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 […]

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 […]

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 […]