A recent Singapore Court of Appeal decision on what constitutes trade mark “use”
Campomar, a Spanish company, was the proprietor of the trade mark NIKE in Class 3 with respect to perfumes. Campomar’s NIKE had been registered since 30 December 1989 with the registration taking effect from 2 April 1986. On 21 January 2002, US athletic shoe manufacturer Nike International initiated revocation proceedings against Campomar’s NIKE under Section 22(1) of the Trade Marks Act because Nike International wanted to register NIKE in Class 3 for the same goods.
Section 22(1) (a) states that a trade mark may be revoked if within the period of 5 years following the date of completion of the registration procedure, it 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 or services for which it is registered, and there are no proper reasons for non-use. Section 105 places the burden of proof of use on the proprietor, in this case Campomar.
Campomar relied on three documents. Firstly, an invoice dated July 2001. Secondly, a bill of lading showing that products bearing the NIKE trade mark had been shipped to a Singapore company called Bhojwani’s. Thirdly, a letter from a freight forwarder.
Nike relied on four pieces of evidence. Firstly, Nike International’s private investigator gave evidence that enquiries made in November 2001 showed that no NIKE perfumes were sold at ten major shopping centres in Singapore. Secondly, an employee at Bhojwani’s told the private investigator that they did not sell any perfumes in Singapore and that they did not deal in NIKE perfumes. Thirdly, Nike International referred to an August 2001 survey by market researcher AC Nielsen which showed that at least 55% of the persons polled identified perfume bearing the NIKE mark as being associated with Nike International. Fourthly, Nike International also adduced evidence that the term “EXW” in Campomar’s July 2001 invoice stood for “Ex Works”, meaning that the buyer would collect the same at the seller’s premises.
Decision of the Principal Assistant Registrar of Trade Marks (“PAR”)
The PAR found in favour of Nike International and revoked Campomar’s NIKE, finding that the Campomar had not put the trade mark to genuine use in the course of trade in Singapore during the relevant 5 year period, i.e. 21 January 1997 to 21 January 2002.
Decision of the High Court
Campomar appealed this decision to the High Court, adducing an additional piece of evidence in the form of a 2001 price list which corresponded to the July 2001 invoice. The High Court judge, Tay Yong Kwang J., overruled the PAR’s decision and allowed Campomar’s appeal.
He held that Campomar’s evidence proved on the balance of probabilities that Campomar’s NIKE perfumes were imported into Singapore commercially, albeit only on one occasion within the relevant five-year period. Unpopular products could very well be imported only once in a few years. Promotional materials using a mark could also amount to genuine use of a mark. The fact that Campomar’s NIKE perfumes were imported into Singapore and subsequently exported to Indonesia still qualified as “genuine use” of the mark because this was true entrepot trade, not a case of the proprietor importing and then exporting back to himself or his associates to create the façade of trade.
Decision of the Court of Appeal
In a judgment delivered by Judge of Appeal Chao Hick Tin, the Court of Appeal restored the decision of the PAR and ordered that Campomar’s NIKE in Class 3 be revoked.
The court relied on “NODOZ” Trade Mark  RPC 1 at 7, where Wilberforce J. said that one single act could prove use of the mark provided that “overwhelmingly convincing proof” of the act is adduced, adding that “the fewer the acts relied on the more solidly ought they to be established”.
The court held that Campomar’s invoice and the bill of lading were merely prima facie evidence of the goods being shipped. There was no proof that the goods had actually arrived in Singapore. Since Mr. Bhojwani (the importer) was the only person who would be able to testify as to whether the goods actually arrived in Singapore, his testimony would have been integral to Campomar’s case. Campomar’s counsel told the court that they had approached Mr. Bhojwani to give evidence but he refused to cooperate. The court clearly thought that Campomar had not exercised all reasonable efforts to make Mr. Bhojwani testify. The court said that it was “woefully inadequate” for Campomar to simply say that Mr. Bhojwani did not want to be involved in the proceedings. Even if Mr. Bhojwani did not want to be involved, he could have been compelled. The court was not told why that was not done or what difficulties there were to that course being taken. In order to attain the level of “overwhelmingly convincing proof”, Campomar should have made more of an effort to show that the goods had actually arrived in Singapore. Because there was no evidence that Campomar’s goods had actually arrived in Singapore, Nike ultimately succeeded in having Campomar’s trade mark revoked.
This case serves as a reminder to trade mark owners that exceptional care must be taken with documentation of commercial transactions. The fact that the goods were dispatched is not enough; a trade mark owner must be able to prove that the goods actually arrived at the destination. It is also a reminder to lawyers that it is not enough to simply say that a witness refused to cooperate in proceedings without further explanation. A party must show that it has done everything reasonably possible to obtain the necessary evidence, including compelling witnesses to testify if necessary.