Reemtsma Cigarttenfabriken GMBH v Hugo Boss AG (No 2)

• Jurisdiction: Singapore
• Judge: Belinda Ang Saw Ean J
• Judgment Date: 10 September 2003
• Neutral Citation: [2003] SGHC 205
• Docket Number: Originating Motions Nos 600007
• Date: 10 September 2003
• Published date: 03 October 2003
• Year: 2003
• Plaintiff Counsel: Low Chai Chong, Ian Fok and Catherine Lee (Rodyk & Davidson)
• Citation: [2003] SGHC 205
• Defendant Counsel: Dedar Singh Gill and Paul Teo (Drew & Napier LLC)
• Court: High Court (Singapore)
• Subject Matter: Whether "enuine use" of marks within statutory period,Trade Marks Act (Cap 332, 1999 Rev Ed) s 22,Whether court retains discretion to maintain mark on register,Revocation of registration for non-use,Grounds for revocation under s 22 of the Trade Marks Act,Trade Marks and Trade Names,Revocation

1 The Applicant, Reemtsma Cigarettenfabriken Gmbh, is in the business of the manufacture and sale of cigarettes. The Respondent, Hugo Boss AG, is in the business of design, manufacture and sale of high fashion menswear and other luxury goods and is the proprietor of two registered marks in Singapore, the subject matter of these proceedings. The registered marks are: (a) Trade Mark no. T74/59825G “BOSS” for cigarettes in Class 34 and (b) Trade Mark no. T87/05010G “HUGO BOSS” in respect of cigarettes, cigars, tobacco for cigarettes, pipe tobacco, lighters and matches in Class 34. For convenience, both registered marks are referred to collectively as the “Marks”.

2 The Applicant filed Originating Motion nos. 600007/2002 and 600008/2002 on 5 February 2002 to have the Marks removed for non-use pursuant to section 22(1)(a) and/or (b) of the Trade Marks Act (Cap.332). It is convenient at this point to set out the provisions of section 22, so far as material.

“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 registration procedure, it has not been put to genuine use in the course of trade in Singapore, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

(b) that such use has been suspended for an uninterrupted period of 5 years, and there are no proper reasons for non-use;

……

(2) For the purposes of subsection (1), use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in Singapore includes applying the trade mark to goods or materials for the labelling or packaging of goods in Singapore solely for export purposes.

(3) The registration of a trade mark shall not be revoked on the ground mentioned in paragraph (a) or (b) of subsection (1) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the 5 year period and before the application for revocation is made.

(4) Any commencement or resumption of use referred to in subsection (3) after the expiry of the 5 year period but within the period of 3 months before the making of the application for revocation shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.

….

(7) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.

.… ”

3 The issues before me are:

(i) Was there “genuine use” of the Marks within the statutory period; and if not, were there proper reasons for non-use;

(ii) Whether the Court has discretion to allow a mark to remain on the register even though the grounds for revocation under section 22 of the Act are made out; and if so, whether the Court should exercise its discretion in this case to allow the Marks to remain.

(i) Was there “genuine use” of the Marks

4 The BOSS mark was registered in 1974. The HUGO BOSS mark was registered in 1987. The Originating Motions were filed on 5 February 2002. Another date to note is the date three months prior to the date of the applications, namely 6 November 2001.

5 The Applicant submits that it has made out a prima facie case for the removal of the Marks from the register. The Respondent contends, however, that genuine use has been made of the Marks in Singapore in the five years ending three months prior to the date of the applications for revocation under section 22 of the Act. By section 105 of the Act, if a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it.

6 Affidavits were filed by both sides. I shall begin with the Applicant’s. The Applicant approached the issue of non-use by bringing forward general evidence from the market to establish that no real use of the Marks in this country could be found. Commercial Investigations was appointed by the Applicant to conduct investigations in July 1999 and in November 2001. The chief investigator, Philip Tan See Wei (“Tan”), in his affidavit of 5 February 2002 detailed the investigations carried out in Singapore and the results of the investigations were that during the relevant period the Respondent had not used in the course of trade the Marks.

7 Tan confirmed that in July 1999 his company received instructions from the Applicant’s lawyers to determine whether the Marks had been used in Singapore in respect of cigars and cigarettes during the previous five years. Ms Leo Ying another experienced investigator was assigned the task as well.

8 The market investigations in Singapore covered a cross-section of the tobacco trade between 6 and 7 July 1999. The investigators visited retail outlets comprising provision shops, supermarkets, eating places, boutique tobacco retail outlet dealing in cigars, cigarettes and other tobacco products. They also visited Poh Trading, a local tobacco wholesaler, as well as Bluebell Enterprise Pte Ltd who is a well-known and established distributor of cigars, cigarettes and tobacco products. None of the investigators came across at all these places cigars, cigarettes, tobacco for cigarettes, pipe tobacco, lighters and matches bearing either the trade mark “BOSS” or “HUGO BOSS”. All 96 interviewees also personally had never heard of “BOSS” or “HUGO BOSS” being used on the relevant goods in Singapore.

9 In November 2001, Tan received instructions from the Applicant’s lawyers to conduct another round of investigations to confirm that the Marks had not been used after the first survey. The same survey as the first was carried out between 6 November 2001 and 27 November 2001 with visits to the same outlets. Commercial Investigations concluded that the Marks had not been used on the relevant products in Singapore for five years prior to their first investigation in 1999 nor thereafter up to the conclusion of the second investigation in 2001.

10 Tan also deposed that his operative interviewed Alson Ng, an employee in a HUGO BOSS franchised shop in Ngee Ann City. He was someone familiar with the tobacco trade and he had not come across in Singapore the use of the Marks in respect of the relevant goods in Singapore. John Kammermen, the Regional Director of Imperial Tobacco (Asia) Pte Ltd filed an affidavit on behalf of the Applicant. He stated categorically that for the past few years he had visited “Hugo Boss” boutiques in Singapore but he has not seen “Boss” and/or “Hugo Boss” brand cigars, tobacco products or smoker’s accessories on sale in such boutiques.

11 The Respondent’s contention is that the Marks have been used on lighters and cigars. As regards lighters, the Respondent relies on product catalogues it would have sent from Germany to its franchisees worldwide, Singapore being one of the countries. In the usual course of trade, the product catalogues would be despatched before the start of each season. Customers using the order forms provided are free to order products featured in these catalogues if the items are not available on display. The Respondent exhibited in the affidavit of its legal counsel, Judith Eckl, the following product catalogues: Hugo Boss Collection 1998/1999, 1999/2000 and 2002/2003.

12 Ms Eckl said that featured in those catalogues were cigars, lighters and other tobacco accessories. Her statement is, however, inaccurate insofar as cigars are concerned. The Respondent later conceded that no pages on cigars were shown in the product catalogues exhibited in Ms Eckl’s affidavit. Neither were loose-leaf inserts on cigars added to the product catalogues.

13 The Respondent relies on one single act of use of the Marks for cigars. There was a cigar sampling function that took place at an annual Hugo Boss Asian Buyers’ Conference held in Singapore in November 1998. It has been said that BOSS cigars were distributed during the Conference to introduce BOSS cigars to all the buyers present for the purpose of attracting interest and orders.

14 Counsel for the Applicant, Mr. Low Chai Chong, drew my attention to the inadequacies of the Respondent’s affidavit evidence. Although Mr. Low accepts that lighters are featured in the 1998/1999 and 1999/2000 catalogues, they do not prove that lighters were sold in Singapore. Given the Hong Kong address and telephone/fax numbers printed...