The Intellectual Property Office of Singapore (IPOS) recently decided on a trademark invalidation case involving the famous Raffles mark, according to reports from KASS International.

On April 30, 2003, applications to invalidate a registered “Raffles” word mark in Class 35 (for secretarial services, book keeping services and business management consultancy) and Class 36 (for financial consultancy) were filed by Raffles Fine Arts Auctioneers (the applicant) on the grounds that they owned prior rights to the unregistered marks “Raffles” and “Raffles Fine Arts” used for business consultancy and financial solutions, and that the use of the registered “Raffles” mark by the registered owners, Raffles Corporate Consultants amounted to passing off.

IPOS found that two of the three requirements to establish passing off was not fulfilled by the applicant. Neither goodwill nor misrepresentation was established, the KASS lawyers said on the firm’s website.

“In consideration of the low sales of the applicant’s consultancy services, specifically S$165,000 (US$121,000) from a total of 30 transactions over an eight year time span, and the sparse and insignificant promotion of the trademarks in Singapore (three posters in the period of eight years), IPOS held that there was insufficient goodwill in the marks to support an action of passing off,” they wrote. “In fact, from the evidence adduced (invoices, receipts, posters and stationery), IPOS found that the trademark used in relation to the consultancy services offered by the Applicant was ‘Raffles Fine Arts Auctioneers’ and not the word ‘Raffles’ solely.”

KASS reports that the marks of the applicant and the marks of the registered proprietors were held to be different visually, aurally and conceptually by IPOS.That “Raffles” was the dominant part of the unregistered mark was disagreed upon by the Registrar at IPOS. The Registrar stated that the mark had to be assessed as a whole, i.e., as “Raffles Fine Arts Auctioneers.”

“In addition to the surprising comment above from the Registrar, the Registrar also voiced her observation that ‘Raffles’ is a commonly used word in businesses in Singapore,” the KASS lawyers wrote. “The word is the name of the founder of Singapore and therefore Singaporeans are used to names incorporating ‘Raffles’ in trade. In view of this observation, consumers are naturally more discerning of marks in which the word ‘Raffles’ subsists and will focus on other dissimilar elements within the mark.”

Also uncovered was that the services provided by both parties are different. From the posters and newspaper articles submitted to IPOS, it was concluded that the applicant was very much involved in the arts field, which includes auction services and art galleries, and was not involved in secretarial and financial services as the registered proprietors were.

“Although the applicant argued that it had every intention to go into the other services mentioned in its Memorandum of Association (M&A), IPOS disagreed with that argument stating that an M&A is usually drafted in general terms for convenience’s sake. With wide terms, a company need not amend the M&A when they decide to venture into other areas of business. Therefore, the M&A cannot be conclusive evidence in relation to the activities a business partakes in. Instead, actual evidence tendered by the parties will prove the specific services the parties are involved in,” the lawyers wrote.

“This dismissal of the invalidation application by IPOS is a stern warning to owners of trademarks to register their trademarks in relation to the businesses they are in and in businesses they intend to venture into in the near future. As depicted above, reliance on unregistered marks and the tort of passing off is too risky,” the KASS lawyers wrote.

“Since there is no requirement to submit evidences of use of the trademark in Singapore before securing registration (as is required in some foreign countries – the Philippines and the US, for example), a trademark can be registered although it has not yet been put into use. Although the registered mark can be cancelled for non-use, the period of consecutive non-use is a considerable term in Singapore, that being five years,” they said.