Singapore's Intellectual Property Office decides that a foreign brand owner with no earlier trade mark registration or recognition of its brand being "well known" in Singapore can rely on "passing off" to prevent another trader from registering the same brand in Singapore.
"Footpure" is a brand of foot deodorant powder from Taiwan. The applicant was a sole proprietor operating Nunufish.com ("Nunufish"), an online platform selling various personal care products. The opponent, U-Manga International Business Co., Ltd ("U-Manga"), was the owner of the registered trade mark "footpure" in Taiwan, but had not obtained registration for the mark in Singapore at the relevant date of the opposition. Nunufish had previously sold U-Manga's goods in Singapore. U-Manga alleged that Nunufish was clearly aware of its rights in "footpure"; indeed, it had registered the "footpure" mark in Singapore a few days after U-Manga terminated Nunufish's licence to distribute its "footpure" products locally.
U-Manga opposed the application on two grounds under the Singapore Trade Marks Act:
(a) The use of the "footpure" trade mark constituted passing off of a protectable unregistered trade mark; and
(b) U-Manga's "footpure" mark constituted an "earlier trade mark" as it qualified as a "well-known trade mark", such that registration of the "footpure" mark would result in a likelihood of confusion and/or use would indicate a connection between the respective goods that would be likely to damage U-Manga's interests.
Notably the opposition did not proceed on the ground of "bad faith", apparently on the basis that U-Manga did not plead the correct operative section under the Singapore Trade Marks Act.
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