Nike International Ltd and Another v Campomar Sociedad Limitada

JurisdictionSingapore
CourtHigh Court (Singapore)
JudgeTay Yong Kwang J
Judgment Date05 August 2005
Neutral Citation[2005] SGHC 139
Citation[2005] SGHC 139
Plaintiff CounselPatrick Yap (K L Tan and Associates),Christopher Woo and Clarence Lee (Harry Elias Partnership)
Publication Date05 August 2005
Docket NumberOriginating Motions Nos 25 and 26 of 2004
Date05 August 2005
SubjectApplication to revoke registration of trade mark on ground of non-use,Sections 22, 105 Trade Marks Act (Cap 332, 1999 Rev Ed),Application opposing registration of trade mark dismissed subject to condition that mark specification amended,Whether import and export of goods as part of entrepot trade amounting to genuine use of mark,Whether fresh proceedings to oppose registration of amended mark precluded by operation of res judicata,Application to appeal out of time against decision dismissed,Whether burden of showing use of mark on balance of probabilities discharged by respondent,Revocation,Whether use of mark on promotional materials amounting to genuine use of mark,Trade Marks and Trade Names,Res Judicata

5 August 2005

Tay Yong Kwang J:

Originating Motion No 25 of 2004 (“OM 25”)

1 In OM 25, the first appellant (“Nike International”), a US company, is a wholly owned subsidiary of Nike Inc. Both Nike International and Nike Inc have been marketing and retailing shoes and apparel under the “NIKE” trademark and brand name worldwide since 1972. The second appellant (“Nike Singapore”) is the exclusive licensee of the first appellant in Singapore. I shall refer to the two appellants collectively as “the Nike companies”. The respondent is a Spanish company, Campomar Sociedad Limitada (“Campomar”).

2 On 21 August 1992, Campomar applied to register “NIKE” in class 3 of the International Classification of Goods in respect of:

Bleaching preparations, and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps.

The specification was subsequently amended to:

Bleaching preparations and substances, all for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; all included in Class 3.

3 On 10 October 1997, Campomar’s application was advertised before acceptance under the proviso to s 18 of the Trade Marks Act (Cap 332, 1992 Rev Ed) (“the TMA 1992”), which was the applicable law then as the said application was filed in 1992. Nike International then commenced opposition proceedings (“the first opposition”) against the application. The first opposition was heard in April and July 2001 by Assistant Registrar of Trade Marks Chua Ser Ching (“AR Chua”).

4 In her grounds of decision dated 16 July 2001, AR Chua did not allow the opposition and she directed that the specification in Campomar’s application be amended within four weeks to that spelt out below, failing which the application would be refused:

Bleaching, cleaning, polishing, scouring and abrasive preparations; soaps; all not for laundry use nor for use on sport goods or sporting apparel; all included in Class 3.

According to counsel for both parties, the amendment directed by AR Chua was not canvassed in the arguments before her. Apparently, at the hearing before her, AR Chua suggested the restriction without spelling it out explicitly. It was when her grounds of decision were released that the parties learnt of the precise amendment. Campomar duly restricted the specification by lodging Form TM27 to amend the same on 24 July 2001. However, AR Chua made no direction as to re-advertisement of the amended application.

5 On 24 August 2001, Nike International wrote to AR Chua drawing her attention to the proviso in s 18 of the TMA 1992 which provided that where an application had been advertised, the Registrar (of Trade Marks) may, if she thought fit, advertise it again when it had been accepted but shall not be bound to do so. That same day, AR Chua replied, stating that the amendment of the specification would be published pursuant to r 23 of the Trade Marks Rules (Cap 332, 2000 Rev Ed), which read:

23 Where an application is made for an amendment of an application for registration which has been published, and the amendment affects the representation of the trade mark or the goods or services covered by the application for registration, the amendment or a statement of the effect of the amendment shall also be published.

6 Concurrently, Nike International filed an originating motion in the High Court seeking leave of court to appeal out of time against AR Chua’s decision of 16 July 2001. That was heard on 31 August 2001 before Kan Ting Chiu J. Campomar’s written submissions at that hearing contained the following statements:

Finally as the Registrar has indicated that the mark is to be advertised with the restricted specification, technically the Applicant can once again oppose the same and can have a second bite of the cherry. Even if this Honourable Court does not grant the Applicant’s application, the Applicant can once again commence opposition proceedings. There is therefore no prejudice to them.

Nike International submitted that Campomar was thereby representing to the court and itself that it could rightfully oppose the re-advertised application. As a consequence of those submissions, Nike International informed the court that its application for leave to appeal out of time would be withdrawn if Campomar confirmed that it would not raise objections based on issue estoppel or res judicata in the next opposition proceedings in the Intellectual Property Office of Singapore (“IPOS”). When asked by the judge whether he would waive the issue of res judicata in the next opposition proceedings, counsel for Campomar replied that Campomar’s right to raise that issue was reserved. Thereafter, the hearing of the application for leave to appeal out of time proceeded and the judge dismissed it.

7 Nike International next wrote a rather lengthy letter dated 11 October 2001 to IPOS arguing that the mark should be open to opposition upon its second advertisement. It included in its arguments Campomar’s written submissions to the court at [6] above and stated that it was understood between the parties that Nike International would be entitled to oppose the registration of the mark upon re-advertisement. A copy of this letter was sent to the solicitors for Campomar who did not object or refute this statement. IPOS replied stating that it would exercise its discretion under the proviso to s 18 of the TMA 1992 to advertise again the mark with its amended specification.

8 Campomar’s application with the amended specification was re-advertised on 30 November 2001 in Trade Marks Journal No 146. On 25 January 2002, the Nike companies lodged a notice of opposition against the re-advertised mark. A counter statement was then filed by Campomar denying the grounds mentioned in the notice of opposition.

9 The opposition hearing (“the second opposition”) took place in January 2004 before Principal Assistant Registrar of Trade Marks Anne Loo (“PAR Anne Loo”). At that hearing, Campomar raised objections relating to issue estoppel and res judicata. PAR Anne Loo considered the arguments of the parties and concluded that the doctrine of res judicata applied and that she therefore had no jurisdiction to revisit the issues already decided by AR Chua. She was of the opinion that revisiting the issues in the second opposition was tantamount to her sitting on appeal against AR Chua’s decision in the first opposition, which had been made after hearing the evidence relating to the grounds of opposition, and that appellate jurisdiction, she rightly pointed out, belonged to the High Court, as set out in s 19(5) of the TMA 1992 which stated that the decision of the Registrar shall be subject to an appeal to the court.

10 PAR Anne Loo relied on Reebok International Ltd v Royal Corp [1988] SLR 921 (“Reebok International Ltd”) at 926, [13], where Chao Hick Tin JC (now a Judge of Appeal), after considering the principles relating to res judicata and issue estoppel, said:

Three essential conditions must therefore be present before this plea can be successfully raised. First, there must have been a final judgment or decision; second, there must be an identity of subject matter or issue in the former and in the present litigation; and third, there must be identity of parties.

She was of the view that AR Chua, in disallowing the first opposition, did dispose of the rights of the parties in respect of proprietorship of the mark “NIKE” and that AR Chua’s decision was therefore a final order and not an interlocutory one. She also found that there was identity of issues as “the reality of the matter is that both oppositions will proceed on the same grounds of opposition” (for instance, the likelihood of confusion and deception) and held that the TMA 1992 did not draw a distinction between oppositions against unaccepted marks and accepted ones. Nike Singapore, being a wholly owned subsidiary of Nike International, being the sole distributor of NIKE products here and having been granted a licence to use the NIKE trademark, was joined as a party in the second opposition as it operated the Singapore arm of the business and was the repository of all the evidence of use of the mark within this jurisdiction. She therefore was not able to conclude that the parties were not identical in both opposition proceedings.

11 PAR Anne Loo explained that the proviso to s 18 of the TMA 1992 empowered the Registrar of Trade Marks to re-advertise an application after acceptance but, in practice, that power was not often exercised. She also explained that the practice of the Registry of Trade Marks, regarding applications that have been advertised and were then subsequently amended, was to re-advertise the mark with the amendments made, under the said r 23 of the Trade Marks Rules.

12 Since PAR Anne Loo decided that she could not hear the second opposition, the Nike companies appealed to the High Court. Before me, the Nike companies submitted that res judicata did not apply in the circumstances of this case and that Campomar was estopped from relying on that doctrine in any case in the light of its conduct and representations after the first opposition.

Originating Motion No 26 of 2004 (“OM 26”)

13 OM 26 involved an application by Nike International to revoke trade mark registration number T86/01301A for the mark “NIKE” in class 3 in respect of “perfumery with essential oils” registered in the name of Campomar. The trade mark was registered on 30 December 1989 with the registration taking effect from 2 April 1986. The mark was registered as a word mark in block capital letters for which protection was granted in all fonts.

14 On 21 January 2002, Nike International filed its application for revocation pursuant to s 22(1) of the Trade Marks Act (Cap 332, 1999 Rev Ed) (“the TMA 1999”) which is in the following terms:

22.—(1) The registration of a trade mark may be revoked on any of the following grounds:

(a) that, within the period of 5 years following the date of completion of the...

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