Two trademarks revoked in registrar’s use-it-or-lose-it ruling

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Luxury carmakers Bentley Motors and Audi have successfully got the trademarks of other companies revoked, with their court actions shedding light on a unique feature of trademark law.

At issue in both cases is whether a registered trademark has been used commercially for a continuous period of five years after registration – failing which, it could be challenged by others and revoked in court.

The lack of continuous use was what Bentley Motors sought to prove in its bid to revoke a trademark bearing the name “Bentley”, which had been registered by Aucera, a manufacturer of eyewear and other products.

The Swiss-based company had owned the trademark under Class Nine of the Registry of Trade Marks here, for its eyewear products, including spectacles cases and frames.

The marks for various goods and services are categorised under 45 classes, with marks for optical instruments – including eyewear – registered under Class Nine.

Bentley Motors made its move after efforts to register its trademark for the same class of goods stalled in March 2014 because Aucera held the mark.

Eight months later, Bentley Motors applied to the trademarks registrar to revoke Aucera’s mark. It reapplied to register its trademark in April 2015, but failed again.

Bentley Motors’ lawyers William Ong and Amanda Soon argued that Aucera had not used the mark for five continuous years and there was no proper reason for its non-use.

But Aucera, through lawyers Gillian Tan and Mark Teng, countered that the mark had been genuinely used for goods sold in the five years preceding Bentley Motors’ 2014 application.

Aucera’s best evidence comprised an imported consignment of 228 items worth US$6,370 (S$9,050), as well as two sales on a single day to local retailers, which involved 30 out of the 228 imported items.

But principal assistant registrar Tan Mei Lin, in her decision grounds last November, said Aucera’s case fell “on the wrong side of the line” as the evidence shown was insufficient.

She found the evidence “sorely lacking in detail and specificity”, adding that it was unclear whether the goods imported into Singapore were of unspecified brands or were goods with the mark in question.

Separately, German automobile manufacturer Audi succeeded in revoking the “AOne” trademark owned by spare parts trader Lim Ching Kwang for all his products except for one in the Class 12 goods of the trademarks registry, a category which includes fittings in vehicles.

Audi filed an application in March 2015 to revoke Mr Lim’s trademark, which bears the same name as one of its car models, A1.

The carmaker’s lawyers Eunice Maaland and Jolena Ang argued there was no genuine use of the trademark by Mr Lim for five years after it was registered in 2010.

But Mr Lim argued that the AOne brand was his way of providing non-branded spare parts as an alternative to the competitive branded spare parts market.

The Class 12 mark applied to nearly 400 items that he registered, including various transport-related machines, appliances and tyres.

Ms Tan, after considering all submissions, found that the AOne mark had been genuinely used only in relation to the sale of torque rod bushes, which are used to cushion joints and prevent shocks in a moving vehicle.

She pointed to quotations, purchase orders and payments related to torque rod bushes branded with the AOne mark.

“The use is clearly not token, sham or internal and there is no question of hidden motive behind the use,” said Ms Tan, in her decision grounds issued last week.

But she said Mr Lim “has not shown genuine use of any other goods in the registration” and ruled that the trademark registration for all other items – except torque rod bushes – would be revoked.

vijayan@sph.com.sg


This article was first published on January 24, 2017.
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Tuesday, January 24, 2017 – 14:00
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