By Alisa Rajamalar
Have you ever wondered if your registered trademark is absolutely safe? Is registration of your trademark sufficient enough to fortify your rights on that trademark?
Though registration of a trademark gifts the proprietor exclusive rights, this does not provide them with absolute rights under all circumstances to secure their registered trademark. A trademark may be subjected to the grounds of revocation based on non-use or suspended use for 3 years or more, depending on the jurisdiction where the trademark is registered. By non-use or suspended use, it means that the trademark has not been genuinely used for a specific period of time.
This issue was echoed in a Singaporean case where software giant, Apple Inc had produced and marketed a software known and registered as the “SHERLOCK”, herein after referred to as the “Mark”. The Mark was challenged by Bigfoot Internet Ventures on the grounds of non-use. Since this case transpired in Singapore, according to the Singaporean Trademark law, non-use of a registered Mark for more than 5 years will render the registration revocable.
Apple Inc owned and registered the Mark in Singapore, where the registration was completed on March 2001, for Class 9, which includes computer software. In February 2015, Bigfoot filed an application for revocation of the Mark on the grounds of non-use, which means that it can either be that the mark was not in use, 5 years from the day of completion of the registration procedure, or the mark is not in use for at least 5 years before the date of application of revocation.
In defending its registered trademark, Apple Inc, being the proprietor bore the burden in proving that the Mark was genuinely used for 2 different periods of time, which are the first 5 years upon completion of the registration procedure, dated from March 2001 to March 2006, and also the second 5 years’ period, dated from March 2010 to March 2015.
FIRST 5 YEARS PERIOD.
Apple Inc had evidence of the use of the Mark in a software application which was integrated into version 8.5 of the Macintosh computer operating system. It was launched in Singapore on October 1998, that dated even before obtaining the registration. It was then used for subsequent years with some of the newer versions of Mac OS.
The Registrar in IPOS was convinced that the mark had been used by Apple Inc way before the commencement of the registration procedure and had been continuously using it throughout the first 5 years upon the completion of the registration. Hence, Apple Inc had proven that the Mark had been genuinely used for the first 5 years upon completion of the registration procedure. Thus, Bigfoot had failed to revoke the registration of the Mark on this ground.
SECOND 5 YEARS PERIOD.
However, as newer versions of the software had been released, the Mark search tool was revised and subsequently being replaced by other tools, such as the “SPOTLIGHT” and “DASHBOARD”. The Mark was completely incompatible with the later versions of Mac OS.
Apple Inc raised an argument based on the legal preposition as in the case of Ansul v Ajax that the use of a mark in connection with goods no longer newly traded could constitute genuine use of the mark in certain circumstances. So, Apple Inc was on the argument that, even though the Mark had been subsequently removed from the latest updates of Mac OS, there were still evidence of downloads of the online updates of “SHERLOCK” by Singapore users in the second 5 years’ period.
The Registrar, however, was of the opinion that even though there may still be downloads by the Singapore users, it was in the past, as typically, a user would only download a software update once. Therefore, the Registrar was not persuaded that the mark was put to genuine use within the second 5 years’ period of time, as the mark had been completely ceased from operation from around 2007 onwards, with the release of Mac OS X 10.5 Leopard and also the latest versions of Mac OS. The Proprietor had also failed to give any proper reasons and evidence for non-use of the Mark.
Accordingly, the registration for the mark was therefore revoked from 12.03.2015, the date of application of revocation.
This case is interesting as it highlights after-sale support for software that include upgrades and updates could possibly be regarded as evidence of use in Singapore. However, the application of this would be tailored according to the uniqueness of the facts of each case.