COURT OF APPEAL CLARIFIES MEANING OF “EARLIER TRADE MARK”
Campomar SL v. Nike International Ltd [2011] SGCA 6
The Court of Appeal has had to consider the issue of what an “earlier trade mark” is, and when
the relevant date for determining whether there was an “earlier mark” ought to be.
The case was triggered by a revocation action that had been brought by Nike International Ltd
(“the Respondent”) against a Spanish company, Campomark SL (“the Appellant”). The Appellant
had, on 2 April 1986, applied to register “NIKE” in Class 3 for “perfumery with essential oils”.
Registration of the mark (“the 1986 Mark”) was obtained on 30 December 1989 but the 1986
Mark was deemed, pursuant to the Trade Marks Act 2005 (“the Act”), to take effect from 2 April
1986.
On 20 November 2001, the Respondent applied to register “NIKE” in Class 3 for “bleaching
preparations and other substances; cleaning; polishing, scouring and abrasive preparations; soaps;
all for laundry use or for use on sports goods or sporting apparel; perfumery; essential oils;
cosmetics; hair lotions; dentifrices; colognes; toiletries; shampoo; sunscreens; cosmetics; skincare
products; deodorants and antiperspirants for personal use; shaving preparations” (“the
Respondent’s 2001 Mark”).
The Appellant opposed the Respondent’s application on the basis of its earlier 1986 Mark,
following which the Respondent filed an application on 21 January 2002 to revoke the 1986 Mark
on the basis of its non-use. The Respondent succeeded in getting the 1986 Mark revoked.
Pursuant to the relevant provision of the Act, the Appellant’s rights to the 1986 Mark were
deemed to have ceased from 21 January 2002. The Respondent’s 2001 Mark was accepted and
published on 14 June 2006, whereupon the Appellant lodged a Notice of Opposition on the basis,
inter alia, that Section 8(1) of the Act prohibits the registration of a later trade mark if it is
identical with an “earlier trade mark” and if the goods/services concerned are identical with those
of the “earlier trade mark”. The Respondent contended that since the 1986 Mark was deemed to
have ceased to have effect only from 21 January 2002, the 1986 Mark fell within the definition of
an “earlier trade mark”.
The Principal Registrar of Trade Marks (“PAR”) held that the Appellant’s ground of opposition
failed. She took the view that the relevant point in time to consider if there was an “earlier trade
mark” was not the date on which the Respondent’s 2001 Mark was applied for (20 November
2001) nor the date of its publication (14 June 2006), but the date on which the Registrar decides if
the later mark could be registered, i.e. at the time of hearing of the opposition “or more
specifically, the point of time when the Registrar is about to enter the mark on the register”. In
this case, the date was 16 September 2009. The PAR held that since the 1986 Mark was no longer
a registered mark from 21 January 2002, it did not constitute an “earlier trade mark” for the
purposes of Section 2 of the Act. The Appellant therefore did not have a basis for opposing the
Respondent’s 2001 Mark.
The Appellant appealed against this decision to the High Court, contending that the PAR had erred
in law in determining what constituted an “earlier trade mark” for the purpose of Section 8(1) of
the Act.
The High Court Judge dismissed the appeal and agreed with the PAR that the relevant point in
time to be considered was at the time the opposition was heard. In coming to his decision, the
Judge noted that under Section 2 of the Act, an “earlier trade mark” was defined as a “registered
trade mark … , the application for registration of which was made earlier than the trade mark in
question”. He also noted that the relevant point in time in determining whether an earlier mark
existed was not defined in Section 2. The judge took the view that the application for the earlier
trade mark must not only have been made before the later trade mark in question, the earlier
trade mark must still, at the relevant time, have been a registered trade mark.
The Court of Appeal agreed with the PAR that the matter should be viewed as at the date of
hearing the opposition as this approach would be consistent with the wording of Section 8(1) and
would be sensible, pragmatic and realistic. The Court of Appeal reviewed the cases of Hugo Boss
AG v. Reemtsma Cigarettenfabriken GMBH [2009] SGIPOS 7 as well as the English cases of Kambly
SA Specialities de Biscuits Suisses v. Intersnack Knabber-Geback GMBH & Co KG [2004] EWHC 943
and Transpay Trade Mark [2001]RPC 10. It held that the effect of these cases is that “the relavant
date for determining the existence of an ‘earlier trade mark’ is the date when the mark is to be
entered on the register, and not the date of the registration application”. However, the Court of
Appeal also took cognisance of the Appellant’s argument that there was an additional problem
arising from a combination of the “relation-back provisions” in Sections 22(7) and 15(2) of the Act
which had to be contended with.
Under Section 22(7), a successful revocation of a mark takes effect either from the date of the
revocation application or earlier if the court is satisfied that there are grounds for the revocation
to be effective at a date before the revocation application was filed.
Section 15(2) provides that where an application for registration of a mark is granted, the mark is
deemed to be registered as of the date of the application for registration, viz. the effective date of
registration would “relate back” to the date of the trademark application. The Court of Appeal
noted that the effect of these two provisions is that “if the date of application for registration of a
later mark occurs before the date of application for revocation or an earlier mark, on a successful
registration of the later mark and revocation of the earlier mark, there would be two identical or
almost similar marks on the register at the same time at some point”. It added that therefore, one
of the objects of enacting Section 22(7)(b) must have been to address this precise problem.
The Court of Appeal accepted the Appellant’s argument that the fact remained that the 1986
Mark had remained on the register until 21 January 2002 and was only effectively removed after
the effective registration date of the Respondent’s 2001 Mark (20 November 2001). The Court of
Appeal held that allowing the registration of the Respondent’s 2001 Mark would be contrary to
the provisions of the Act, and the PAR should not have disregarded the fact that the registration
of the Respondent’s 2001 Mark would have given rise to there being on the register two identical
marks being owned by two different proprietors for a period of time (i.e. between 20 November
2001 and 21 January 2002). The remedy for this problem could have been resolved in this case by
resorting to Section 22(7)(b) of the Act. In considering this issue, the Court of Appeal found
guidance from the case of Riviera Trade Mark [2003] RPC 50, in particular the remarks of Mr Allan
James of the UK Trade Marks Registry to the effect that an earlier mark must be revoked effective
from a date which preceded the date of application for registration of a later conflicting mark
before the later mark could be validly registered. However, this was not done in this case.
Consequently, the appeal was allowed.
Concluding remarks
This case has therefore clarified that the relevant point in time for considering the issue of
whether there is an “earlier trade mark” is on the date of the hearing of the opposition or the
date when the mark is to be entered on the register, as the case may be. It has also highlighted
the importance for those seeking revocation of a conflicting earlier mark to ensure that the
revocation takes effect from the date on which the earlier trade mark is deemed to have been
registered.
(Case Note: March 2011)