Valentino Globe BV v Pacific Rim Industries Inc.

• Jurisdiction: Singapore
• Court: High Court (Singapore)
• Judgment Date: 29 June 2009
• Docket Number: Originating Summons No 844 of 2008
• Date: 29 June 2009

Valentino Globe BV

Plaintiff

and

Pacific Rim Industries Inc

Defendant

[2009] SGHC 150

Chan Seng Onn J

Originating Summons No 844 of 2008

High Court

Trade Marks and Trade Names–Registration–Whether trade mark for registration was similar to pre-existing trade marks–Section 8 (2) Trade Marks Act (Cap 332, 2005 Rev Ed)–Trade Marks and Trade Names–Registration–Whether application for trade mark to be registered was made in bad faith–Section 7 (6) Trade Marks Act (Cap 332, 2005 Rev Ed)

This was an appeal against the decision of the Principal Assistant Registrar of Trade Marks (“PAR”) wherein she had dismissed the appellant's application to oppose registration of the respondent's trade mark (“the Application Mark”). At the material time, the appellant (“the Appellant”) was the owner of trade mark registration rights in Singapore for an array of “Valentino” trade marks bearing multifarious designs (“the Valentino Marks”). The Application Mark, on the other hand, comprised of the words “Emilio Valentino” with a simple, stylised “V”. The Appellant contended before the PAR that the Application Mark was similar to its Valentino Marks, and there thus existed a likelihood of confusion on the part of the public (per s 8 (2) of the Trade Marks Act (Cap 332, 2005 Rev Ed)). It additionally alleged bad faith of the respondent (“the Respondent”) under s 7 (6) of the Trade Marks Act, claiming that not only did the Respondent hijack its Valentino Marks, it also did not even have the proprietary rights to the Application Mark. For this particular assertion, the Appellant relied on a statement in an affidavit filed by one Hor Soon Hong (“HSH”) in criminal proceedings, wherein he had stated that he (ie, HSH) owned the goodwill and reputation of the Application Mark in Singapore. The last plank in its bad faith allegation was that the Respondent had copied its Application Mark from a gentleman in Italy by the name of Emilio Valentino, who himself had attempted to register an identical mark in Italy, and additionally, that the Respondent had not sought his consent under r 14 of the Trade Mark Rules (Cap 332, R 1, 2000 Rev Ed) to use his name. The PAR eventually found that the opposition application failed on all grounds. The issues raised by the Appellant in this appeal were whether the PAR had erred in finding that the Respondent had not acted in bad faith, and whether she had erred in fact and law by dismissing the Appellant's ground of opposition under s 8 (2) TMA. The Appellant in this appeal also invited the court to draw an adverse inference pursuant to s 116 (g)of the Evidence Act (Cap 97, 1997 Rev Ed) that the Respondent had copied its Application Mark from Mr Emilio Valentino.

Held, dismissing the appeal:

(1) Viewing the Application Mark and the relevant Valentino Marks holistically, there was little visual, aural or conceptual similarity between them. Simply because the Application Mark and the relevant Valentino Marks shared a common denominator in the word “Valentino” did not mean that they were so visually, aurally or conceptually similar so as to cause confusion to the public. The Application Mark had to be viewed in its entirety and further, there were also distinguishing features between the Applicant Mark and the relevant Valentino marks: at [26], [28], [32] to [36] and [43].

(2) In determining whether there was similarity between the Applicant Mark and the relevant Valentino marks, the correct approach to adopt was the test of visual, aural and conceptual similarity and the “3-step approach” set out in The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR (R) 690 which established that there had to be (a) similarity between the offending mark and the registered mark; (b) the sign and mark had to be used in relation to similar goods and services; and (c) owing to (a) and (b), there existed a likelihood of confusion on the part of the public: at [30].

(3) The burden rested on the Appellant to prove bad faith on the part of the Respondent. Given the plethora of trade marks containing the word “Valentino”, the PAR did not err in finding that the incorporation of the word “Valentino” in the Application Mark ipso facto did not provide a sufficient basis to find that the Respondent had hijacked the Valentino Marks. As for the allegation that the Respondent did not own the Application Mark, the Appellant's reliance on the statement in HSH's affidavit was misconceived - it had to be seen in its broader context of his defence against allegations that he had, inter alia, employed a false trade description by using the Application Mark on his goods. He was not claiming to own the Application Mark per se:at [20], [21], [49], [50], [53] and [54].

(4) As for the allegation that the Respondent had copied the Application Mark from the gentleman in Italy, the furthest that one might go in the present case was that copying might have taken place and nothing else, for the Appellant had failed to prove the sting of its accusation that it was in fact the Respondent who copied Mr Emilio's trade mark, and not the other way around. Further, under r 14 of the Trade Mark Rules, the discretion rested with the Registrar of Trade Marks as to whether an applicant should be required to furnish evidence of consent of the person whose name appeared in a trade mark. The PAR in her discretion did not require such consent to be furnished despite having been shown evidence that there was a trade mark in Italy identical to the Application Mark and was being sought to be registered by one Mr Emilio Valentino. As the PAR never requested for such evidence of consent to be shown to her, the fact that the Respondent had not produced evidence of consent to use Mr Emilio Valentino's name could not be prejudicial to the Respondent, much less lead to an inference of bad faith: at [64], [65], [71] and [72].

(5) A s 116 (g)EA adverse inference was not to be lightly drawn especially when the issue was whether or not there was bad faith. It was only when the party who had the burden of proving the wrongdoing has made out a “complete case” or perhaps a very compelling case, that an adverse inference might be drawn against an alleged wrongdoer who had failed to produce evidence which could be produced to rebut the case made out by the opponent: at [70].

Brown Shoe Company Inc, Application by [1959] RPC 29 (refd)

Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 (refd)

Ling Uk Choon v Public Accountants Board [2004] 3 SLR (R) 517; [2004] 3 SLR 517 (refd)

London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 (refd)

McDonald's Corp v Future Enterprises Pte Ltd [2005] 1 SLR (R) 177; [2005] 1 SLR 177 (refd)

Nautical Concept Pte Ltd v Jeffery Mark Richard [2007] 1 SLR (R) 1071; [2007] 1 SLR 1071 (refd)

Polo/Lauren Co, LP, The v Shop In Department Store Pte Ltd [2006] 2 SLR (R) 690; [2006] 2 SLR 690 (refd)

PP v Nurashikin bte Ahmad Borhan [2003] 1 SLR (R) 52; [2003] 1 SLR 52 (refd)

Royal Enfield Trade Marks [2002] RPC 24 (refd)

Trade Mark Application m 2011973 by Team Lotus Ventures Ltd to register the trade mark, In the matter of, and in the matter of Opposition thereto under Opposition m 45584 by Group Lotus Ltd (23 October 1998, UK Intellectual Property Office decision) (refd)

Wagamama Ltd v City Centre Restaurants Plc [1995] FSR 713 (refd)

Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR (R) 1073; [2007] 2 SLR 1073 (refd)

Consumer Protection (Trade Descriptions and Safety Requirements) Act (Cap 53, 1985 Rev Ed) ss 4, 5, 6

Criminal Procedure Code (Cap 68, 1985 Rev Ed) s 62 (a)

Evidence Act (Cap 97, 1997 Rev Ed) s 116 (g) (consd)

Rules of Court (Cap 322, R 5, 2006 Rev Ed) O 55 (consd);O 53, O 55 rr 2 (1), 6 (5), O 87 r 4 (2)

Trade Marks Act (Cap 332, 2005 Rev Ed) ss 7 (6), 8 (2) (consd)

Trade Marks Rules (Cap 332, R 1, 2000 Rev Ed) r 14 (consd)

Ponnampalam Sivakumar (Joseph Lopez & Co) for the appellant

Samuel Seow and Jonathan Yuen (Samuel Seow Law Corporation) for the respondent.

Chan Seng Onn J

Introduction

1 This is an appeal from the decision of the Principal Assistant Registrar of Trade Marks (“PAR”), who had in her written grounds of decision (“the GD”) dated 29 May 2008 dismissed the appellant's application to oppose the registration of the respondent's trade mark (“the Application Mark”). At [117] of the GD, the PAR remarked that the opposition had “fail [ed] on all the grounds pleaded”.

2 Dissatisfied with the PAR's decision, the appellant (“the Appellant”) brought this appeal. Having heard arguments from both parties on 17 March 2009, my findings and conclusion do not depart from the PAR's. Consequently, I dismissed the appeal.

Background facts

3 The Appellant is Valentino Globe BV care of Prof JH Bavincklaan 7, 1183 Amstelveen, The Netherlands. At the time the notice of opposition was filed, which was 25 June 2004, the Appellant had owned trade mark registration rights in Singapore for an array of “Valentino” trade marks bearing multifarious designs. These “Valentino” trade marks or a subset of these “Valentino” marks shall be collectively termed, for the purposes of my decision, the “Valentino Marks”.

4 The Application Mark, on the other hand, is an “Emilio Valentino & V Device” as shown below:

This is the offending trade mark which registration the Appellant had opposed.

5 On 18 December 2003, Pacific Rim Industries Inc (“the Respondent) of 5359 Valley Blvd, Los Angeles California 90032, United States of America, filed the above Application Mark for registration in respect of “Leather goods; all included in Class 18”. The registration application was accepted and advertised on 25 June 2004 in the Trade Marks Journal.

6 Subsequent to the registration of the Application Mark, the Appellant filed a notice of opposition against the registration of the Application Mark on 25 August 2004 on the strength of several...