Singapore Trade Marks - Seek Limited Succeeds on Opposing the Registration of the Applicant's Mark - Seek Limited v Seek Asia Pte Ltd [2020] SGIPOS 2

Intellectual Property News

In a decision rendered by the Intellectual Property Office of Singapore (IPOS), it was held that the Opponent had succeeded on the grounds that the Applicant’s mark shall not be registered in that its use in Singapore is  prevented  by virtue of the law copyright (Section 8(7)(b) of the Trade Marks Act).

(A)       Who are the parties involved in this case?

Seek Asia Pte Ltd (“Applicant”)

The Applicant applied to register its mark in Class 35 in respect of information services which were primarily related to jobs and career opportunities. However, between the 15 of December to at least 18 of May 2017, the Applicant’s principal activities that were listed on its Accounting and Corporate Regulatory business profile included “Accounting and auditing services (including taxation advisory services).

Seek Limited (“Opponent”)

The Opponent is an Australian-incorporated company listed on the Australian Securities Exchange. Its core business is the provision of job recruitment services. It opposed to the Applicant’s application on various grounds on 7 August 2017

(B)       What actually happened?

The Chief Executive Officer of the Applicant was also employed by the Opponent’s subsidiaries jobsDB SG and JobStreet SG where he was exposed to the Opponent’s “Seek Asia” marks, including the Seek Asia Composite Mark.

After the Opponent’s opposition, he Applicant’s business profile was amended on or around 29 October 2017 to “Executive Search Services Online Job Portal for Employers and Employees”. Furthermore, the “job listings” that appeared on the Applicant’s portal seemed to have been copied from elsewhere.

The Opponent alleged that the Applicant had no bona fide intention to use the Application mark and had only proceeded to register the Application mark as a means to extort money from the Opponent.

(C)       What is/are the issue(s) in dispute?

In response to the Opponent’s submission that the Applicant had only applied to register the Application Mark as a means to extort money from the Opponent, the Applicant had emailed the Opponent’s Chief Executive Officer that it would report the Opponent to the Singapore Stock Exchange and the then-Competition Commission of Singapore (“CCS”) which they indeed did and forwarded the same to the Opponent.

In a teleconversation with the Opponent’s lawyers, the Applicant demanded S$5 million from the Opponent in exchange of withdrawing the opposition application. The Opponent rejected this offer but left door for settlement open if the Applicant was willing to consider a substantially lower figure.

In addition to filing its grounds of opposition under section 7(6) and 8(7)(b) of the Trade Marks Act, the Opponent had also taken out summary judgement proceedings in the High Court and succeeded on 19 August 2019 where Justice Chan Seng Onn (“Chan J”) granted a permanent injunction against the Applicant and held that the Applicant’s use of the Application Mark infringed the Opponent’s copyright in the Seek Asia Composite Mark.

The Opponent had also filed and was granted default judgement on all its claim in the default judgement application.

Further to the summary judgement and the findings of copyright infringement, the Opponent’s lawyers had demanded that the Applicant withdraw its Trade Mark Application. However, the Applicant was unresponsive in numerous occasions that included directions by the Court in withdrawing its application and meeting deadlines in filing written submissions and Form HC1 to attend the hearing that was fixed on 30 January 2020.

Finally on 27 January 2020 the Applicants director had sought to postpone the hearing claiming that the director himself was bankrupt. However, on the grounds that the director and the Applicant are separate from each other, the Registrar did not postpone the hearing of 30 January 2020 and gave the Applicant a final reminder to withdraw its application given the outcome of the court proceedings.

(D)       Holding

On the day of the hearing, the Applicant did not file Form HC1 and was not present at the hearing. Taking the outcomes of the proceedings in High Court into consideration and with the view to save time and cost of the matter, the Registrar proceeded with exercising its power under Rule 37(4) of the Trade Mark Rules by concluding the matter expeditiously without having proceeded with the hearing.

(E)        Rationale for holding

Rule 37 of the Trade Mark Rules governs Opposition hearing and Under Rule 37(4) of the Trade Mark Rules, any party who does not file with the Registrar Form HC1 before the hearing will be treated as not desiring to be heard and the Registrar may proceed with hearing without the party, give his decision or dismiss the proceedings or make such other order as he thinks fit.

Opponent’s ground of opposition under Section 8(7)(b)

Section 8(7)(b) of the Trade Mark  Act primarily states that a trade mark shall not be registered if or to the extent that its use in Singapore is liable to be prevented in particular by virtue of the law copyright or any law with regard to the protection of designs.

Following Chan J decision in that the Applicant’s use of the Application Mark infringed the Opponent’s copyright in the Seek Asia Composite Mark, the Registrar found that the use of the Application Mark is liable to be prevented by virtue of the earlier copyright in the logo and there the Opponent has made out its case under Section 8(7)(b) of the Act.

Conclusion

The Registrar found that the opposition succeeds under Section 8(7)(b) and that it was not necessary to consider the other ground of bad faith under Section 7(6) of the Act.