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 […]
Singapore: A-Star Education Discovery Camps Pte. Ltd. v. Discovery Communications, LLC
In a decision billed by the hearing registrar as a “David and Goliath clash”, Discovery Communications, LLC (“Opponent”), a corporate media giant of “Discovery Channel” fame, brought opposition proceedings against the application of A-Star-Education Discovery Camps Pte. Ltd. (“Applicant”) to register the mark “ ” (the “Application Mark”) (Singapore Trade Mark No. 40201714407Q). The Principal […]
Digi mark application fails in Singapore: Teraoka Seiko Co., Ltd v. Digi International Inc. [2020] SGIPOS 1
Digi International Inc. (“the Applicant”) is an American Industrial Internet of Things technology company headquartered in the United States of America founded in 1985. The Applicant applied to protect the trade mark: (“the Application Mark”) in Singapore on 3 March 2016 under International Registration No. 1326111 (TradeMark No. 40201700142X) in Classes 9, 38 and 42. […]
SINGAPORE: Decision Illustrates the Importance of Pre-Filing Searches
A recent case concerning two conflicting trademarks illustrates the importance of conducting pre-filing searches for existing and similar marks. Dr. August Wolff GmbH & Co. KG Arzneimittel (the proprietor) owned the VAGISAN trademark (the subject mark) registered in Singapore under registration No. T1206670G in Classes 3 and 5. On November 14, 2017, Combe International Ltd […]
SINGAPORE: Ferrero Rocher—An (Unprotected) Shape Without a Name
Ferrero S.p.A. (the applicant) applied to register a 3D mark in Class 30 (under International Registration number 1199758) in Singapore (Trade Mark No. T1406403E) (application mark). The mark was described as “a coordinated packaging design, consisting of a crinkled gold foil spherical wrapping, in a brown pleated designed cup-holder with two gold lines. The combination […]
Singapore: Applications for declaration of invalidity against trademark registrations Microarch, Sentalloy and Bioforce
This matter involved three invalidation proceedings instituted by Dentsply Sirona, Inc. (the applicant) against Trade Mark Registration Nos. T1301268F for the mark “Microarch”, T1301266Z for the mark “Sentalloy”, and T1301267H for the mark “Bioforce” (collectively, the subject marks) that were registered in the name of Tomy Incorporated (the proprietor). The applicant sought to invalidate the […]
SINGAPORE: Harvard Club of Singapore and Its Founders Battle for Trademarks
The Harvard Club of Singapore (opponent) was an official alumni club of Harvard University (formed by the president and fellows of Harvard College (applicant)) whose status was revoked by the applicant due to issues concerning leadership of the club. With the revocation, the applicant withdrew its consent to the opponent’s use of the names “Harvard” […]
SINGAPORE: Principal Assistant Registrar Clarifies ‘Genuine Use’ for Purposes of Maintaining a Registered Trademark
Aussino (USA) Inc. (proprietor) owned the AUSSINO trademark registered under No. T9910601C in Class 24 in Singapore since 1999 (trademark). On July 24, 2018, Aussino International Pte Ltd (applicant) applied to revoke the trademark under Section 22(1)(b) of the Trade Marks Act, alleging that it had not been used from July 2013 to July 2018. […]
SINGAPORE: Registrar Strikes Down Opposition in ‘Minterest’ Case
Minterest Private Limited (applicant) applied to register the trademark MINTEREST (application mark) in Class 36 in Singapore (Singapore Trade Mark No. 40201707514X). The application mark was accepted for publication and was opposed by Intuit Inc. (opponent). The opponent relied on Sections 8(2)(b) and 8(7)(a) of the Trade Marks Act (TMA) in its opposition against the […]
Registrar Dismisses Opposition to ‘Wonglo’ Trademark Application
In Multi Access Limited v. Guangzhou Pharmaceutical Holdings Limited [2019] SGIPOS 15, Guangzhou Pharmaceutical Holdings Limited (the applicant), a state-owned enterprise in China, applied for the trademark WONGLO (the application mark) in Singapore on December 15, 2015, under International Registration No. 1297792 (Singapore TM No.40201608455Q) in Classes 5, 30, and 32. The opposition ultimately failed […]