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Manage your Intellectual Property in South-East Asia

Case Study 1 - Revoking a conflicting “earlier trade mark” in Singapore

Background

A Spanish company, Company A, successfully registered its “AAA” trade mark in Singapore, starting from 2 April 1986 (“1986 Mark”). The “AAA” mark was registered in Class 3 of the International Classification of Goods under  the category of  “perfumery with essential oils”. 

On the 20 November 2001,  a US company, Company B, filed an application to register the same “AAA” mark in Class 3 under “bleaching preparations and other substances for laundry use; cleaning; polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; colognes; toiletries; sunscreens; cosmetics; skincare products; deodorants and antiperspirants for personal use; shaving preparations” (“Company B’s Application”) 

On the 21 January 2002, Company B applied to revoke Company A’s 1986 Mark on the ground of non-use for a period of five (5) years immediately preceding its application to revoke. Since Company A failed to show that it had used the 1986 Mark during the five (5) year period, Company A’s rights to the 1986 Mark ceased from the date of the revocation application (i.e., 21 January 2002).

Following the revocation of the 1986 Mark, Company B’s Application was accepted and then published for opposition purposes.

Action Taken

During the publication period for opposition, Company A filed a Notice of Opposition against Company B’s Application on the ground that its 1986 Mark was still on the Register when Company B filed its own application (i.e. 20 November 2001), and its Mark, at the time, had yet to be revoked. Company A argued that, as such, the 1986 Mark could be considered to be an “earlier trade mark” which bars the acceptance of Company B’s Application for registration. 

Outcome

Company B’s Application was not allowed to proceed to registration. 

The 1986 Mark was only revoked on 21 January 2002, which means that, the 1986 Mark was still valid from 2 April 1986 to 21 January 2002. Company B’s Application, if it were to be granted, would take effect on 20 November 2001 (date of application), a date which falls way before the 1986 Mark was removed from the Register (i.e. 21 January 2002). The existence of Company B’s Application on the Register would therefore infringe the 1986 Mark. 

It is critical to always bear in mind the need to ensure that the entry of a mark on the Register would not result in the existence of two (2) similar or identical marks belonging to different parties at any period of time. Therefore, to avoid any confusion, Company B’s Application was not allowed to be registered.

IP Lesson

If a trade mark applicant wishes to revoke a conflicting “earlier trade mark” and apply for registration thereafter,  must ensure that the mark is officially revoked before they begin their own application for registration.This way, the possibility of two (2) similar or identical marks existing in the Register at any given time by different parties, is avoided.

 

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