Festina Lotus S.A (Proprietor) is the registered proprietor of the FESTINA mark. While the Proprietor does not have any business presence in Singapore, it claimed to have offered goods for sale online through various third-party websites, namely www.bodying.com, www.watchshop.com and in particular, www.brandsfever.com (Brandsfever), which is accessible by Singapore consumers.
The Proprietor furnished evidence of “genuine use” by various third parties of (i) website printouts, (ii) photographs of the mark and (iii) a letter from the director of Brandsfever of actual sales that had been tendered, thereby concluding that their goods had been offered to the Singapore public.
Romanson Co. Ltd (Applicant) applied for revocation of the FESTINA mark under Sections 22(1)(a) and (b) of the Singapore Trade Marks Act (Act), which provides that the registration of a trademark may be revoked if genuine use of the mark in the course of trade in Singapore has been suspended for an uninterrupted period of five years, unless there are “proper reasons for non-use.”
The Applicant relied on the evidence put forward by the Proprietor to argue that there was no genuine use in the course of trade in Singapore. The Applicant submitted that “genuine use” requires more than merely token use and is a question of fact, and that the Proprietor had not taken “active steps” to market the goods in Singapore.
The Applicant also submitted that the use shown by the Proprietor was insufficient because third parties do not have control over the use of the FESTINA mark. Further, the Applicant had commissioned a third party to conduct a market investigation on the use or non-use of the mark, and the investigator had arrived at the conclusion that there was no “relevant use” by the Proprietor of the FESTINA mark in Singapore.
In light of the evidence submitted, the Assistant Registrar said that use on the Internet may constitute genuine use even if there is no evidence of actual sales being made. However, the commercial exploitation of the mark has to be real. Token use or simulated use intended only for the mark’s protection and registration maintenance is insufficient to establish “genuine use.”
The Assistant Registrar also found that there was no “consent” by the Proprietor to the use of the FESTINA mark by the third parties for the purposes of Section 22(1) of the Act.
Assessing the circumstances of the case, the characteristics of the market concerned and the scale and frequency of use of the mark, the Assistant Registrar was convinced that the Proprietor did not put FESTINA to genuine use in the course of trade in Singapore and there were no proper reasons for non-use. Hence, the registration of the mark was revoked. Romanson Co., Ltd. v Festina Lotus, S.A. (February 6, 2015, SGIPOS 3).
This case highlights the importance of putting a mark in genuine use in Singapore. Mere use of a trademark on the Internet without any active step on the part of the proprietor is not sufficient to overcome a revocation action.
This article was first published in INTA Bulletin, Vol. 70 No.8, April 15, 2015. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx