Archives for July 2013
Fancy eating Swiss chocolate? Imagine buying chocolate thinking it is Swiss chocolate because of the look and feel of the packaging, and even a Swiss sounding name that lures you into buying it – only to find out that it is our very own locally-made chocolate! This situation is what Chocosuisse Union Des Fabricants Suisses De Chocolat (the 1st Appellant), a cooperative formed in Switzerland to represent the common interests of the Swiss chocolate industry, hopes to prevent.
Chocosuisse Union Des Fabricants Suisses De Chocolat & Ors (“The Appellants”) had brought an action against Maestro Swiss Chocolate Sdn Bhd & Ors (“the Respondents”), who manufacture and sell chocolate and chocolate-related products, particularly under brand names such as “Vochelle” and “Maestro SWISS” in Malaysia, for the tort of extended passing off and the infringement of the “Swiss Chocolate” Geographical Indication (GI).
Trademarks, like many things in life (e.g., from your gluteal muscles to your brain), will be lost it if you don’t use it. As its name suggests, a trademark is a mark that is used in trade to distinguish the goods/services of one undertaking from those of other undertakings. Following that, in most countries trademark registrations are granted on the condition that the owner uses his trademarks on the goods/services that the trademarks are registered for. In certain more paternalistic jurisdictions (e.g., the USA and the Philippines), the trademark legislation goes further to require the owner to prove genuine use of his mark even after the trademark is registered in order to ensure that the owner is not just squatting on a trademark without any intention to actually use it in trade. For those countries which do not require the trademark owner to voluntarily prove the use of his trademark, the trademark is still subject to revocation if a third party can prove that the trademark has not been put to genuine use for a period of time (usually 5 years) by the owner after the trademark is registered.
Since its conception, the requirement of use has been the weapon of choice of parties wishing to get a trademark struck off the register. And one key moot point in these proceedings has always been the activities which constitute “use”. With the advent of the World Wide Web and online shopping, the already murky water of what constitutes “use” has been further clouded especially in relation to the service of online retail found in Class 35 of the International Classification.
Recently, the Hearing and Mediation Group of Singapore’s Intellectual Property Office (IPOS) was asked to deliberate on what constituted “use” of a trademark registered for services in Class 35 and specifically “retail services, including retail of automotive parts”.
Autozone Automotive Enterprise (Autozone SG) applied to IPOS to revoke and/or invalidate the trademark registrations of Autozone Parts, Inc. (Autozone Parts), on the grounds of non-use, passing off, fraud and that registration was obtained by misrepresentation. All the grounds relied upon by Autozone SG were rejected except for the grounds of non-use. And it is on the finding of non-use that Autozone Parts’ trademark registrations were revoked despite the fact that Autozone Parts were able to adduce evidence that 282 unique users in Singapore have clicked on their website, www.autozone.com, which was launched in 1996. Autozone Parts was also able to show that its products (driving gloves) were shipped to Singapore on 2 occasions around the end of 2009, following email enquiries from a Singaporean buyer.
With regard to the two occasions of actual sale transactions, the Hearing Officer took the view that if Autozone Parts’ trademarks were registered for “automotive parts”, she would be more inclined to consider those two transactions as “use” of the trademarks. This is in accordance with a previous case of Weir Warman where 3 sales transactions of products bearing the trademark “Warman” into Singapore were considered sufficient to satisfy the requirement of “use”. However, the difference here is that Autozone Parts’ trademarks were not registered for goods, but for “retail services, including retail of automotive parts”. The Hearing Officer was not willing to accept that retail services have been provided in Singapore just because the goods were ordered and delivered to Singapore; therefore, Autozone Parts was found to have not used its marks in Singapore.
What about the 282 unique users in Singapore who clicked on Autozone Parts’ website? The Hearing Officer relied on the British case of 800-Flowers where Buxton LJ stated that “There is something inherently unrealistic in saying that A uses his mark in the UK when all he does is to place the mark on the internet, from a location outside the UK...The very idea of “use” within a certain area would seem to require some active step…that goes beyond providing facilities that enable others to bring the mark into the area. Buxton LJ referred to the “active step” as “direct encouragement or advertisement”. In this sense, Autozone Parts was found wanting.
The above principal was succinctly and aptly demonstrated by Jacob J with an example: “a fishmonger in Bootle (ed: a small middle-of-nowhere town in Merseyside) who puts his wares and prices on his own website, for instance, for local delivery can hardly be said to be trying to sell fish to the whole world or even the whole country.” Accordingly, the Hearing Officer found against Autozone Parts and held that the use of its trademark on its website did not constitute “use”. The Hearing Office seemed to be persuaded by the fact that Autozone Parts’ website is targeted at the US market and not the public in Singapore, and also the fact that it is not possible for a consumer in Singapore to order the products from its website. Of the 282 Singaporean visitors to Autozone Parts’ website, the Hearing Officer was not convinced that they had visited the website as a result of the “direct encouragement or advertisement” of Autozone Parts.
What we can take away from this case is that a trademark must be used on the goods/services that it is registered for. In this case, the delivery of goods to Singapore did not constitute “use” as the trademark was registered for retail services and not the products themselves. Further, the use of a trademark on a webpage may not constitute “use” in a trademark sense even if it is internationally accessible. This is especially true if the public is not able to purchase the products from the website itself.