Singapore Trademark Invalidation Action is Big Boxing Bout

11 August 2017

Singapore Trademark Invalidation Action is Big Boxing Bout

On January 26, 2005, Big Box Corporation Pte Ltd (the proprietor) secured registration for the trademark BIG BOX in Class 35 in Singapore, with respect to the following:

 

“The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods in retail shops, supermarkets, hypermarkets, convenience stores, wholesale outlets, factory outlets, warehouse retail outlets, retail outlets and big department stores; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise internet web site [sic] or by means of telecommunication; compilation of mailing lists; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunications; telephone and all other communication and telecommunication ordering services; direct mail advertising; business advisory and business services; advertising services; display services for merchandise; publicity services; marketing and promotional services; market analysis and research; importexport agency services; procurement and buying of goods on behalf of a business; window dressing; sales and distribution services; sales promotion for others; advisory and consultancy services relating to the aforesaid services.”

 

Courts (Singapore) Pte Ltd (the applicant), on March 12, 2015, applied for a declaration that the aforementioned trademark should not have been allowed registration and should be removed. It sought to invalidate the mark on the following grounds: (i) that, under Section 7(1) (b) of the Singapore Trade Marks Act (the act), it was devoid of any distinctive character as an indication of the trade origin of the services for which it was registered; (ii) under Section 7(1) (c), the mark was descriptive of the characteristics of the services for which it was registered, and/or (iii) per Section 7(1)(d), that the mark had become customary in the current language and practice of the trade.

 

Taking into consideration the circumstances of the matter, this appears to be a tall order. It is worthy to note that the applicant was not seeking to invalidate the proprietor’s mark on the grounds of non-use, nor, that it was filed in bad faith. Instead, it sought to succeed by establishing the mark as being devoid of distinctiveness and descriptive or generic at the date of the application, and that it should thus be declared invalid ab initio.

 

Further, the proprietor may rely on Section 23(2) of the act, which provides that “[a registered trademark] shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered” to overturn a challenge reliant on Section 7(1)(b), (c), and/or (d).

 

In considering the matter, the hearing officer held that:

 

The ground for invalidation under Section 7(1)(b) failed upon consideration of all the evidence adduced by the applicant. The applicant had failed to discharge the burden of proof placed upon it in an invalidation action under Section 23. It had also failed to satisfy the hearing officer that, in relation to the various services for which the mark was registered, it was devoid of distinctiveness at the date of application. The hearing officer reiterated his view that, at the time of application, the mark was inherently distinctive and was capable of acting as a badge of trade origin.

 

The ground for invalidation under Section 7(1)(c) failed because, upon assessment of the specifications of the proprietor’s mark, the mark BIG BOX, did not describe or designate the characteristics of the registered services;

 

The ground for invalidation under Section 7(1)(d) failed despite the applicant adducing evidence (by way of media releases, business and newspaper articles, a BlogSpot entry, etc.) over a span of 11 years showing that the phrase “BIG BOX” had generated sufficient consumer and public sentiment that the phrase would be known to refer to a large retail or warehouse establishment. The hearing officer held that the evidence adduced was sporadic, and mostly referred to situations outside of Singapore. As such, it was deemed insufficient to satisfy the burden of proof imposed on the applicant;

 

Despite the applicant failing on all three grounds, the hearing officer nonetheless assessed the issue of whether the mark had acquired distinctiveness since the date of application. The proprietor submitted market survey results carried out in various locations in Singapore. These results recorded that 25 percent of the interviewees linked the term BIG BOX to the proprietor’s mall; however, numerous discrepancies were noted when assessing the results, thereby diminishing the weight of the evidence.

 

The hearing officer affirmed that, whilst there remains a role for market survey evidence, very careful consideration must be given to: the form and manner of the questions posed; and the process for administering and recording responses – to ensure that the evidence can be relied upon. 


About the author

 Denise Mirandah

Denise Mirandah

As a Director, Denise Mirandah has played a major role in the international promotion of the company, helping to share the family values of Mirandah Asia and its successful one-stop shop approach to IP with clients all over the world.

Denise has had a passion for IP from an early age and, as the daughter of Patrick and Gladys Mirandah, grew up in a household where IP was discussed regularly. She studied her Bachelor of Laws at the prestigious Cambridge University in the UK. There, she underwent rigorous academic training with the world’s most eminent legal minds, including Professor Bill Cornish, a renowned authority on IP law.

During her summer holidays, she attended Harvard University in the US to hone her drafting skills and familiarise herself with the American legal system, voluntarily working as part of Harvard’s pro bono programme in Boston.

Denise has been admitted to the Bar in Singapore since 2009, and in Brunei as of 2017.

 Eu Joe Loh

Eu Joe Loh

Loh Eu Joe is a trademark specialist with mirandah asia. He is in charge of various trademark-related matters, conducting comprehensive searches, advising on contentious issues and prsecuting non-contentious filings.

Law Firms


Law firms

Please wait while the page is loading...

loader