Campomar SL v Nike International Ltd

• Court: Court of Appeal (Singapore)
• Judge: Chao Hick Tin JA
• Judgment Date: 28 February 2011
• Neutral Citation: [2011] SGCA 6
• Citation: [2011] SGCA 6
• Defendant Counsel: Michael Palmer and Toh Wei Yi (Harry Elias Partnership LLP)
• Published date: 08 March 2011
• Plaintiff Counsel: Prithipal Singh (K.L. Tan & Associates)
• Hearing Date: 10 November 2010
• Docket Number: Civil Appeal No 78 of 2010
• Date: 28 February 2011
• Subject Matter: Trade Marks and Trade Names

Chao Hick Tin JA (delivering the judgment of the court): Introduction

This appeal raises the issue as to whether the registration of a trade mark “NIKE” (“the Mark”) should have been rejected on the ground that as of the date on which the Mark took effect, there existed another identical earlier mark on the trade mark register (“the register”). The appellant, Campomar S.L. (“Campomar”), was the proprietor of that earlier mark and has appealed against the decision of the Judge below (“the Judge”) who refused to overturn the decision of the Principal Assistant Registrar of Trade Marks (“the PAR”) allowing the registration of the Mark notwithstanding Campomar’s objection.

The background

The respondent, Nike International Ltd (“Nike International”), is a US company and a wholly-owned subsidiary of Nike Inc. Both Nike International and Nike Inc have, since 1972, been marketing and retailing shoes and apparel worldwide under the “NIKE” trade mark and brand name.

Campomar is a Spanish company and had on 2 April 1986 made an application to register the mark “NIKE” in Class 3 of the International Classification of Goods in respect of “perfumery with essential oils”. Its mark (“the 1986 Mark”) was duly registered on 30 December 1989 with the registration taking effect from 2 April 1986.

On 20 November 2001, Nike International made an application (“the Registration Application”) to register the Mark in Class 3 in respect of:

bleaching preparations and other substances for laundry use; cleaning; polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; colognes; toiletries; sunscreens; cosmetics; skincare products; deodorants and antiperspirants for personal use; shaving preparations.

The specification was subsequently amended to:

bleaching preparations and other substances; cleaning; polishing, scouring and abrasive preparations; soaps; all for laundry use or for use on sports goods or sporting apprarel; perfumery; essential oils; cosmetics; hair lotions; dentifrices; colognes; toiletries; shampoo; sunscreens; cosmetics; skincare products; deodorants and antiperspirants for personal use; shaving preparations.

Campomar opposed the Registration Application based on, inter alia, its earlier 1986 Mark.

Consequently, Nike International filed an application on 21 January 2002 (“the Revocation Application”) to have Campomar’s 1986 Mark revoked under s 22(1) of the Trade Marks Act (Cap 332, 1999 Rev Ed) (“TMA 1999”) on the ground that for the period of five years immediately preceding its application to revoke, Campomar had not used its 1986 Mark. As a result, the Registration Application was held in abeyance pending the outcome of the Revocation Application.

At the conclusion of the hearing of the Revocation Application, Principal Assistant Registrar of Trade Marks Anne Loo (“PAR Loo”) held that Campomar had failed to show that it had made use of the 1986 mark during the relevant five year period. She thus revoked the registration of the 1986 Mark. Her decision was reversed on appeal to the High Court in Nike International Ltd and another v Campomar SL [2005] 4 SLR(R) 76. On further appeal by Nike International to the Court of Appeal, the decision of PAR Loo was restored: the decision of this Court is reported at Nike International Ltd v Campomar SL [2006] 1 SLR(R) 919 (“Nike International (Appeal)”). Thus, in accordance with s 22(8)(a) of the TMA 1999 (which has been renumbered as s 22(7)(a) of Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA 2005”)), Campomar’s rights to the 1986 Mark were deemed to have ceased from the date of the Revocation Application (ie 21 January 2002).

Following the revocation of the 1986 Mark, the Registration Application was accepted for registration and published on 14 June 2006 for opposition purposes. Pursuant to rule 29(1) of the Trade Marks Rules 1998 (Cap 322, R 1, 2008 Rev Ed), the period of time within which any interested party could oppose the registration of the mark was from 14 June 2006 to 14 August 2006. Campomar filed a notice of opposition on 14 August 2006. At a hearing on 16 September 2009 before the PAR, Campomar opposed the registration of the Mark on inter alia, the following two grounds. First, it contended that s 8(1) of the TMA 2005 prohibited registration of a later trade mark if it was identical with an “earlier trade mark” and if the goods or services for which the later trade mark was sought to be registered were identical with the good or services for which the “earlier trade mark” was protected. Campomar averred that pursuant to the definition of “earlier trade mark” under s 2(1) of the TMA 2005, the relevant time to consider if there were any earlier trademarks was the time when Nike International made the Registration Application (ie 20 November 2001). Since Campomar’s 1986 Mark was not deemed to have ceased until 21 January 2002, the 1986 Mark fell within the definition of “earlier trade mark” under the TMA 2005. As the Mark was identical with the 1986 Mark, and the goods and services applied for were identical with those for which the 1986 Mark was protected, the Registration Application should accordingly be refused under s 8(1) of the TMA 2005. Secondly, relying on s 7(6) of the TMA 2005, Campomar alleged that Nike International had made the Registration Application in bad faith.

In respect of Campomar’s first ground of opposition, Nike International argued that a right to oppose could only arise after the date of publication of the Mark (ie 14 June 2006). Since Campomar’s 1986 mark had already been revoked by 14 June 2006, it could not be an “earlier trade mark” under s 2 of the TMA 2005 at the time that the right to oppose arose. Accordingly, s 8(1) of the TMA 2005 could not apply. As for Campomar’s second ground of opposition, Nike International argued that they had shown bona fide and prolific use of the Mark on a wide range of products all around the world and that Campomar had not adduced any credible evidence of the use of its 1986 Mark in relation to any goods in Singapore. Hence Nike International submitted that Campomar had no basis whatsoever to invoke s 7(6) of the TMA 2005 against it in relation to the Registration Application.

In her written grounds of decision (“the PAR’s GD”) dated 30 October 2009, the PAR held that Campomar failed on both grounds of opposition. In relation to the first ground, the PAR took the view that the relevant point in time to consider if there was an “earlier trade mark” under s 2(1) of the TMA 2005 was neither the date on which the Registration Application was made (ie 20 November 2001) as argued by Campomar, nor the date of publication of the Mark (ie 14 June 2006) as argued by Nike International, but an even later date, viz, the date on which the Registrar decides if the later mark could be registered, ie, the time of the hearing of the opposition, or more specifically, the point of time when the Registrar is about to enter the Mark on the register. In the present case, this date was 16 September 2009. Since the 1986 Mark was no longer a “registered mark” from 21 January 2002, there was no longer, at the time of the hearing of the Registration Application, an “earlier trade mark” for the purposes of s 2 of the TMA 2005 which could form the basis of Campomar’s opposition under s 8(1) of the TMA 2005. Accordingly, the PAR held that s 8(1) of the TMA 2005 did not apply. She also rejected Campomar’s contentions that the Registration Application was made in bad faith. Having disposed of the objections, she allowed the registration of the Mark.

Campomar appealed against this decision of the PAR to the High Court by way of Originating Summons No 1353 of 2009 (“the OS”). We should, at this juncture, point out that in its appeal to the High Court, Campomar abandoned its opposition to the registration of the Mark based on s 7(6) of the TMA 2005 (ie, bad faith) and confined its appeal on the sole ground that registration should have been disallowed on account of the 1986 Mark. It contended that the the PAR had misdirected herself in law in determining what constituted an “earlier trade mark” for the purpose of s 8(1) of the TMA 2005. Campomar also pleaded that the PAR misdirected herself in law by stating that there is an absence of an express provision that defines “earlier trade marks” as marks that are on the register as at the date of the application.

The OS was heard by the Judge, who, on 14 April 2010, dismissed Campomar’s appeal. His grounds of decision (“the GD”) may be found at Campomar SL v Nike International Ltd [2010] 3 SLR 951. Campomar now appeals to this court to reverse both the Judge’s as well as the PAR’s decisions.

Decision below

The sole issue before the Judge was whether Campomar’s 1986 Mark could be considered an “earlier trade mark” within the definition of s 2(1) of the TMA 2005 for the purposes of the application under s 8(1) of the same. Like the PAR, the Judge found that the 1986 Mark did not qualify as an “earlier trade mark”. He agreed with the PAR that the appropriate moment to determine whether there was an “earlier trade mark” under s 8(1) of the TMA 2005 was at the hearing of the opposition. Since the 1986 Mark had already been revoked by then, it was no longer a registered trade mark, and therefore not an “earlier trade mark” for the purposes of s 2(1) and s 8(1) of the TMA 2005. Accordingly, s 8(1) would not apply as a ground for refusing registration.

In coming to his decision, the Judge first noted that under s 2 of the TMA 2005, an “earlier trade mark” referred to a “registered trade mark… the application for registration of which was made earlier than the trade mark in question”. It does not indicate the relevant moment in time at which it should be determined whether an earlier mark existed. However, from the wording of s 2 of the TMA 2005, the Judge took the view that...