An easy “catwalk” to victory for Vetements Group AG in its application for a declaration of invalidity against the VETEMENTS registered mark that was filed in bad faith in Singapore

Case:

Vetements Group AG v Xiamen VETEMENTS Brand Management co, LTD. [2023] SGIPOS 6

 

Tribunal/Court:

Intellectual Property Office of Singapore (“IPOS”)

 

Type:

Trade Mark Invalidation

 

Applicant:

Vetements Group AG is a European luxury brand founded in 2013 by Demna Gvasalia, a famous designer who is also the creative director of Balenciaga. The Applicant’s “VETEMENTS” collections were shortlisted for, and also won, various accolades in the fashion industry.

 

Proprietor:

Xiamen VETEMENTS Brand Management co, LTD is a chinese company that produces clothing and other similar items under the “VETEMENTS” mark.

 

Background of the Matter:

This matter concerns the mark “VETEMENTS” that is registered in Singapore in the name of the Proprietor in class 25 for underwear; shoes; hats; children's clothing; hosiery; scarfs; girdles; wedding dresses; clothing; gloves [clothing] (“Registered Mark”).

 

The Applicant alleged the following:

 

The Proprietor had initially operated out of China in its name producing copies of the Applicant’s goods and sold them under the “VETEMENTS” mark with the false claim that it was the Applicant’s collection for the Asian market;

 

When buyers questioned the Proprietor as to why the Applicant’s supposed collection was being sold by a Chinese company, the Proprietor set up another company in the UK under the name “Vetements Group Limited”. This was done to deceive buyers into thinking that Vetements Group Limited is the Applicant.

 

The Applicant filed for a declaration of invalidity on the ground that the application for the Registered Mark was made in bad faith.

 

Issue(s):

 

Whether the application for the Registered Mark was made in bad faith.

 

Decision:

 

The Registered Mark was declared invalid.

 

Rationale:

 

The main reason why the Registrar came to the decision was due to the procedural conduct of the Proprietor. While the Proprietor filed its counter-statement in response to the Applicant’s application for a declaration of invalidity, the Proprietor failed to file its evidence. In accordance with the Trade Mark Rules of Singapore (Rule 59(2)(d)), by failing to file its evidence by the due date, the Proprietor is deemed to have admitted to the facts alleged by the Applicant in the Applicant’s application for a declaration of invalidity.

 

As such the matter proceeded and was decided without a hearing on the basis that the Proprietor admits to the facts alleged by the Applicant.

 

Points of interest:

 

The proceedings clarified/affirmed the law on bad faith which fundamental legal principles are set out in the Court of Appeal’s decision in Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203 (“Valentino”) namely:

 

The term ‘bad faith’ embraces not only actual dishonesty but also dealings which would be considered as commercially unacceptable by reasonable and experienced persons in a particular trade. This includes dealings that may otherwise involve no breach of any duty, obligation, prohibition or requirement that is legally binding upon the registrant of the trade mark.

 

The test for determining bad faith contains both a subjective element (what the particular applicant for registration knows) and an objective element (what ordinary persons adopting proper standards would think). Each case must be assessed based on its facts.

 

The party alleging ‘bad faith’ need only make out a prima facie case and the alleged party must then disprove any element of bad faith.

 

An allegation of ‘bad faith’ is a serious claim and therefore must be sufficiently supported by evidence.

 

Once bad faith is established the application/registration which was made in bad faith must be refused even if such application/registration would not cause any confusion.

 

In considering the subjective element test for bad faith, the following was determined:

 

The Proprietor is aware that the VETEMENTS brand is a high profile luxury brand;

 

The Proprietor is aware that the Applicant owns the trade marks for the VETEMENTS brand;

 

The Proprietor went ahead to secure registration for an identical mark for the same goods;

 

The Proprietor’s action was deliberate and meant to deceive.

 

In considering the objective grounds, the following was determined:

 

The subjective elements of the Proprietor fall short of acceptable commercial behaviour of reasonable and experienced men in trade.

 

The path taken by this case is significantly different for the following reasons:

 

The case never reached the hearing stage due to the Proprietor’s failure to file its evidence;

 

The Applicant did not have to bear the burden of proving the facts it alleges;

 

Due to the procedural failure of the Proprietor, it was deemed to have admitted to the facts alleged by the Applicant.