Daimler AG v. Vivo Mobile Communication Co., Ltd.

The case concerns an opposition in Singapore by Daimler AG (the opponent) to a trademark application by Viva Mobile Communication Co. (the applicant) to register (the application mark). The opponent had opposed the application on two grounds: namely, Sections 8(2) (b) and 8(7)(a) of the Trade Marks Act (Cap 332, 2020 Rev Ed) (the act). […]

SINGAPORE: Way Off!

An application by S. C. Johnson & Son, Inc. (applicant) to invalidate Off-White LLC’s (the proprietor’s) registered trademark on the grounds of similarity, well-known mark status, and passing off was adjudged to fail by the IP adjudicator in his decision, rendered on December 15, 2021. His decision bears highlighting as it underscores how, when considering […]

SINGAPORE: Use It or Lose It

A recent decision by the Intellectual Property Office of Singapore issued on September 22, 2021, shed light on the use of a registered trademark, as well as the ways in which a trademark owner can depend on its consent to a separate third party’s use of its trademark to prove genuine use. Unilever PLC (the […]

SINGAPORE: An Entirely Different Beast

A recent opposition by Monster Energy Company (the opponent) against a trademark application filed by Health and Happiness (H&H) Hong Kong Limited (the applicant) is one of the very rare instances whereby the opponent relied on its earlier trademarks for goods to oppose an application for services. The applicant applied to register NOISY BEAST in […]

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, […]

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 […]