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Copyright infringement: A ground for invalidation and opposition of trademark in Singapore
30 August 2024
Background
Henkel Polybit Industries Ltd. is a Middle Eastern entity which develops and produces water-proofing and corrosion-inhibiting sealants and coating specifically for the construction industry. They operate in at least 25 jurisdictions worldwide including in Singapore. Initially known as Polybit Industries Ltd. which was incorporated in 1995 in the United Arab Emirates, they were acquired by Henkel AG & Co. KGaA and renamed as Henkel Polybit Industries Ltd. (the initiator).
Polybit Industries Far East Sdn. Bhd. (the respondent) is a Malaysian company which is involved in supplying construction chemicals, waterproofing membranes, joint sealants, liquid coatings and anti-corrosion products to countries in Southeast Asia as well as Singapore. The respondent was formed following an agreement between the shareholders of the initiator and the respondent.
The initiator had applied a consolidated action to invalidate the respondent’s registered trademark as well as the respondent’s pending trademark applications, all of which had incorporated the Initiator’s Polybit logos.
Copyright
The initiator had argued that it had been using the word Polybit and its Polybit logo as trademarks since their inception in 1995 (the Polybit 1995 logo). There were subsequent iterations of the Polybit and Polybit logo which were created and first published in the UAE sometime around 2010 (the Polybit 2010 logo) as well as 2016 (the Polybit 2016 logo).
The Polybit 1995 logo, the Polybit 2010 logo and the Polybit 2016 logo were all created by one of its employees which qualifies the logos as original works. By virtue of being the employer of the creator of the said mark, the initiator thus enjoys copyright in the three different iterations, i.e. the Polybit 1995 logo, the Polybit 2010 logo and the Polybit 2016 logo.
Accordingly, the Registrar had held that there was copyright infringement as there was a substantial reproduction of the initiator’s Polybit logos by the respondent.
Invalidation and opposition
The Registrar held that the initiator had succeeded in establishing the grounds of invalidation of the respondent’s marks.
The Registrar held that the argument of bad faith had been established on account of the respondent having knowledge of the initiator’s use of the Polybit logo and trademarks during its time as a direct representative of the initiator. There had been evidence that the respondent had been appointed as a distributor of the initiator’s products in the Far East region. Also, there was evidence that the respondent had represented on several occasions that it is the initiator’s representative.
Furthermore, there was evidence that the respondent had concealed its use of the initiator’s Polybit logos as well as the initiator’s sub-brands in addition to claiming that the respondent was the owner. Furthermore, the invoices which the respondent had adduced as evidence of use of its marks are not genuine. Not only do those sales invoices not point to sales of products in Singapore, there was also an indication of a domain name on the said invoice which was only created after the date of the said invoices.
The Registrar had also held that essentially, the respondent had adopted the most “distinctive components” of the initiator’s Polybit marks in the respondent’s marks.
In addition, the Registrar had also held that the respondent cannot make itself out as the first user as there was evidence to the contrary which showed that the initiator’s sole distributor in Singapore had used the Polybit 1995 logo first before the respondent.
Lastly, on the well-known ground, the Registrar had held that although the respondent was acting as a representative of the initiator, the evidence of the use, sales figures and benefits which would have inured to the initiator lacked specificity in relation to the specific marks and particular goods.
With the initiator succeeding in its claim for invalidation and opposition, the respondent’s trademark registration was held to never have been made while the respondent’s marks that had been opposed could not proceed to registration.
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