Use It Or Lose It: Can You Lose Your Registered Trademark Rights From Non-Use?

By Lauren Bennardo

Choi Sun Mi v Comfort Lab Inc [2022] SGIPOS 2

It is often assumed that once your trademark is registered, your rights are indisputable. However, this is not entirely correct. Did you know that you can lose the registration of your registered trademark if it is not used? Failure to properly use your mark in relation to the goods and services for which it is registered and within a specific time period makes it vulnerable to removal for non-use. The rationale for this law is that no brand owner should be allowed to “hog” a certain brand and hold monopolistic rights without exercising those rights. It is unjust to others who may wish to use that brand. This law was demonstrated in Choi Sun Mi v Comfort Lab Inc [2022] SGIPOS 2 where the applicant successfully revoked the registered proprietor’s trademark for non-use.

Background

Comfort Lab Inc was the registered proprietor of the Subject Mark “COMFORT LAB”. The mark was registered in Singapore covering coats, sweaters, shirts, underwear (underclothing), nightwear, socks and stockings, T-shirts, headgear for wear, shoes and boots; all included in class 25. Choi Sun Mi, the applicant, filed an application for revocation against the Subject Mark on the grounds of non-use.

The applicant relied on Section 22(1)(a) and (b) of the Singapore Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”). The Act prescribes that the registration of a trademark may be revoked if it has not been put to genuine use in Singapore by the registered proprietor or with his consent, in relation to the goods and services for which it is registered, and within the period of five (5) years, following the date of registration. Such use must not have been suspended for an uninterrupted period of five years and there must also be no proper reasons for non-use.

Decision

Technopharma Limited v Unilever PLC [2021] SGIPOS 11 prescribes the 5-step framework for a revocation action in Singapore. To successfully defend itself against a revocation application, the registered proprietor must show:

That the trademark in question has been used in Singapore;
That the mark has been used during the relevant time periods outlined by the Trade Marks Act;
That the mark has been used in relation to the goods for which the mark has been registered;
That the mark has been used by the proprietor or with his consent;
That there has been use of the mark, either in its registered version or where the distinctive character of its registered version is not altered.

The registered proprietor failed to successfully evince evidence of use the Subject Mark in Singapore in relation to the goods for which it was registered. Comfort Lab claimed the Subject Mark had been used in relation to “shoes and insoles”, but only produced evidence of its use on “insoles”. The mark was not registered in respect of “insoles” and no further evidence of use of the mark for the actual goods registered in class 25 was produced.

The Assistant Registrar concluded that use of the Subject Mark on “insoles” is not the same as use on “shoes” and this type of use could not sufficiently defend a revocation action for non-use. It was held that genuine use of the mark had not been established by the registered proprietor as use of the mark on the goods for which it was registered had not been demonstrated.

Consequently, the revocation application was successful on the grounds of Section 22(1)(a) and (b). The Subject Mark was revoked as from 19 January 2018; the date immediately following the end of the first 5-year period.

Key takeaway tips

This case reinforces the importance of trademark owners making genuine use of their mark in the countries where it is registered, to avoid revocation. This can occur by ensuring your trademark is used within the relevant time period and in relation to the goods and services for which it is registered. Note that different countries have different statutory periods of non-use! If you require more information regarding your trademark registration, please contact us at kass@kass.asia.

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Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.