Bird & Bird ATMD successfully defends trade mark invalidation for BIGBOX

16 May 2017

Bird & Bird Singapore's Intellectual Property team successfully defended a trade mark invalidation action for the mark "BIG BOX" registered in Singapore in Class 35 for hypermart, retail and warehousing services.

The applicant for invalidation was COURTS, a megastore operator who had 'retaliated' by commencing the invalidation action after Big Box threatened trade mark infringement for COURTS' use of Big Box in its advertisements in The Straits Times, Singapore's most widely circulated newspaper.

It was argued that the mark "BIG BOX" lacked distinctiveness, was a descriptive and/or generic term commonly used by the public to refer to a large retail or warehouse establishment. COURTS gave various evidence that "BIG BOX" possessed descriptive and generic meaning through Wikipedia and dictionary sources, as well as newspaper and academic articles. However, most of these sources reflected an understanding of the term "BIG BOX" in the US and Europe, and only few of these sources were in reference to the understanding of the term in Singapore.

Further, as the mark had been registered in Singapore since 2005, COURTS had to show that the mark was descriptive and/or generic in Singapore as of that date. The Singapore team successfully argued that COURTS had failed to provide sufficient evidence to satisfy the burden of proof required to invalidate the mark. This case illustrates the territoriality principle of trade marks, and the difficulties in establishing that a trade mark lacks distinctiveness at the time of filing.

The Bird & Bird Singapore team was led by partner Alban Kang, who was assisted by associates Just Wang and Penelope Ng.