The recent case involving “Dr. Wolff’s Vagisan” illustrates the importance of distinguishing a mark from similar, existing marks by adding distinctive elements in the mark applied for. The parties, Dr. August Wolff GmbH & Co. KG Arzneimittel (the applicant) and Combe International Ltd (the opponent) had been engaged in a prior invalidation proceeding. The opponent […]
Nippon Paint (Singapore) Co. Pte. Ltd., and opposition thereto by Warrior Pte. Ltd.
These opposition proceedings relate to a dispute on the trademarks between an established supplier of adhesive products for industrial purposes (Nippon Paint (Singapore) Co. Pte. Ltd., or the applicant) and a relatively new entrant into the market (known as Warrior Pte. Ltd., or the opponent). The opponent is a Singaporean company which specializes in developing […]
SINGAPORE: Model Numbers Remain Just That
The following decision concerns the use of model numbers as trademarks and the strength of such trademarks. Nippon Paint (Singapore) Co. Pte. Ltd (the applicant) applied to register NW1 under trademark No. 40201909725V in International Class 1. Warrior Pte Ltd (the opponent) opposed the application on September 12, 2019, relying on its earlier registered marks, […]
Late filing of evidence in a trademark opposition proceeding, pardoned!
This matter pertains to registration of the mark “BEABA” at the Intellectual Property Office of Singapore (IPOS) filed under No. 40201909817Y in the name Biba (Zhejiang) Nursing Products Co., Ltd. (the applicant), and an opposition thereto by BEABA (the opponent). The issue surrounds a late request for an extension of time to file evidence by […]
Diesel S.P.A. v. Bontton Sdn Bhd: The own name doctrine and the court’s power to make declarations of non-infringement
In Diesel S.P.A. v. Bontton Sdn Bhd [2020] MLJU 715, the Malaysian Court of Appeal was faced with, inter alia, the novel issues of, firstly, whether the court has discretionary powers under Malaysian law and/or an inherent jurisdiction to grant a negative declaration in respect of infringement, and, secondly, whether it should grant recognition of […]
Singapore: “Champengwine” application denied due to the grounds of bad faith
“CHAMPAGNE,” in connection to wines, is a geographical indication that it is produced through certain local requirements and is grown from specific regions in France. Keep Waddling International Pte. Ltd (the applicant) and its related companies have been using the trademark “PENGWINE” as their house-mark for their wines originating from Chile since April 2004. These […]
Gromark Consumers Enterprise & GK Laboratory (Asia): IP mediation
The Intellectual Property Office of Singapore (IPOS) recently had a successful mediation in October 2020, where the parties reached a mutually beneficial outcome that met the commercial concerns of both of them in a span of just eight hours. This success is enhanced by the fact that the dispute involved questions of intellectual property rights […]
Valentino S.p.A loses to Matsuda & Co. over dispute in trademark name ‘Valentino’
Choosing a trademark for businesses comes with a risk, whether it is a given name, a surname, or a combination of the two. It is because others may be able to use these names in good faith without impinging upon the trademark owner’s rights. The more common the name, the more likely it is to […]
Rolex S.A. v. FMTM Distribution Ltd [2020] SGIPOS 6
FMTM Distribution Ltd (the applicant) is a company selling high-end luxury watches. The applicant applied to protect the trademark “MARINER” (the application mark) in Singapore on February 5, 2016, under Trade Mark Application No. 40201602064R in Class 14. Rolex S.A. (the opponent) is a watchmaker established in 1905, based in Geneva, Switzerland. The opponent has […]
Singapore: A Shining Example of Passing Off
The following decision issued on April 2, 2020, appears to go against Singapore’s first-to-file system and highlights the fact that prior rights (if any) in Singapore can be protected under the tort of passing off under the Trade Marks Act (TMA). Golden Cala Trading EST (applicant), incorporated in Saudi Arabia, applied to register the LENSME […]