Tribunal/Court:
IPOS
Type:
Invalidation
Registered Proprietor’s Registered Mark (“Registered Mark”):
Singapore Trade Mark No. 40201711769U for “” in Class 5 [Dietary supplements for human; Nutritional supplements; Dietary supplemental drinks; Liquid nutritional supplements; Meal replacement drinks; Mineral nutritional supplements] registered on 22 June 2017.
Applicant’s Registered Marks (“Applicant’s Marks”):
Procedural History:
This application for a declaration of invalidity was commenced by WEIDER GLOBAL NUTRITION LLC against MORINAGA & CO., LTD.
Claim(s)/Issue(s):
Ground 1 - Section 23(3)(a)(i) read with Section 8(2)(b)
Whether the Applicant’s Marks – Word Mark, Composite Mark 1 and Composite Mark 2 are considered earlier marks.
Ground 2 - Section 23(3)(b) read with Section 8(7)(a)
Whether there is passing off.
Ground 3 - Section 23(1) read with Section 7(6)
Whether the application is made in bad faith.
Decision:
The application for a declaration of invalidity succeeds on one ground (under Section 23(3)(a)(i) read with Section 8(2)(b)) BUT failed on two grounds [under Section 23(3)(b) read with Section 8(7)(a) and Section 23(1) read with Section 7(6)].
Ground 1 - Section 23(3)(a)(i) read with Section 8(2)(b)
Registered Mark vs Applicant’s Composite Mark No. 1 and 2
The Registry found:
Registered Mark vs Applicant’s Word Mark
The Registered Proprietor does not dispute that the Registered Mark is similar to Applicant’s Word Mark.
The Registry found:
In view of the same, the Registry found the ground of invalidation under Section 23(3)(a)(i) read with Section 8(2)(b) succeeds.
Ground 2 - Section 23(3)(b) read with Section 8(7)(a)
The Registered Proprietor does not dispute that the Applicant has acquired goodwill in Singapore.
However, the Registry found that the element of misrepresentation is not made out.
As such, the Registry found the ground of invalidation under Section 23(3)(b) read with Section 8(7)(a) fails.
Ground 3 - Section 23(1) read with Section 7(6)
The Registry found that the Applicant has not meet the standard of proof required to establish bad faith on the side of the Registered Proprietor.
Therefore, the Registry found the ground of invalidation under Section 23(1) read with Section 7(6) fails.
*Pending expiry of appeal period