Nike International Ltd v Campomar SL

• Court: Court of Appeal (Singapore)
• Judge: Chao Hick Tin JA
• Judgment Date: 16 January 2006
• Neutral Citation: [2006] SGCA 2
• Citation: [2006] SGCA 2
• Defendant Counsel: Patrick Yap and Prithipal Singh (K L Tan and Associates)
• Plaintiff Counsel: Harry Elias SC and Zee Yeng Yun (Harry Elias Partnership)
• Published date: 17 January 2006
• Docket Number: Civil Appeal No 45 of 2005
• Date: 16 January 2006
• Subject Matter: Revocation,Trade Marks and Trade Names,Appeal against High Court decision not to revoke registration of trade mark on ground of non-use for period of five years immediately preceding date of application,Whether overwhelmingly convincing evidence of single transaction use of mark within five-year period adduced by proprietor of mark,Section 22(1)(a) Trade Marks Act (Cap 332, 1999 Rev Ed)

16 January 2006

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

1 This was an appeal by the appellant against the decision of the High Court (reported at [2005] 4 SLR 76) reversing the decision of the Principal Assistant Registrar of Trade Marks (“PAR”) which revoked a trade mark registered by the respondent on the ground that for the relevant period of five years there had been non-use of the mark by the respondent. We heard and allowed the appeal on 22 November 2005, thus upholding the decision of the PAR to have the trade mark revoked. We now give our reasons.

The background

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

3 The respondent, Campomar Sociedad Limitada (“Campomar”), a Spanish company, applied to register the mark “NIKE” in class 3 of the International Classification of Goods in respect of “perfumery with essential oils”. The mark was duly registered on 30 December 1989 with the registration taking effect from 2 April 1986.

4 On 21 January 2002, Nike International filed an application to have the mark revoked under s 22(1) of the Trade Marks Act (Cap 332, 1999 Rev Ed) (“TMA”). In its statement of grounds, Nike International declared that it wished to have the registration of the mark made in favour of Campomar revoked because it wanted to register Singapore Trade Mark No T01/17954H NIKE 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.

5 By a counter-statement, Campomar disputed Nike International’s assertion that for the period of five years immediately preceding the application to revoke, the mark had not been made use of by Campomar. To substantiate this assertion, its principal manager, Mr Antonio Ruiz Corrales (“Corrales”), filed three statutory declarations. In his first statutory declaration, Corrales exhibited sales invoices issued during the years 1996 to 2001 to demonstrate use of the mark. In his second statutory declaration, Corrales explained that the abbreviations “NM”, “NW” and “NC”, which appeared in an invoice of 12 July 2001 (which he later clarified should read 27 July 2001) and which was exhibited in his first statutory declaration, stood for “NIKE MAN”, “NIKE WOMAN” and “NIKE” respectively. In his third statutory declaration, he exhibited a bill of lading showing that products bearing the NIKE mark had been shipped by De Ruy Perfumes SA to a Singapore company called Bhojwani’s Pte Ltd (“Bhojwani’s”), as well as a letter dated 11 December 2003 from one Silvia Martos of Geodis Teisa, a freight forwarder of De Ruy Perfumes SA.

6 On the other hand, Nike International filed four statutory declarations to substantiate its claim of non-use by Campomar. The first was a report by a private investigator, Mr Wilfred Anthony (“Anthony”), that his enquiries in November 2001 at ten major shopping centres in Singapore showed that no NIKE perfumes were sold at those centres. Anthony also made some discreet inquiries at Bhojwani’s and was told by a female employee who claimed to be in charge of the office (“Kalai”) that it did not sell any perfumes in Singapore but only in Indonesia. Kalai also informed Anthony that it did not deal in NIKE perfumes.

7 The second statutory declaration was made by the finance director of Nike Singapore (the exclusive licensee of Nike International in Singapore), Mr Hughes, where he referred to, inter alia, the reputation of the NIKE brand and a survey undertaken by a market researcher, AC Nielsen, in August 2001, which showed that at least 55% of the persons polled identified perfume bearing the NIKE mark as being associated with Nike International.

8 The third statutory declaration established that Galaxy Enterprises Pte Ltd, the last known distributor of NIKE perfumery products in Singapore, had ceased to sell such products by 5 November 1996.

9 The fourth statutory declaration sought to explain that in relation to the invoice of 27 July 2001, the shipping term “EXW”, which stood for “Ex Works”, meant that the goods were sold on the basis that the buyer would collect the same at the seller’s premises.

10 At the hearing before the PAR, it appeared to be common ground that the evidence touching on the activities of Galaxy Enterprises Pte Ltd was irrelevant as it related to a period prior to the relevant five-year period under s 22(1)(a) of the TMA, ie 21 January 1997 to 21 January 2002. The central issue canvassed before the PAR was whether there was any genuine use of the mark during the five-year period. Relying on s 105 of the TMA, the PAR noted that the burden rested on the proprietor, in this case Campomar, to show what use had been made of the mark and, on the evidence, held that Campomar had failed to discharge the burden. Consequently, the PAR revoked the registration of the mark by Campomar. Campomar appealed to the High Court.

11 Before the appeal was heard in the High Court, Campomar obtained leave to file a further affidavit wherein a 2001 price list was exhibited. In this affidavit, Corrales, besides explaining why this list could not have been produced earlier, referred to the invoice of 12 July 2001 relating to a sale by De Ruy Perfumes SA to Bhojwani’s and said:

7 On page 1 of the Bhojwani invoice under the caption “Free Goods”, the following items correspond to and are found in the 2001 Price List:

(a) NW EdP N/S Merchandiser Tin 7.5 ml;

(b) Nike Woman EdP N/S 7.5 ml.

8 On page 2 of the Bhojwani invoice under the caption “Products”, the following items correspond to and are found in the 2001 Price List:

(a) NC EdT N/S 100 ml;

(b) NC EdT N/S 50 ml;

(c) NW EdP N/S 100 ml;

(d) NW EdP N/S 50 ml;

(e) NW EdP N/S 25 ml;

(f) NM EdT N/S 100 ml;

(g) NM EdT N/S 50 ml;

(h) NM EdT N/S 25 ml.

Corrales further clarified that the date on the 12 July 2001 invoice should read 27 July 2001.

12 The judge below was persuaded that the invoice “related to perfume products of De Ruy Perfumes SA and that the trade mark “NIKE” was used on the products, albeit with an additional...