Campomar SL v Nike International Ltd

• Judge: Choo Han Teck J
• Judgment Date: 05 May 2010
• Neutral Citation: [2010] SGHC 140
• Citation: [2010] SGHC 140
• Docket Number: Originating Summons No 1353 of 2009
• Published date: 10 May 2010
• Hearing Date: 29 March 2010,07 April 2010,14 April 2010
• Plaintiff Counsel: Prithipal Singh (K.L. Tan & Associates)
• Date: 05 May 2010
• Defendant Counsel: Michael Palmer and Toh Wei Yi (Harry Elias Partnership)
• Court: High Court (Singapore)
• Subject Matter: Trade marks and trade names

Choo Han Teck J:

This was an appeal by Campomar S.L. (“Campomar”) against the decision of the Principal Assistant Registrar of Trade Marks (“PAR”). Campomar registered the mark “Nike” in Class 3 for “perfumery with essential oils” (application dated 2 April 1986) (“the 1986 mark”). On 20 November 2001, Nike filed an application seeking registration of the trademark “Nike” (the “application mark”) in Class 3. Campomar opposed the application on the grounds that the application mark was identical to their 1986 mark. On 21 January 2002, Nike applied to have the 1986 mark revoked. In Nike International Ltd v Campomar SL [2006] 1 SLR(R) 919, the Court of Appeal found in favour of Nike and ordered that Campomar’s rights to the 1986 mark be deemed to have ceased from the date of the application of the revocation proceedings, ie 21 January 2002. Nike’s application to register the application mark, which was held in abeyance pending the outcome of the revocation proceedings, was restored and accepted. The application mark was published on 14 June 2006. Campomar filed a Notice of Opposition on 14 August 2006.

The relevant provisions of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”) are as follows:

Interpretation

2. — (1) In this Act, unless the context otherwise requires —

…

"earlier trade mark" means —

(a) a registered trade mark or an international trade mark (Singapore), the application for registration of which was made earlier than the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks; or (b) a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was a well known trade mark,

and includes a trade mark in respect of which an application for registration has been made and which, if registered, would be an earlier trade mark by virtue of paragraph (a) subject to its being so registered

…

Relative grounds for refusal of registration

8. — (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is sought to be registered are identical with the goods or services for which the earlier trade mark is protected. (2) A trade mark shall not be registered if because — (a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public.

…

Publication and opposition proceedings

13. — (1) When an application for registration has been accepted, the Registrar shall cause the...