Nike International Ltd (NIL) and Campomar have been at loggerheads over the use of the mark NIKE in Class 3. The finale of this long saga was the recent decision of the Court of Appeal. Campomar SL v. Nike International Ltd, (2011) SGCA 6 (Feb. 28, 2011).

NIL sought to register the mark NIKE in Class 3 for inter alia ‘perfumery’ and ‘essential oils’. The application was opposed by Campomar based on its earlier registration (registered with effect from 1986) for the mark NIKE in Class 3 for “perfumery with essential oils”. In a separate proceeding, NIL filed an application to revoke the 1986 mark, and ultimately succeeded. In light of the revocation, the application filed by Nike was accepted for registration and published for opposition. Campomar opposed on the grounds that the subject mark was identical to an “earlier mark” (i.e., its own mark registered in 1986, despite the revocation of that mark) and that Nike’s application had been made in bad faith.

Campomar contended that its (now-revoked) mark constituted an “earlier mark” under Section 8(1) of the Trade Marks Act. While Section 8(1) stipulates that a trademark shall not be registered if it is identical to an earlier mark, it does not specify the relevant date. Section 2(1), which defines “earlier trade mark.” does not address the issue in express terms.

The Principal Assistant Registrar opined that Campomar’s mark did not constitute an “earlier mark” for the present purposes and allowed Nike’s application.

Campomar appealed to the High Court (HC). The HC observed that the time for determining whether a mark constituted an “earlier mark” under Section 8(1) was the time of the opposition proceedings. As Campomar’s mark had already been revoked at the time of the opposition proceedings, it would not constitute an “earlier mark”. Aggrieved, Campomar appealed.

The Court of Appeal adopted a very pragmatic view. It observed that when the Registrar determines whether a mark ought to be registered, the decision should reflect the circumstances prevailing on the day the Registrar considers the application. Further, while Campomar’s revoked mark was not on the register in 2009 (when the subject application for registration was considered), it was removed from the register only in 2002. The registration of Nike’s mark would take effect from 2001, that is, before the removal of Campomar’s mark. As this would cause confusion, the court held that it should not be allowed. Thus, Campomar’s opposition succeeded and Nike’s application to register the mark turned out to be unsuccessful.

The court opined that in cases where the Registrar is in the process of considering whether a mark can be granted protection, especially where an opposition has been filed, the Registrar ought to take into account the fact that the registration of the later mark would result in there being on the register two identical marks owned by different proprietors. Of course, the Registrar is also entitled to factor in other circumstances, including the revocation of an earlier identical registered mark.

The court also pointed out that determining whether a party should apply to oppose the registration of a mark or invalidate it would depend upon whether the subject mark is deemed registered at the time of the application. If the later mark is pending, an opposition ought to be filed. However, where the mark is already registered, an invalidation proceeding would need to be instituted. Thus, it would be in the best interest of the trademark applicant to carry out a pre-filing search, in order to determine whether there exist one or more prior registrations or pending applications that might pose a significant threat to the registration of the mark. Based on the factual matrix and the outcome of the search, the applicant, before filing a trademark application, would then need to strategically contemplate whether to institute an invalidation action or oppose the registration of the other mark.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.