Consent or No? Determining Consent to the Use of a Registered Trademark by a Third Party

In the case of Romanson Co., Ltd v Festina Lotus, S.A. [2015] SGIPOS 3, Romanson Co Ltd (“the Applicants”) had applied to revoke Festina Lotus, S.A. (“the Registered Proprietors”)’s mark (“the FESTINA Mark”) for non-use under Section 22(1)(a) and (b) of the Trade Marks Act (“TMA“).

The decision

Use with “consent” under Section 22(1) of the Trade Marks Act

The Registered Proprietors tendered evidence of use from various third party websites. In particular, they submitted that they had evidence of “actual sales” of goods bearing the FESTINA Mark, through the sales made by a third party that operated a website at “Brandsfever“.

Section 22(1) TMA provides that a trademark may be revoked if it has not been put to genuine use in the course of trade in Singapore by the proprietor or with his consent. Given that the evidence of use tendered by the Registered Proprietors was not their own use, but use by an unrelated third party, further legal submissions were tendered on the meaning of “consent” and what is required to establish it. In the absence of local authorities on this issue, the Registered Proprietors sought to rely on the position in Australia, whilst the Applicants sought to rely on the position in the United Kingdom.

The Assistant Registrar (“AR“) considered the submissions and felt it appropriate to rely on the UK position given that the legislative provisions in both countries were materially similar. The onus was therefore on the Registered Proprietors to prove consent to the “use” of the trade mark by a third party. Whilst consent can take many different forms, the Registered Proprietors need only show that there is “implied consent”, or “authorization sufficient to ensure non-infringement” by the third party – they do not need to show that they exercised “quality control” over the goods. For example, is likely that consent can be implied in a “parallel import” situation, if there is sufficient evidence.

In the present case, the Registered Proprietors had tendered evidence that all their watches are designed and manufactured in-house and that the FESTINA Mark is not licensed for use by other parties. They clarified at the oral hearing that whilst they consented to the sale of the goods bearing the FESTINA Mark, they did not necessarily consent to the use of the FESTINA Mark by third parties. Given this position, the AR therefore found that there was no “consent” by the Registered Proprietors to the use of the FESTINA Mark by the third party for the purposes of Section 22(1) TMA.

Furthermore, the evidence of sales in this case was insufficient to support a finding of use. To illustrate, one of the key pieces of evidence of sales was a letter from the director of Brandsfever and a table describing the sales. No sales invoices or receipts were tendered in support of this document. This evidence was one of the exhibits within a statutory declaration of the Registered Proprietors’ legal representative. Given its importance, it should have been deposed to by the director himself or some other relevant Brandsfever employee.

Conclusion

Based on the pleadings, evidence and submissions filed in this case, the AR concluded that the conditions for revocation of registration under Section 22(1)(a) and (b) of the Act were satisfied and therefore, the FESTINA Mark was revoked with effect from 1 March 1997.

For further details, please refer to the full text of the judgment, which can be found here.

 


Edited by The IPA Beacon Editorial Team

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