Protecting your trade mark: opposition vs infringement

05 May 2014

Trade mark applicants and their agents are generally familiar with the threat of a registered trade mark being subject to non-use cancellation if the specification is broader than the range of goods or services in relation to which the trade mark is actually put to use. However, even at the outset, a broad specification may impede the successful registration of a trade mark - thereby undermining the applicant's business development plans with regard to that trade mark.

In a recent case before the Singapore Court of Appeal, Staywell v Starwood, Starwood had registered the word mark "ST. REGIS" for hotel and hospitality services. Staywell subsequently attempted to register "PARK REGIS" for the same services. Starwood brought successful opposition proceedings against Staywell to stop the registration of "PARK REGIS" as a trade mark but the decision was overturned at the High Court. Upon further appeal, the Court of Appeal sided with Starwood and rejected the registration of the "PARK REGIS" mark.

The Court of Appeal clarified in its judgment that in an infringement action, the trade mark proprietor is restricted to relying only on the alleged infringer's actual and allegedly infringing use of the trade mark ("actual use"). In contrast, in an opposition proceeding, the trade mark proprietor may object to the registration of the applicant's mark – not on the basis of its actual use, but on any potential use that may arise under the specifications of goods and services for which trade mark protection is sought ("notional fair use"). Under the notional fair use approach, the scope of each of the goods and services cannot be curtailed by reference to the actual use and market circumstances (e.g. price point, target segment of the market).

Quite clearly, the notional fair use approach offers much broader protection than the actual use approach and is a boon to trade mark proprietors. Trade mark proprietors are therefore at liberty to take advantage of the broader protection provided by the notional fair use approach in opposition proceedings in addition to the focused protection provided by the actual use approach in infringement proceedings. Additionally, where a trade mark application meets with a successful opposition, in the event that the applicant is already using the mark, such actual use may also be treated as a putative infringement, thereby providing synergy between the two legal mechanisms.

Trade mark applicants should therefore be circumspect when drawing up specifications for a trade mark application – they should ensure that the specifications are limited to goods or services which are of immediate or mid-term interest to the business. Otherwise, the application may meet with unnecessary oppositions which could delay and increase the costs of the registration process.

By Dharma Sadasivan and Joyce Ang, Singapore.


Dharma Sadasivan

Joyce Ang