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Aussino-International-V-Aussino-(Usa

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Aussino-International-V-Aussino-(Usa IN THE HEARINGS AND MEDIATION DEPARTMENT OF THE INTELLECTUAL PROPERTY OFFICE OF SINGAPORE REPUBLIC OF SINGAPORE Trade Mark No. T9910601C 22 October 20191 IN THE MATTER OF A TRADE MARK REGISTRATION IN THE NAME OF AUSSINO (USA) INC. AND APPLICATION FOR REVOCATION THEREOF BY AUSSINO INTERNATIONAL PTE LTD Hearing Officer: Ms Tan Mei Lin Principal Assistant Registrar of Trade Marks Mr Paul Teo (Ravindran Associates LLP) for the Applicant Mr Zachary Tay (Withers KhattarWong LLP) for the Registered Proprietor GROUNDS OF DECISION 1 What constitutes “use in relation to goods” for the purposes of maintaining a trade mark registration (and resisting a non-use revocation)? Is there “use in relation to goods” if a sign is used as a trading name? If so, are there any other requirements that must be satisfied? For example, must the sign be affixed to the goods in order for it to be regarded as “use in relation to goods”? Further, to what extent does use of a variant form constitute genuine use of the trade mark as registered? These are some of the issues I have to consider in this case. 1 The parties requested to be heard “on paper” only (i.e. without an oral hearing) and this was endorsed by way of direction. A hearing date was fixed so that the timelines for written submissions could run backwards from it. [2019] SGIPOS 18 2 Aussino (USA) Inc. is the Registered Proprietor (“the Proprietor”) of the following series of marks: (“the Subject Mark”), in Singapore in Class 24 in respect of “Textiles and textile goods, not included in other classes; bed and table covers; bed blankets; bed clothes; bed covers; bed linen; bedspreads; all included in Class 24.” (“the Relevant Goods”). The Subject Mark was registered in Singapore on 22 September 1999. 3 On 24 July 2018, Aussino International Pte Ltd (“the Applicant”) filed an application for revocation of the Subject Mark. The Proprietor filed its counter- statement and evidence in support of the Subject Mark on 9 November 2018. The Applicant did not file any evidence in these proceedings. 4 A Pre-Hearing Review (“PHR”) was held on 25 July 2019, wherein the Registrar directed the Applicant to amend the Statement of Grounds to specify the relevant period of non-use it was relying on under section 22(1)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”). The amended Statement of Grounds was filed on 1 August 2019 and the relevant period was stated as 23 July 2013 to 22 July 2018. 5 At the PHR, the parties elected to be heard “on paper” without an oral hearing. Parties’ arguments were made via written submissions filed on 16 September 2019 and written submissions in reply filed on 7 October 2019. Grounds of Revocation 6 The Applicant seeks to revoke the Subject Mark in its entirety under Section 22(1)(b) of the Act in these proceedings. Alternatively, where grounds for revocation exist in respect of only some of the goods, the Applicant seeks revocation in relation to those goods by virtue of Section 22(6) of the Act. Evidence 7 Only the Proprietor filed evidence in these proceedings. Its evidence comprises a Statutory Declaration made by Bertram Leslie Hendrick, Director of the Proprietor, on 5 November 2018 in Singapore (“BLH’s SD”). Burden of Proof 8 Under Section 105 of the Act, the Proprietor has the burden of showing that it has made genuine use of the Subject Mark in Singapore. - 2 - [2019] SGIPOS 18 Background 9 I briefly summarise the Proprietor’s evidence to the extent necessary to flesh out the background to this dispute. 10 The Proprietor is a company incorporated in the United States of America. It acquired the Subject Mark on 26 February 2016 after a series of ownership changes. The ownership history of the Subject Mark is as follows: (a) On 22 September 1999, the Subject Mark was first registered by Aussino Group Ltd, a company incorporated in Singapore (“AGL”); (b) On 3 March 2014, AGL assigned the Subject Mark to Aussino Inc., a company incorporated in the British Virgin Islands; (c) On 26 February 2016, Aussino Inc. assigned the Subject Mark to the Proprietor. 11 The Subject Mark was first used in Singapore sometime in 1995 by Aussino Home Fashions Pte Ltd (“AHF”). AHF continued to use the Subject Mark in Singapore until around 31 March 2014. AHF entered into liquidation around 6 February 2015, and was dissolved around 7 February 2017. As a consequence, use of the Subject Mark in Singapore was suspended temporarily. 12 The Applicant is a company incorporated on 3 July 2014 by a director of the Proprietor, one Anthony Lim (“Anthony”). Anthony was the Applicant’s sole shareholder and director until October 2017. Thereafter, Gao Wen Xi (“Gao”) also became a shareholder and director of the Applicant2. 13 Sometime in October 2017, Anthony, as a representative of the Proprietor, entered into discussions with Gao and her husband, Benjamin Loi, concerning the revival of “Aussino” in Singapore. Parties agreed that the Applicant would be the corporate vehicle for this purpose. 14 Having obtained the Proprietor’s provisional consent to use the Subject Mark, the Applicant opened its first “Aussino” retail store in Singapore in January 2018. The Applicant also set up a Facebook page under the account name “Aussino SG” to assist in marketing the Relevant Goods. 15 The Proprietor thus relies on the Applicant’s use of the Subject Mark as its own use for part of the relevant period. MAIN DECISION Ground of Revocation under Section 22(1)(b) 16 Section 22(1)(a), (1)(b) and (2) of the Act reads: 2 Anthony resigned as a director of the Applicant on 11 May 2018. - 3 - [2019] SGIPOS 18 22. – (1) The registration of a trade mark may be revoked on any of the following grounds: (a) that, within the period of 5 years following the date of completion of the registration procedure, it has not been put to genuine use in the course of trade in Singapore, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) that such use has been suspended for an uninterrupted period of 5 years, and there are no proper reasons for non-use; … (2) For the purposes of subsection (1), use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in Singapore includes applying the trade mark to goods or to materials for the labelling or packaging of goods in Singapore solely for export purposes. (emphasis mine) 17 The Applicant alleges that the Subject Mark “has not been used for a continuous period of 5 years or used in relation to the [Relevant Goods], in particular from 23 July 2013 to 22 July 2018”. 18 The Proprietor contends that the Subject Mark had been so used during two periods of time within the relevant period. These periods are: (a) From 24 July 2013 to 31 March 2014 (“the First Period”); and (b) From October 2017 to 11 May 2018 (“the Second Period”). 19 It is the Proprietor’s case that during the First Period, the Subject Mark was used by AHF with the Proprietor’s consent and during the Second Period, the Subject Mark was used by the Applicant with the Proprietor’s consent. Proprietor’s evidence of use The First Period 20 The Proprietor submitted the following evidence to show that there was genuine use of the Subject Mark in relation to the Relevant Goods during the First Period: No. Category of Evidence Dated Found In 1 Extracts from the “Aussino Last post was made on BLH’s SD, Tab 2, Singapore” Facebook page, 19 February 2014 pp 19-26 operated by AHF (“the Original FB Page”) - 4 - [2019] SGIPOS 18 No. Category of Evidence Dated Found In 2 An article from a third-party 22 March 2014 BLH’s SD, Tab 3, website, pp 28-29 www.singpromos.com 3 Photos of an “Aussino” retail Sometime in 2011 BLH’s SD, Tab 4, store at Parkway Parade pp 31-33 Shopping Centre Extracts from the Original FB Page 21 The extracts from the Original FB Page show: (a) The “ ”3 sign featured as the Original FB Page profile photo. The account name is “Aussino Singapore” and accordingly, this name features in all of the Original FB Page's posts and comments; (b) The signs “ ”, “ ” and “ ” featured on promotional materials posted on the Original FB Page. The promotional materials are dated between 17 October 2013 and 25 November 2013, dates which fall within the First Period; (c) The "About" section of the Original FB Page indicates that its business relates to the Relevant Goods. The following are listed under the heading of "Products": bed linen, bath linens, kids and babies bedding, pillows, bolsters, quilts, sleepwear, and home décor; (d) The promotional materials relate to the sale of the Relevant Goods: i. Page 23 of BLH's SD features bed linen, towels, and linen products in the background; ii. Page 24 of BLH's SD provides details of a promotion for a 100% Cotton Sateen Fitted Sheet Set, bolstercase, and body pillow cover; iii. Page 25 of BLH's SD provides details of a new product arrival, a "high quality Cotton sateen collection", and a promotion for the said product. There are also promotions for fitted sheet sets and quilt covers.
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