Trade mark Revocation Due to Non-Use

Case:

 

Nidec Control Techniques Limited v Uni-Drive Systems (S) Pte Ltd [2023] SGIPOS 8

 

Tribunal/Court:

Intellectual Property Office of Singapore

 

Type:

Trade mark

 

Proprietor:

Uni-Drive Systems (S) Pte Ltd is a leading distributor and exporter of mechanical power transmission and related hardware products.

 

Applicant:

Nidec Control Techniques Limited is a leading manufacturer of AC and DC variable speed drives (“VSDs”) and servo drives, as well as power conversion technologies, amongst others. These goods are supply for use in industrial applications, including elevators, crane systems and pump compressors.

 

Background of the Matter:

This case concerns an unsuccessful non-revocation action against the registered marks “UNI-DRIVE” and  both registered in Class 7 for mechanical power transmissions and related products.

 

The Applicant argued that the evidence did not show that the marks had not been affixed onto the goods, but this argument was rejected since there were other types of evidence of genuine use in connection with the goods in question.

 

Issue:

Whether the registered marks can be revoked due to non-use?

 

Decision:

The Registrar found that the marks had been used in relation to the goods and services for which they were registered, and that the evidence showed genuine use of the marks. The revocation application was dismissed. Both the Proprietor’s marks will remain on the Register in relation to their respective Class 7 specifications in full.

 

Points of Interest:

1. The Registrar affirmed the framework to determine whether there has indeed been genuine use of marks in deciding whether a revocation is valid for non-use. In essence, in a revocation for non-use, the questions to be asked revolve around the “where”, “when”, “which”, “who” and “what”. In this present case, the relevant questions are:

(a) the “Where” issue - whether the marks have been used in Singapore;

(b) the “When” issue - whether the marks have been used during the relevant time periods defined by the statute;

(c) the “Which” issue - whether the marks have been used in relation to the goods for which the marks have been registered;

(e) the “What” issue - whether there has been use of the marks, either in the form in which it has been registered or in forms which do not alter the distinctive character of their registered forms.

 

2. The Registrar reiterated that genuine use means actual use of the trade mark by the proprietor or by a third party with his consent. In any event, the use must be more than merely “token”, it must be substantial and solely aimed at preserving the rights granted by registering the mark. Further, the use must be consistent with the essential function of the trade mark and guarantee the trade origin of the goods or services in question.

 

3. Further, the use must be by way of real commercial exploitation of the mark on the market for the relevant goods or service. It must be used in accordance with the commercial raison d'etre of the mark, which is to create or preserve an outlet for the goods or services that bear the mark.

 

4. Consideration of all relevant facts and circumstances is essential when determining the genuine commercial exploitation of the mark. This includes assessing whether the use is deemed necessary in the relevant economic sector to establish or retain a market share for the relevant goods or services. Factors such as the nature of the goods or services, characteristics of the market, the extent and frequency of mark usage, and whether the mark is employed for marketing all goods or services must all be taken into account.

 

5. The use of the mark need not be quantitatively significant for it to be deemed genuine. Even minimal use of the mark can amount to genuine use, if it aligns with the appropriate use in the relevant economic sector to maintain or establish market share for the corresponding goods or services.

 

6. The use of corporate name, whether on its own, or in the ways reflected above, amounts to genuine use of the Proprietor’s Marks.

 

7. The utilization of the Proprietor’s website for marketing can be considered, taking into account its significance due to the proprietor’s evident presence in Singapore.

 

8. In trademark law, proving the "use" of a trademark requires a more rigorous standard than assessing the existence of goodwill in a name. When it comes to trademarks, a more detailed and specific level of usage is needed to meet the jurisdictional requirement. Whereas, when evaluating goodwill, the primary focus is on how the name is actually used, rather than a broader concept of use as seen in trademark law.