigfoot Internet Ventures Pte. Ltd. (“the Applicants”) applied to revoke this mark on the grounds of non-use, relying upon Sections 22 (1) (a) and 22 (1) (b) of the Singapore Trade Marks Act.

The relevant sections of the Act state that the registration of a trade mark may be revoked if the mark has not been put to genuine use in the course of trade in Singapore, by the proprietor or with his consent, in relation to the goods and services for which it has been registered (where there are no proper reasons for non-use), either for a period of five years following the mark’s registration or for any uninterrupted period of five years since the mark was registered.

The Applicants submitted that the Proprietors’ mark should be revoked due to two separate periods of non-use – from 10 June 2009 to 9 June 2014 (the 5-year period immediately following registration) and from 9 March 2012 to 8 March 2017 (the 5-year period immediately prior to the application for revocation).

In respect of both periods, the Proprietors submitted evidence that their mark had been put to genuine use in Singapore in the course of trade – in the form of correspondence with a Singaporean customer who had bought sports apparel bearing the mark and a number of online order confirmations from other Singaporean buyers. However, in both submissions, there were no references to sales of footwear bearing the Proprietors’ mark – only clothing, headgear and clothing accessories.

Having received no substantive evidence that the mark had been used in either 5-year period in connection with footwear, the Hearing Officer decided that the mark be partially revoked with respect to footwear.

This is Bigfoot’s second successful trademark revocation action at IPOS in as many years – with the firm having last year successfully revoked Apple Inc.’s Sherlock mark (in relation to the once-famous internal search system within Macs) in Bigfoot Internet Ventures Pte. Ltd. V Apple Inc. [2017] SGIPOS 4.

By Denise Mirandah